How Important Is Attorney's Technical Expertise in Prosecuting Patent Applications
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A.Current Inventions and Technical Merit
Unlike inventions made in early time, most of the inventions to be patented today involve advanced science and technology. Patentability determination is often a battle of technical merit. A great number of inventions are in
computer technology and high tech areas. We cannot understand their internal working simply by observing them. Their working mechanisms often reside at molecular levels.
Molecules behave according to their own rules. Assumptions that are based upon our macroscopic experience
are probably very likely incorrect. For example, when colored plastic beads are mixed with a marginally-compatible liquid media, a higher number of beads seem to deposit on the surface. It would be a mistake to place a claim limitation like ¡°so that most of the beads are deposited on the surface of the liquid." Notwithstanding a relative high population of the beads deposited near the surface (an interface), probably only a small fraction of the beads actually is near the surface.
Molecular properties, as reflected in dynamics and equilibrium of chemical and biological processes are not what a person could learn in the course of drafting patent claims. To fully understand them, it is necessary to gain hands-on experience in doing experiments, solving mathematical equations, and conducting data analysis.
Patent attorneys often accept inventors' theories, including hypotheses and terminologies, and use them in patent applications. A patent attorney should not blindly rely upon inventors' theories in characterizing high tech inventions. Sometimes, inventors may come up with inventions by luck, and they are not schooled in the fields of their inventions. An inventor may form a theory by improperly extending his own macroscopic world experience into a different world. In this situation, the patent attorney should find correct claim limitations, and avoid uncertain or wrong claim limitations. Placing an improper limitation in claims would make
them infringement-proof. In this situation, the patent attorney needs to know more than what the inventor knows in order to correct the
error.
The importance of technical knowledge and training is underscored by the hiring practice of the United States Patent and Trademark Office (the "office"). In hiring patent examiners, the office focuses on candidates' technical degrees
and research experience. Probably for the same reason, the office requires that patent law license applicants meet a minimum requirement in technical training. It requires neither law degrees nor training in judicial processes and administrative procedures.
Patent law firms take two approaches to mitigate the disparity in technical knowledge between patent attorneys and patent examiners. Some patent firms hire and maintain technical consultants as advisors to their patent attorneys. This approach may work well for inventions that are relatively simple. However, it is probably not cost-effective because information flow between patent attorneys and technical advisors necessarily consumes time and unavoidably introduces errors. In situations where inventions involve
multiple complex technical issues, the patent attorney may need a great deal of consultation. It makes no sense to teach a patent attorney who has little knowledge of the invention to learn esoteric subjects such as gas collision
theory. In such a situation, it is simply unrealistic to use this model. This arrangement may unnecessarily increase attorney fees and consulting fees. The other approach is to hair patent attorneys with strong science background. Only a few leading patent law firms use this approach.
In order to get a patent with maximum protection, the patent attorney must use precise terms in patent claims. It is absolutely necessary for the patent attorney to know at least as much as what the inventor knows, to be fully familiar with technology
background, and to be able to discern uncertain limitations.
In many infringement cases, the dispute is whether patent claims read on infringing devices or processes literally or under the doctrine of equivalents. Finding a literal infringement will require interpretation of claim limitations and resolution of inconsistent languages in the patent. It is inconceivable that a patent attorney, without being familiar with the technology,
can fine-tune the boundary of the claims.
B.The Effects of Scientific Theories on Patent Claims
While scientific theories guide development of technology, a patent attorney must be prudent in using scientific theories in patent claims. A scientific theory can be overthrown, rejected or modified while an invention developed under the theory continues to be valid. Thus, it is possible that a patent claim that has incorporated a scientific theory will become a patent that can NEVER be
literally infringed after the theory is rejected. At the minimum, a patent attorney must avoid using parameters that might have different meanings under conflicting theories.
A scientific theory can be modified many decades after its acceptance. The classical chemical bond model largely disappears from college texts after quantum mechanics is accepted. The outmoded bond model is used in texts
only for convenience. Another example is energy distribution of molecules. Under the classical view, as reflected in thermodynamics, the energy levels of molecules follow continuous functions. While this theory is still good in many aspects, spectroscopic data and quantummechanical computation all show that molecules take only certain energy levels.Since both thermodynamic properties such as enthalpy, entropy, heat capacity, and specific volume and quantum-related properties such as spectroscopic data and electronic structures are routinely used in characterizing chemicals, chemical processes,and biotechnology, it is important to understand their fundamental differences.
Changes in scientific theories can affect claim construction and infringement dynamics. Under the old theory, the Benzene ring has three single bonds and three double bonds. Under the molecular orbital theory, however, electrons of the carbons do not stay in any fixed locations but constantly orbit around all jointing atoms. Moreover, there is no such distinction between single bonds
and double bonds. Electronic density differs along the ring, and thus the charges vary along connecting carbon atoms. Strictly speak, a claim using the classic bond model will not read on real Benzene molecules literally. In some situations, a change in scientific theory may make claims infringement-proof. A good strategy is therefore to use theory-independent claim limitations whenever possible. A patent attorney should use theory-dependent claim limitations only when there is no other way to characterize the invention.
A wrong application of a scientific theory in patent claims may make a patent totally useless. A process converting a compound into another under a given set of conditions is theory-independent. In other words, if the same process is used with the same starting compound, the same end product will result. Assuming that a theory incorrectly PREDICTED that the process converts the
starting compound into structure C. Upon the belief, the patent attorney claims structure C (a structure that actually did not exist in the invention) and the process in the patent application. After a patent is granted, new development in science
shows that the process actually converts the starting compound into structure D. An infringing party makes structure D using a DIFFERENT process. The patent owner will be out of luck with his product claim because he claimed structure C but not structure D. In order to enforce his patent right, the patent owner has to file a reissue application to correct the error. This may waste a great deal
of money and give away some right to the infringing party.
Although it is easy to see the problem arising from scientific uncertainty, it is not easy to distinguish theory-independent parameters from theory-dependent or and theory-influenced parameters. Assuming that the first law is modified to take into account of some inaccuracy, this might slightly affect the interpretation of enthalpy data and chemical equilibrium constants. The values used in the patent claims remain the same except that they ALSO contain errors. Interestingly, the modification in the theory actually affects the boundaries of patent claims. In contrast, if the first law totally fails in a system where the invention was claimed, the parameters derived from enthalpy may have no meaning. Most of the theory-independent parameters might be affected by other theories that govern the method of acquiring those parameters. For example, when a theory on the mechanism of a particular analytical balance is changed, it implies that measurement errors are different from what we once believed. This problem will not render measurements totally invalid. If the measured ranges are written into the claims, the claim boundaries are likewise inaccurate. The claims might inadvertently read on future inventions or fail to read on what they should.
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