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TechRoadmap Directions
  Intellectual Property Issues of Interest to High Tech Companies
Vol 2 Issue 6 June 2002

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Patenting a stick

Have you done your prior art search?

Tip of the Month

IP Links of Interest

On-Line Patent Glossary


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This is the 15th issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices.

Identifying the relevant prior art before you file your patent application is an important step to insure that your investment in the patent process returns value to your company. This month we look at an Appeals Court case in which a patent holder suing for infringement found out that the "infringing" device was actually prior art. All of his arguments supporting infringement suddenly became arguments for invalidating his patent. Read "Have you done your prior art search?" to learn more.

  • Patenting a stick

I am beginning to think we are all missing opportunities to obtain patents. Why, how many of us have gone for a walk in the back yard (perhaps with a dog) and missed the opportunity to patent the fetch stick. From US Patent 6,360,693 I present the main independent claim:

1. An animal toy, comprising:

(a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and

(b) at least one protrusion attached at one end thereof said main section and extending a predetermined distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section;

and wherein said animal toy is adapted to float on the water.

Uh, does this say "stick" to you? Does Figure 1 (below)?

Patent Figure1

See the patent

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  • Have you done your prior art search?
  When you file a patent application you are not required to perform a prior art search (but you must supply the patent office with any prior art you do know about already). Since the patent examiner will do a search, why should you? Because the cost of prior art showing up AFTER your patent issues is so much greater than the cost of addressing "obviousness" and "anticipation" during patent prosecution. To see how one company may have its patent invalidated because what it thought was an infringing product was actually prior art,read on...

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  • Tip of the Month
Make the investment in identifying prior art at all points in the life of your patent:
  • Before filing - Certainly you want to avoid wasting time and money filing claims that are anticipated by a prior patent or that are obvious in light of any prior art.
  • During patent examination - The patent examiner may find prior art patents, but he or she is less likely to find non-patent prior art. You should keep looking for prior art since you are the one who benefits by addressing prior art issues before your patent issues.
  • After your patent issues - As Beckson learned in spades, if you find prior art after your patent issues, you might want to carefully weigh trying the risk/reward ratio of trying to assert you patent. If you found the prior art, the alleged infringer probably can too.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  The following link should take you to this same article in the web based version of Directions, where you will find the on-line Patent Glossary.

Industry's Best Glossary
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  • Have you done your prior art search? - continued

A recent Appeals Court ruling highlights the importance of performing your own search for prior art even though the Patent Office rules don't require you to. In the case of Beckson Marine v. NFM, Beckson may have won a pyrrhic victory when the lower court's ruling of non-infringement by NFM was vacated. What Beckson hadn't counted on was one of NFM's products becoming overlooked prior art

Beckson is the licensee of a 1980 patent on an improved "portlight" - a window for a boat - that included a self draining feature to prevent an accumulation of water that might enter the boat when the portlight is opened. The claim language used the term "drain groove" to describe this feature.

NFM produced an oval portlight with a covered drain beneath the sill and a newer(1995), rectangular portlight with open drains. Beckson asserted its patent against both of NFM's portlights when the rectangular product hit the market.

NFM won a non-infringement decision in District Court for both products based on the Court's interpretation that a "groove" was long and narrow; NFM's drains were, apparently, neither long enough or narrow enough to be infringing "grooves". The Appeals Court, however, disagreed with the District Court, pointing out that the ordinary meaning of "groove" does not require it to be long and narrow, handing Beckson an apparent victory.

Unfortunately for Beckson, NFM also sought to have the patent ruled invalid based on the revelation in the trial that its oval portlight pre-dated the patent's critical priority date, thus becoming invalidating prior art. In this aspect of the case, Beckson "won" at the District Court level [the district court held that because the portlight did not infringe, it could not be the basis for a judgment of invalidity], but lost at the Appeals level ["To the contrary, any...prior art plays a role in the determination of the patentability..."].

The Appeals Court used this case to restate the purpose of examining prior art. "Invalidity often entails evidence that prior art renders the patent either anticipated or obvious,." What is the difference?

Anticipation is a question of fact and means lack of novelty. "To anticipate, every...limitation of the claimed invention must be found in a single prior art reference." Emphasis added

Obviousness is a legal conclusion based on findings of fact. To be obvious, "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art...". Emphasis added.

Returning to the sad case of Beckson v. NFM, remember that Beckson originally asserted that both the 1995 rectangular portlight and the older oval portlight literally infringed thir patent. So, while the Appeals Court, on the one hand, kept Beckson's infringement suit alive, it, on the other hand, pointed out that if the ovel portlight literally infringes on the patent it is likely that it invalidates the patent by anticipation! "that which will [literally] infringe, if later, will anticipate, if earlier."

Although Beckson's allegation of infringement before it realized that the oval portlight was prior art is not an admission of invalidity, we can be sure that NFM will take up Beckson's own arguments and use them against their creator. And of course, even if anticipation is not found, invalidity due to obviousness might.

The anticipated moral here is obvious: invest the time up front to identify prior art yourself.

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Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.