How I Discovered Patents!
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After I finished college, I was hired as a synthetic chemist by a medical device startup that was interested in making novel materials. This was my first week at my first job as a chemist. My first assignment was to research a way to make a target molecule. Wanting to impress, I diligently searched the literature for the best possible route.
I found the perfect reference!
I found a patent that made the exact molecule that we wanted to make and with a very impressive yield!
This discovery was long before I got my Ph.D. in chemistry or my degree from law school. I didn’t even know what a patent was!
My boss said that he was glad that I found that patent. It showed that I am a good researcher. However, that patent was owned our competitors. However, the patent couldn’t stop us from making the molecule itself, it could only stop us from using their method of making the molecule.
When I asked why we didn’t just license the patent, he said that they had thought about licensing it. But they realized that it would be less expensive to hire a synthetic chemist to find another way to make it.
I got my first job as a chemist because of patent law!
This is the sixth post in my series “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims.” If you read my second post, then you know that only the claim section of an issued patent can be used to sue for patent infringement. If you read the third and fifth posts, then you have a few tips for reviewing product claims.
Now is time to discuss method claims, which are also called process claims. In general method claims are claims that recite one or more steps. They are typically used to protect methods of making a product, using a product, or providing a service.
Method claims are usually considered much weaker than product claims because method claims can be difficult to enforce.
Infringing Methods Are Harder To Detect
Unless the method is being practiced in view of the public, the infringement of a method claim is more difficult to detect. The first step of any patent litigation is usually suspecting that a competitor is practicing your invention without your permission.
Detecting an infringing product is usually pretty straight forward. You see a competing product being offered for sale, suspect that is might infringe one of your patent claims, and determine if the product is actually infringing your claim. Proving that the product infringes your patent claim is as easy as buying the product and handing it to your patent attorneys.
In contrast, if you see a product, how can you figure out the exact process used to make it? How can you prove in court that your claimed process was the exact process used to make the product?
In practice, you often learn that a competitor is infringing your method claim when a former employee of your competitor tells you how they are making their product. Proving that their method infringes a claim of your patent might be established my legally requiring them to hand over their training manuals.
How will you detect and prove infringement if your competitor’s product is made overseas?
It’s Easier To Design Around Method Claims
You can think of a claim as the fence line that protects your invention. Imagine that you want to keep competitors from reaching the top of a mountain. A product claim would be like fencing off the land at the top of the mountain. If your competitors step on your land, they infringe.
A method claim would be like buying up and fencing land to block off convenient paths to the top of the mountain. If your competitors step on that part of the path, then they infringe.
The problem is that there is only one mountain top, but there are many ways to reach the top of the mountain. How much is it worth to you (or your business) to block the easiest paths up the mountain?
For example,
Claim 1: A method of making a sandwich comprising:
applying peanut butter onto a surface of a first piece of bread;
applying jelly to the peanut butter; and
bringing a second piece of bread into contact with the jelly.
This claim might seem to protect the method of making a peanut butter and jelly sandwich because many people use this method to make a PB&J. However, remember the story of Martin Luther from my third post.
Patent attorneys are claim fundamentalists!
What steps do the words literally require?
Can you get the same product or result using a different method?
A competitor might design around this claim by applying peanut butter to one piece of bread, applying jelly to the other piece of bread, and then bringing the peanut butter and jelly coated sides together.
Generally, the steps of a claim can be performed in any order unless the language of the claims requires a specific order of the steps. However, here the claim requires applying jelly to peanut butter before the second piece of bread is brought into contact with jelly because the only way to bring the second piece of bread into contact with “the jelly” was for the jelly to already be in place.
If the order of the steps in your method can vary, then the claims should recite the steps in a way that allows for them to be performed in any order.
Another thing to consider is that a competitor must perform all of the steps of the method claim to directly infringe that claim. For example, suppose that a competitor discovered that a third party was selling peanut butter sandwiches. Your competitor could buy the peanut butter sandwiches from the third party, add the jelly to them, and sell them as peanut butter and jelly sandwiches.
This design around would not infringe claim 1 because your competitor did not perform all of the steps of the claim. Namely, your competitor did not cause the step of “applying peanut butter onto a surface of a first piece of bread.”
The fewer the steps, the broader the method claim. Also, it is important to avoid method steps that make an intermediate product that can be purchased (e.g., the peanut butter sandwich).
The best strategy for method claims is to reduce the method to one or two steps that are essential and as close to the result a possible. By analogy, if you must block the paths up to the top of the mountain, it is best to block bottlenecks that are as close to the top as possible.
Claim 1. A method of making a sandwich comprising:
bringing peanut butter into contact with jelly, wherein at least one of the peanut butter and jelly is in contact with bread; or
bringing a mixture of peanut butter and jelly into contact with bread.
This method claim would be infringed by a single step that is just before the formation of the product. Try to think of a way around it.
Strategy: If you can imagine a variation of your innovative method, ask your attorney if your claim would cover that variation. If your patent attorney cannot make time to answer these questions, then you should make time to find another patent attorney.
By the way, going back to my story, I did figure out a way to make the molecule that did not infringe their claims!
The next post in my “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims” series will cover “How Can I Prevent Design Around?” Click here for the next post.
The next post in my “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims” series will cover “How Can I Prevent Design Around?” Click here for the next post.