Yes – both. Often, when drafting a patent application a client does not want to provide details, because they are worried that “the patent will be limited to the details”. However, the opposite is true. A broad patent without details will often fail. A narrow patent without generalities will be narrow.
So, is the combination, a broad patent with a narrow example, enough? No.
One purpose of the patent specification is to show that the inventor had conceived of the invention, in all its breadth and glory, at the time of filing. If the generalities are missing, it can be assumed that the invention was not conceived in as general a form as later claimed. If the details are missing, the application may have no enabling embodiments. If there is only one example, the patent office (especially outside the USA) may insist that the claims must be limited to that single example.
Finally, one must not forget that a general concept may be so broad as to encompass the prior art. If the only fall-back in the patent application is one example, well, that is what you are stuck with.
It should be noted that the USPTO is more flexible than most jurisdictions regarding this issue.
So, did you provide enough details to show that you actually posses the general ideas you are claiming?
That’s right. Even a granted valid patent cannot prevent a competitor from copying your invention. All a patent can do is change the competitor’s assessment of risk. This can be very valuable, of course.
So, having good patent protection will have a strategic effect on your competitors, but will probably not work as an absolute barrier. This is true even if you patent appears valid and appears to be infringed and is recognized as such by your competitor!
First example. Competitor ACME invested $100M in developing and marketing a product. Will ACME throw that money away just because you have a patent? ACME may very well prefer to risk a lawsuit.
Second example. You are a small startup, with a patent infringed by a ACME. ACME may well decide that in any legal contest you will run out of money first, and risk an infringement.
Third example. You have an innovative product. ACME likes the market. Should ACME buy you or copy your product? If your patent protection is good, ACME may well decide to buy you out. If your protection is even better, ACME may decide not to buy your competitor.
This means that the value of your patent portfolio depends also on the expected behavior of your potential competitors/partners. A later post will relate to the type of copying.
So, how will your competitors evaluate your patent portfolio?
p.s. A good idea or product will usually be copied more vigorously if it has no patent protection, and there is a trade-off between value of protection and damage due to publication, which needs to be considered.
While patent applications can only describe what is known at the time of filing, they exist in and for the future. First, the patent application is meant to protect a business/product which often does not yet exist. Second, the patent application, when granted, will be in force for ~20 years from the time of filing. Third, in most countries, no changes are allowed in a patent application except as specifically provided for and anticipated in the patent application as filed.
So, how can we draft a good patent application, if we are not aware of what market will be like, what prior art will come up, what the Examiner will misunderstand and what the competition will be doing?
The short answer is that we cannot. But we do have some techniques which can help.
First, we can make sure that what inventor does know or should know or can easily know, is extracted from the inventor and taken into account in the drafting. This is especially true about plans and thoughts for future R&D.
Second, we can leverage our experience as patent attorneys and try and predict the most likely directions examination and prior art might take.
Third, a careful analysis of the possible directions the market, product and competition might take should be carried out before filing.
Finally, the patent application should be refocused, as the future becomes clearer. This can often be done during responses to office actions or during times where a voluntary amendment is allowed.
So, are you protecting the past or looking to the future?
Patents are the original party of “no”. They never say what a patentee is allowed to do, only what others are not allowed to do. So, while patents are a “limited monopoly”, this is true only in the sense that at most the patent holder has permission to work the patent.
A first consequence is that filing a patent describing your product, even if a patent is granted, does not mean you have freedom to sell the product. It is generally true that nobody else can file for that invention, but they can obtain a blocking patent or perhaps previously own a blocking patent.
For example, Alice invents the car. WOW! But Bob has previously obtained a patent to the wheel. Or, Charles later obtains a patent to the brake. In both cases, Alice cannot sell any cars without the permission of Bob or Charles. Typically, Alice will obtain patent licenses from Bob and Charles. This is a very common situation for technology products and less common for pharmaceutical products.
A corollary is that a manufacturer should expect to spend money on licensing.
A second consequence is that a patentee and his patent attorney must identify those features of a product that cannot be avoided. A narrow patent on an unavoidable feature beats a broad patent on a very impressive but avoidable feature. Consider; would you buy a car without an air conditioner? Maybe. Would you buy a car without a “reverse” gear? Never. Even though you do not drive much in reverse, probably using it less than 1% of the time (example due to Motti Teicher).
So, what do you want to say “no” about?
You cannot obtain a patent to an idea, only to an implementation of that idea. In fact, one of the main drivers behind the difficulty in obtaining software/business patents in the USA, is the definition of such patents as mere/abstract ideas.
A first corollary is that a patentee must realize that his “idea” is not protected, only all those implementations that:
(a) are described in the patent application;
(b) work; and
(c) are patentable (e.g., novel and non-obvious).
Others can and will copy the idea, modify it, etc. A good patent attorney will do his (or her) best to protect every commercially valuable consequence of the idea. Recent US law prevents even that.
Identifying potentially valuable consequences of an invention is not a prefect art, perhaps because the future is often surprising or because there are so many possible futures. In any case, the idea(s) underlying the invention or product must first be teased out.
A second corollary is that a patent application is akin to a recipe book, not a wish list. It must include all the detail needed for the “cook” to carry out the implementation to be protected by the claim. Otherwise, no protection even for the implementation. Desired results, half-baked ideas and research directions do not provide any protection and often harm future protection.
A third corollary is that patents must cover many many possible implementations. Hence the proliferation of “optionally” and “alternatively” and “in some embodiments”.
So, do you know all the implementations you want to cover?
I am starting a series of short posts in an attempt to educate the public about patents. Each post will take a concept or a misconception about patents (or IP in general) and explain it a bit, perhaps with an example. For some lucky posts, my daughter Smadar will provide illustrations.
Hope you enjoy. Feedback welcome, including special requests (no guarantees).
Caveat – there are always exceptions. That is what professionals are for. Please do not take the posts as legal advice. They are not.