What do Huckleberry Finn, Catcher in the Rye, and a well-drafted patent application have in common? They all tell good stories, of course! Telling a good story in a patent application is especially important for inventions in high volume areas, such as those that relate to healthcare. In these crowded areas, claims will commonly recite elements that are all already separately well-known in the prior art.
Telling a good invention story is one way to lay the groundwork for convincing the patent examiner that your invention is worthy of a patent. Sure, you can look to submit an affidavit to introduce your invention story during prosecution. But by then, the examiner will already have made at least a preliminary decision about what is patentable in your application. Why wait that long?
Including a good invention story is also useful beyond the examination context since patent applications are often used for marketing. For example, a startup company seeking investors will want to show non-lawyer venture capitalists a patent application that tells a good story. Also, by having a good story that uses normal descriptive wording instead of dry legal jargon, you improve the chances that your patent will be found by anyone searching the Internet for your area of focus, and who wouldn't want increased public awareness for their technology?
What types of information might you want to include in a patent application to best tell your story? And where should you include it? We will explore answers to these questions below.
Write a Good Introduction
Consider the following introductory sentences in a patent application:
“Various methods for making orthopedic implants are described.”
“While fenestrated bone screws provide certain advantages to a patient with poor bone quality, screw weakness may eventually injure the patient. Processing techniques such as shot-peening or cold-working can enhance the strength of fenestrated bone screws.”
Which application sounds more interesting to you? The first few sections of a patent application are your chance not to only pique your reader’s interest, but also to convince your reader that you really have something that is new and important.
Describe the Inventor’s Unique Appreciation of a Problem
Conventional wisdom may be that only the Europeans look at problems addressed by the prior art. U.S. practitioners, however, should also consider this issue, focusing on whether the prior art appreciated the problem solved by the claimed invention. According to Patent Office rules, “a patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified."
A 2008 Federal Circuit case, In re Omeprazole Patent Litigation, emphasized that claimed structure may not be obvious if the reason for that structure was not previously known. In the Omeprazole case, the Federal Circuit held that discovery by the patentee of an adverse interaction between an active agent and a coating was evidence of the patentability of the claimed invention. In re Omeprazole Patent Litigation, 536 F.3d 1361, 87 USPQ2d 1865 (Fed. Cir. 2008).
Describing the inventor’s unique appreciation of the problem may also provide a basis for excluding certain prior art references from an examiner’s rejection for being nonanalogous. Patent Office rules require that “for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention.” For example, a reference may be nonanalogous if it is not reasonably pertinent to the problem faced by the inventor.
There are a few reasons to include information about the inventor’s unique discovery of the source of problems in prior art structure. First, of course, is to lay the groundwork for arguments that may need to be made during prosecution. But perhaps more importantly, it is your chance to explain why the invention is patentable before the examiner makes a rejection. This type of storytelling helps the examiner, as well as potential investors and even competitors, have a better understanding of why your invention is so important.
Explain the Criticality of Claimed Dimensions
You may have heard that claiming a certain number, whether it is a dimension, percentage, etc. by itself is unlikely to serve as a basis for non-obviousness. But Patent Office rules say that evidence of criticality of such numbers can support patentability. One way to show this criticality is to provide evidence that the given dimension, percentage, etc. provides new and unexpected results relative to the prior art.
This evidence is often best shown in the form of a graph or chart that is referred to in the detailed description and visually emphasizes the unexpected results. Drawing attention to this type of graph or chart in the detailed description may help the examiner easily distill your invention story.
Telling a good invention story can help the examiner and other readers to understand why your claimed invention is worthy of a patent. While it is important to craft your story in such a way so as to avoid providing the examiner with a path for an obviousness rejection, giving the examiner information about how the inventor developed the invention and how it performs better than the prior art before a rejection is even made can shorten prosecution and lead to better prosecution outcomes for applicants.