Let’s suppose that we have an invention which is a device with an operating component consisting of a pipe in which liquid can flow. The operation of the device is presented by means of a picture and explanatory text. We will draw up two different patent applications, A and B, for the invention.

Concise application and detailed application

Patent application A is drawn up in a straightforward manner based on the information presented. The claim will state that the device has a pipe in which liquid can flow. A description supporting the claim is also drawn up for the application, and the picture supplied is included with the application as well.

Patent application B, however, is drawn up only after closer analysis of the operation of the device. It is found that the device still works even if the pipe is replaced with e.g. an open channel in which liquid can flow. It is noted that the inventor is entitled to an exclusive right that without question also covers operation based on an open channel, because such a configuration utilises the invented principle in exactly the same way as the pipe-based device. For application B, a claim is written that covers both the pipe-based and open-channel-based versions.

Drawing up a more detailed claim like this for application B is more challenging, as the claim must not cover any known technology on record. The statement made in the claim could be, for instance, that the device has a flow channel which can convey liquid. Dependent claims are also drawn up, one for the pipe-based and the other for the open-channel-based version. Along with these a picture of the invented device is prepared in which an open channel is shown in place of the pipe, so that there is a picture of the open-channel-based version as well, since some countries (e.g. the USA) require that the principal ways of implementing an invention are shown by means of a picture wherever possible. Naturally, the original picture showing the pipe-based version is also included as part of application B. A description is drawn up presenting both the pipe-based and the open-channel-based versions and explaining the pictures illustrating these versions.

It perhaps goes without saying that a higher price applies to the preparation of application B, which takes more time to draw up than application A.

Time and money …

While being processed at the patent office it emerges that a device incorporating the transfer of liquid across an empty space by the action of gravity is a known technology. Patent A can be granted on the basis of application A if the use of a pipe as a flow channel for the liquid is not obvious to a professional in the industry in regard to the environment being examined and the examiner cannot identify any known technology that would lead an industry professional to the technical solution specified in the claim referred to in application A. By contrast, a patent cannot be granted on the basis of application B, because even the empty space across which liquid is transferred by the action of gravity could broadly be interpreted as a flow channel. Thus, the device specified in the claim referred to in application B would not be considered new and certainly not inventive. The patent office would thus issue a negative official action on the matter, in response to which the wording of the claim would then be modified such that the expression “flow channel” is replaced with, for example, the expression “flow channel with walls for directing the flow”. Next, the patent office would examine the modified application B and grant patent B on the basis of that application, unless there are any other obstacles. The processing of application B was more expensive and took longer than the processing of application A, because for application B the processing involved issuing a negative official action to which a response had to be prepared, and patent B was then granted on the basis of the modified application.

It therefore appears that patent A is a considerably less expensive option than patent B in terms of both application preparation costs and patent office processing costs, and also in terms of the time taken for processing by the patent office. Was the work and the money paid all in vain?

When the chips are down…

It transpires that a competitor is to start manufacturing devices that correspond to the invention in other respects but which have a rod-like element along the outer surface of which liquid can flow. The competitor’s device does not infringe patent A by according with the wording of the claim, because the patent A claim states that the device has a pipe, but the competitor’s device does not. The competitor’s device could infringe patent A only if the rod along whose surface the liquid can flow is considered in the technical environment examined to be equivalent to a pipe. In any court case, the holder of patent A would have to respond to some fairly taxing questions, such as: “Is the patent holder attempting to obtain protection that is more extensive than that to which the patent holder is entitled on the basis of the technical aspects presented in the patent application?” and “Why does the claim then refer to a “pipe” if at the patent application drafting stage it was clearly apparent that e.g. an open channel or even a rod is equally feasible?”. The success of an action for infringement against a competitor would be very uncertain. In particular, if the holder of patent A is a private individual or a small enterprise, it would perhaps not be worth even bringing an action for infringement in view of the risk of incurring expenses.

What about patent B? It is very likely that the competitor’s device would be considered to infringe patent B by according with the wording of the claim. The patent B claim states that the device has a flow channel with walls for directing the flow, and the outer surface of the rod could be considered to constitute a wall that directs the flow. But if it is deemed that no such literal infringement is taking place, an infringement based on equivalence would be considerably easier to justify than in the case of patent A, as it is distinctly apparent from patent B that a pipe-based version is not the only possible one. The success of an action for infringement against a competitor is thus considerably more certain than in the case of patent A. Success may even be so likely that the competitor would submit to the demands of the holder of patent B without the need for legal proceedings.

The costs of drawing up the patent application would be several thousand euros, depending on the number of countries. The costs of legal proceedings on the patent would be from five figures up to millions of euros. Thus, if a patent is to be used to offer protection from the actions of competitors, it is immediately apparent that patent B is a considerably less expensive option than patent A.

For the image…

Although patent applications can be made purely for image reasons, to give out the message that the applicant is at the cutting edge of development in the sector, patent B could even then prove less expensive that patent A. Consider, if you will, a situation where a competitor is suing for infringement of a patent protecting some other invention and it is ascertained that the competitor is using the rod-based version of the invention referred to above. In this case, cross-licensing would be a natural solution. If the competitor has a carefully prepared patent for its own invention, the competitor will not necessarily agree to cross-licensing with patent A, as it is very uncertain whether a court of law would consider that patent A protects a rod-based version as well. Instead, it is considerably more likely that the competitor would agree to cross-license with patent B.

A saving of a couple of thousand euros in drawing up the patent application and a saving of several thousand euros in the patent office processing could therefore lead to a substantially greater loss if, in court or in cross-licensing negotiations, an argument emerges over the coverage of a patent that was drawn up too narrowly in the first place.

Think about your needs – and let Berggren help you!

The granting of a patent always represents an exchange between the inventor and society. It is natural that the negotiations on this exchange, i.e. processing by the patent office, would be considerably easier, less costly and quicker if the patent applicant is content with less (the more modest patent protection given by patent A) than that to which the applicant is entitled by making the invention public.

But an applicant who wishes to obtain more in return for publishing his/her invention must be prepared for more costly and time-consuming negotiations. Such an applicant should aim for patent B, and in these endeavours Berggren’s IPR experts will be able to provide unrivalled assistance to the inventor. Patent B is clearly a better IPR option when the invention is intended to help achieve success in the applicant’s business operations over the longer term. This would be the business-centric choice: B for business.

 

Janne Väänänen
European Patent Attorney
Berggren Oy Ab