I’ll let you in on a secret: Not all patent applications are created equal.
Any patent attorney can create a well-presented application based on the information an inventor shares, but that doesn’t necessarily mean it’ll provide commercially valuable protection.
There are no strict rules that mandate patent attorneys to delve into the broader, underlying concept behind an invention to ensure it’s reflected in a patent application.
But it’s a vital step.
Why? Because without a comprehensive understanding of the broader concept, patent applications may inadvertently limit the protection to a specific embodiment. This may leave the invention vulnerable to workarounds and other inadvertent shortcomings may leave the application invalid.
Let’s look at a few examples where patent applications failed…
Improver Corporation v Remington Consumer Product Limited (1990)
Improver invented a hair removal device that featured a unique design, with a spring arranged in a curved shape, spinning at each end. The coils of the spring opened outward along the curve and closed inward, effectively gripping and removing hairs.
Initially, Improver filed a patent application that claimed the specific arrangement of the spring. However, a competitor came up with a clever workaround.
They replaced the spring with a rubber cylinder that had a helical slice formed within it. The slices in the rubber cylinder mimicked the function of the spring’s coils, opening on the outer side of the curve and closing on the inner side.
This led to legal disputes in various countries as they tried to determine whether the competitor’s invention infringed on Improver’s patent.
Improver became a leading case in the UK and New Zealand and resulted in a new test for–inventive step. By this time Improver Corporation had spent far more time and money than it had set out to do.
Exploring a broader inventive concept during the patent application process may improve your chances of obtaining strong, enforceable patents that not only protect the initial embodiment, but that provide a solid foundation for safeguarding various implementations and adaptions.
Windsurfer International Inc v Tabur Marine Ltd (1985)
In another well-known case, also famous for its test of the inventive step, the focus was on a ‘water vehicle’ equipped with an articulated mast.
Helpful detail wasn’t mentioned in the patent claims: that the ‘water vehicle’ was essentially a surfboard designed to respond to the rider’s shifting weight, allowing it to turn gracefully.
This claim to a ‘water vehicle’ steered by the articulated mast covered prior art in the form of a rough prototype that had already been developed.
Because of this, the patent was found invalid.
However, there was scope for a granted patent if a closer look at the ‘water vehicle’ had been taken. After all, a world-wide industry emerged from the invention so there was significant merit in it.
A valuable lesson
Again, this example highlights the importance of articulating the invention as a broad concept which includes examples of that concept. Achieving this requires a collaborative effort between the inventor and patent attorney. While this may sound a little cryptic, it becomes clear to everyone involved when it is working.
In this case, features that are likely to distinguish a surfboard from a ‘water vehicle’ should have been uncovered and included in the claim set.
Aside from boosting the chances of success, a well-prepared patent application can mean significant cost savings in the patent process.
That’s because a well-structured and comprehensive application is more likely to be approved without the need for extensive back-and-forth with patent authorities, which can be time-consuming and costly.
The same goes for trademarks, designs and IP agreements.
Tips for preparing a robust patent application
- Include multiple examples of an invention – this demonstrates the versatility and practical applications making it easier for patent examiners to grasp its potential impact and value.
- Include components with equivalent functions to original ones to broaden the scope of protection.
- Pay attention to whether your patent attorney digs deep for the underlying concept. Challenging questions and surprising insights are signs to look out for.
- Embody the inventive concept in the claim. It shouldn’t simply recite a novel combination of features but communicate the core of the invention. It’ll be more likely to be considered as having merit and will cost far less to be granted.
- Follow-up after filing a patent application – monitoring and adjusting the application allows for improvements and refinements, ensuring your patent provides the most comprehensive protection.
- Allow time. A patent attorney may have questions – treat these as prompts for deeper insight – to review and reflect – rather than simply questions to answer.
- Engage with the patent preparation process – understanding the patent’s nuances and potential applications will add significant value to your intellectual property rights.
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