Words, words, words

Like many human activities, intellectual property law has its own language. To make matters worse, because it is in the legal field, the meanings of words in the lexicon are hotly debated. With this in mind, we have tried to simmer down the great cauldron of legalese to a few terms, which when explained may illuminate the arguments of attorneys and patent agents for us lay people.

Although intellectual property law uses hundreds of unique words and phrases, we will focus on the terms associated with patent applications and, in particular, the claims that describe an invention. So, we have skipped words like “patent” and moved ahead to words like Markush and Prosecution. There are three primary sources in which one can read more about these words: Title 35 of the U.S. Code (35 USC), Title 37 of the Code of Federal Regulations (37 CFR), and the Manual of Patent Examining Procedure (MPEP). These are all found at the U.S. Patent and Trademark Office’s (USPTO’s) Web site (www.uspto.gov).

Patent agent
Secret agent man, secret agent man. Not quite. A patent agent is a person who usually has technical training, such as an engineer or scientist, has taken the Patent Bar examination, and has been certified by the USPTO. Patent examiners who have been employed by the USPTO for more than four years are eligible to receive a patent agent certification when they leave the office, without taking the Patent Bar. The certification, in either case, means that patent agents are eligible to represent inventors and prosecute an inventor’s application in front of the USPTO (37 CFR 10.6).

Prosecution

Interesting November patents

November 10, 1942. Charles Drew was granted U.S. patent 2,301,710 for “Apparatus for Preserving Blood”. The invention allowed the separation of plasma and blood cells so that the blood could be stored longer. The technique dramatically improved medical treatment of the injured in World War II. November 25, 1975. Robert S. Ledley was granted U.S. patent 3,922,552 for “Diagnostic X-ray Systems”. The invention built upon the already well-known medical X-ray instruments to create what is known today as a CAT scan. Source: 2001 U.S. Patents Calendar; DewRay Products, Inc., Livonia MI.

This is not a district attorney taking you to court. Prosecution is a legal term for the process of actively seeking a patent. An inventor, lawyer, or patent agent (see definition) is said to “prosecute an application in front of the United States Patent and Trademark Office” (37 CFR 1.31).

Skilled in the art
Although this sounds like a description of a karate master in a martial arts action movie, it actually refers to someone who has experience or training in a particular field (so a karate master, for example, would be skilled in the art of karate). As used in the specification definition, it allows inventors to write about their invention using the language and ideas that are accepted in the field in which the invention applies. Basically, it means that chemists (with a chemical invention) do not need to explain organic chemistry to a mechanical engineer; they only have to explain their invention to another chemist or chemical engineer. Likewise, a physicist would not have to explain electron movement in a superconductor to a molecular biologist in a patent application on a superconductor (MPEP 2141.03).

Specification
The specification describes what a patent application must have to be considered valid; it specifies what is to be patented. The word is defined in 35 USC 112 as follows:

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Claims
Claims are the definitions that describe an invention.They are probably the most important part of the specification, because they detail what makes the invention new and nonobvious. There are many types of claims, with a special vocabulary that describes them. First, we will define claims in general, and then discuss several words used to describe certain aspects of claims.

In a patent, the claims are the numbered statements that say “I or we claim,” “The invention claimed is,” or something similar. Whether there are hundreds of claims or just one, the novelty and nonobviousness of the invention must be conveyed in every detail. However, the more claims, the more the USPTO will charge the inventor to examine the application. When reviewing the claims about an invention, examiners must look at the broadest possible interpretation of each claim to make sure that once the patent is granted, the claims cover only the invention and cannot be used to infringe other inventions. The claims are often very complicated and written in unique language, whereas the background or abstract of the application or patent is written in normal English. There are several types of claims:

Composition, product, and apparatus. Claims cover various subjects; composition, product, and apparatus claims focus on the obviousness, novelty, and usefulness of an object. If an examiner finds evidence that the invention is not new, it is up to the inventor to show how his or her invention is different. For chemical compounds, an important distinction is made, that the physical properties of a compound are inseparable from its structure. In other words, you cannot patent ethanol by claiming a different melting point, when the structure and compound are the same as those of ordinary ethanol (except for the melting point).

Dependent. This type of claim (say, claim 15) refers to a previously made claim (say, claim 1) and discusses a part of an earlier claim (claiming a specific limited condition of claim 4). When examining a dependent claim, examiners consider the dependent claim to have all the limitations of the claim it refers to. In other words, claim 15 cannot be broader than claim 4, to which claim 15 is referring. A variation of the dependent claim, the multiple dependent claim refers to two or more previous claims and thus incorporates all the limitations of the claims that it references (MPEP 1605).

Independent. The first claim in a patent application is almost always an independent claim, but other claims may be independent as well. These types of claims stand on their own and are independent of the patentability of the other independent claims (MPEP 1824).

Jepson. A Jepson claim admits that the invention is an improvement on a previous invention. The claim must be written in a specific order. First, give a general description of the known elements or steps of the existing invention. Second, state “wherein the improvement comprises” or something similar like “wherein the combination with”. And third, list the elements or steps that are new or improved over the previous invention. If an inventor’s own invention is listed as the Jepson claim, then it is not prior art; however, if it is another person’s or organization’s invention, then it is considered prior art. In Europe, the phrase “characterised in that” is often used instead of “wherein the improvement comprises”. Like many strange terms in patent law, this claim’s name is based on a case, Ex parte Jepson, which was ruled on in 1917.

Markush group. No, you did not see them on MTV, at least not yet. A Markush group is a way of listing a group of claimed materials. Basically, an inventor writes, “selected from the group consisting of A, B, and C” (MPEP 2173.05h). The alternative to claiming it this way would be to write numerous claims saying, “in the invention in claim 1, group R is chlorine,” and then drafting additional claims for each possible group.

Markush groups are a way to group related things together. While this type of claims is commonly used in chemical patents, it can also be used in mechanical patents. For example, say you invented the winter coat; you could use a Markush group to describe the possible fasteners by saying, “fasteners selected from the group consisting of zippers, buttons, and loops.” This way, related parts are listed together. In chemical patents, like functional groups are listed in Markush claims, such as halogens and other electronegative groups. For example, you could say, “In the invention in claim 1, group R is selected from the group consisting of fluorine, chlorine, and bromine.”

With chemical structures, it is often possible to use many substituents in a given structure. The result is that you have a few to hundreds of possible formulations; and each possible substitution location could be a different substituent. There are often changes in the substituent groups that do not change the original use of the compound and thus can be thought of as part of the original invention.

Although most Markush groups claim a few to a few hundred variations, some applications and patents claim far more possible formulations. For example, this demand on examiners can be seen in U.S. patent 4,801,613, granted in 1989, which uses a Markush group to claim 10,235,904 formulations of a peptide. This extremely high number of possible compounds would be impossible for an individual, or almost any organization, to search using today’s technology.

However, Markush claims allow important innovations to be patented. Suppose, for example, that you invented a new organic compound that has a unique fundamental structure never seen before and with many possible substituents that could be used. You could effectively group these possible substituents with Markush groups, because the substituents were envisioned at the time of invention. So you could claim the basic structure with halogens, alcohols, hydrocarbons, and so on. However, you may be challenged to provide proof that a particular combination was envisioned if the patent is challenged in court.

So why name it Markush? According to John Barnard and Geoff Downs (1), “The name Markush is derived from Dr. Eugene A. Markush (1888–1968), a Hungarian-born chemist who migrated to the U.S.A. and founded the Pharma Chemical Corporation in New Jersey in 1919. In 1924, he filed a patent application in respect of a class of novel pyrolazone dyes, and following a legal argument over a U.S. Patent Office regulation against claiming alternatives for an invention, he was obliged to rephrase his claims using expressions of the form ‘where R is a group selected from . . . ’.”

Process. Process claims describe a process used to make or do something. They do not provide protection of what is made, just the process used to make it. However, a previously patented or existing product that performs the process may be evidence against the claim. Basically, that means you that cannot patent the process of making spaghetti when spaghetti-making devices have been around for years (MPEP 2112.02).

Product by process. This is an odd combination of the process claim and the composition, product, and apparatusclaims. In a product by process claim, the inventor claims a product made by a specific process and provides little detail about the product. If the product is not new, then the examiner will reject the claim and prompt the inventor to prove how the product made by this method is different from the previously known product. If there is no significant difference, then the inventor loses the claim. For example, one company claimed a process to make a zeolyte “essentially free of alkali metal”. However, there was already a product that was “essentially free of alkali metal”, and the inventor did not present evidence that showed that his product was more “essentially free of alkali metal” than the existing material or that it was different in any other way (MPEP 2173.05(p)).

Reference

1. Perspectives in Drug Discovery and Design 1997, 7/8, 13–30.