The patent process can be painful, but is necessary

Lawyers are not high on most people's lists of respected and beloved professionals. But if you look past the gritty world of criminal law and the too-much-drama of family practice, you'll notice that most of law is an interconnected, somewhat consistent and very powerful system that operates according to rules that can be grasped and applied by people who—let's be honest—weren't taking Math for Engineers and Scientists in college. The law is not a panacea, any more than software can make up for arbitrary hardware shortcomings, or hardware can fix any performance issues. But like any other tool at your disposal, it has the potential to make your job easier, to help you finish faster, and to make your product better.

The area of law that's most likely to impact engineering practice is patents. They've been around for hundreds of years (the laws implementing patents in the U.S. flow directly from our Constitution), but many engineers' vague notions of patents as a way for an inventor in his garage to make millions of dollars are well off the mark. The defining feature of a patent is the right of the owner to exclude others from making use of the inventor's idea, in much the same way that real property ownership confers the right to exclude others from entering the property. Both are “negative” rights—a patent doesn't give the holder the right to use the idea, only to keep others from using it.

Continuing the analogy, the thing that's critical for both patents and real property to work is a clear understanding of the boundaries between “owned” and “not owned.” In real property, it's easy, as property lines are clearly drawn on a property map. In intellectual property, though, things get murky fast. You could have a picture or a diagram of the patented thing (and in fact, that's pretty much what a design patent is). But what about a method or a new metal alloy? Or, for that matter, a widget where the novel idea is present even though the outward appearance varies widely?

The approach used in patent law is to describe the invention in English (or in the native language of the country granting the patent). You can and probably should cringe at this point. Some inventions can be easily described in words, but others are too complex or intricately connected to their surroundings to be described clearly. And when you factor in the process by which the inventor's description of his invention is turned into the claims of an issued patent, it's easy to see why patent law is such a mess. Remember that a patent covers only what's described in the claims. And the patent can be used to stop somebody from making or doing what's in the claims, not to allow it.

So how does an idea or invention become a patent? The process starts with the patent application: a document comprising two almost completely unrelated parts. The first part, and the one that usually comes closest to making sense, is the Specification. This, along with the Figures, is like a technical whitepaper that describes the invention. The formal requirement for this portion is that it enables one of ordinary skill in the art to make or use the invention. It may provide background information to help set the stage for understanding the invention, or explain why the invention is better than what has come before, but the specification is not what the patent covers. The claims are.

The claims are usually presented at the end of a printed patent. They're written in a specialized jargon that's conceptually like a programming language for legal systems. And continuing that analogy briefly, the patent examination procedure is like compiling the claim language. The patent examiner checks the claims for syntax errors and is supposed to verify that the claims don't describe something that was known before, or that is trivially derived from the prior art.Examining claims for syntax errors is easy enough, and the inventor gets a chance or two to correct misspellings and punctuation errors. However, it's the substantive examination for novelty where things get hairy. The inventor wants his patent to cover easy reconfigurations of his invention, so that a competitor can't get around it by switching the order of two steps, or adding a pulley to a mechanical linkage. On the other hand, the patent examiner represents the public interest in giving as small a monopoly as possible in return for the inventor teaching how to make or use the invention.Typically, the examiner will reject the application's original claims, presenting other earlier patents, applications or (sometimes) textbooks or other materials as evidence that the public already knew about the invention when the application was filed. The inventor can respond by explaining how the examiner misunderstood the claims or the prior art or by altering the claims so that they no longer cover the prior art.

The examiner may be persuaded by the explanation or may find that the altered claims are novel (and allow the patent), look for different prior art that shows what the inventor said his claims really meant, or disregard the explanation or changes and make the rejection final. The inventor can try again by paying another examination fee, or appeal to a group of more-experienced examiners on the Board of Patent Appeals and Interferences. There are many paths the examination process may take after that (and many of them involve paying additional fees to the U.S. Patent & Trademark office and/or hiring lawyers to work on the application). Eventually, some claims are granted, or the inventor gives up and abandons the application.

As you might imagine, this human-mediated, years-long “compilation” process often results in the claims that the inventor originally filed, that more-or-less clearly delineated what he thought of as “the invention,” turning into a hodge-podge of English spaghetti code that's almost impossible to understand. Yet everyone who reads those claims is obliged to refrain from performing the method or building the widget, or a court may put an end to their business and drain their bank accounts (if their lawyers don't accomplish the job first!).

How is it, then, that patents aren't just a black box that soaks up money and slows progress?The canonical explanation for why society should grant monopolistic patent rights to inventors is to encourage the inventors to teach their good ideas to the public, rather than keeping them as trade secrets. This may have made better sense decades ago, when communications were much slower (and perhaps reverse-engineering skills not so advanced), but there are still areas of technology where the information that's supposed to be in a patent application is of value to the public.

One might reasonably dispute the value to society of patents in the software and electronic arts, where a simple existence proof is often all it takes for someone of ordinary skill to figure out how to make or use an “invention,” and where patent examiners are perhaps less skilled at finding, understanding, and applying the prior art. To be fair, software and electronic engineers aren't exactly prolific generators of non-patent literature to describe their field accurately and comprehensively, so patent examiners are at a disadvantage. Perhaps a shorter term for patents on these technologies would serve all interests better, but that's a proposal for another day.

What can patents, as the law stands today, do for you? They can be a thumb on the scale, in your favor or against you. The patent that makes or breaks a business is a pleasant fiction but the bread and butter of a patent portfolio is in licensing revenues, and more nebulously, in increasing the patent-holder's competition's uncertainty. It's simply more expensive to operate a business when your competition has patents. Now you must investigate, perhaps consult an attorney, maybe even change your design. If this sounds suspiciously like a black box that soaks up money and slows development, consider the patent-holder's perspective. Now, it's a black box that slows down the competition. That's good for business! Furthermore, if the black-box penalty is too great, the competition can always license the patent, or turn the tables by inventing and patenting a better approach.

While we're stuck with the patent system we have for the moment, you can improve things by making sure applications you file are technically accurate and comprehensive, and by showing lawyers and laypeople that what we do as engineers is mostly not deep technical magic, but simply hard work leavened by creativity and common sense.

About the author
David Madden studied electrical engineering at Johns Hopkins University and worked at the software edges of semiconductor design and fabrication, circuit simulation, OSs, and power electronics for 20 years before turning to law in 2003. He now advises IP, small business, and start-up clients as Mersenne Law LLC in Portland, Oregon. He can be reached at .

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