Return to Newsletters

TechRoadmap Directions
  Intellectual Property Issues for High Tech Companies
Vol 3 Issue 11 December 2003

Forward This Directions
Forward this Directions
To a Friend!

in this issue

"Where's My Holiday Card?"

Inventions Need Not Work... (Work Well, That Is)

Tip of the Month

IP Links of Interest

On-Line Patent Glossary


Request a no-cost IP Review

Let us review the good and not so good IP practices you use. Sign up on our web site with the link below. Make request here....

Subscribe to Directions!
If this issue was forwarded to you by a friend, you can get your own subscription

  Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)


Last month the Court of Appeals made clear that while your invention must work for your patent to be valid, it doesn't have to work well. In fact, those additional things you learn making it work well are fair game for another patent. To see that you can build a patent portfolio as your product matures, read "Inventions Need Not Work... (Work Well, that is)".

  • "Where's My Holiday Card?"
  While it's fun to get a mantle full of holiday cards, TechRoadmap believes that the money spent on cards and postage is better used to help the hungry. As in previous years, I have made a contribution to the Greater Boston Food Bank in lieu of mailing you a card. I invite you to make your own contribution using the link below. Also, I will increase my contribution for each new Directions subscriber between now and New Years Day, so forward this issue to anyone you think will subscribe!

Make your own GBFB contribtion here.

Return to Contents

  • Inventions Need Not Work... (Work Well, That Is)

We're strong advocates of tracking the progress of your inventions and submitting patent applications as early in the development process as possible. Early identification of patentable ideas documents your priority date and helps you avoid losing patent rights because of untimely public disclosures or on-sale bars.

At the same time we often have to remind inventors that a bright idea is not enough for a patent, that the invention process may start at conception but it doesn't finish until reduction-to- practice (RTP). RTP is important in the eyes of the patent world as a way to keep inventors from "patenting now and inventing later". Without a RTP (as evidenced by an "enabling" patent specification) we could all sit down and make a list of desirable inventions - 100 MPG cars and thought-to-text software - patent them, and hope to figure out how to build them, without competition, over the life of the patent.

Thus there is a fine line between patenting as early as possible and patenting before you know how to make your invention work. CFM Technologies was accused by alleged infringer YieldUp of crossing that line. (YieldUP's infringement defense was that CFM's patents were invalid because the invention did not work).

The patents cover a completely closed semiconductor wafer cleaning system. The record of this case shows that the first, beta, test for the invention was, indeed, less than successful; the machine did not meet Texas Instruments' cleanliness standards. After months of experiments, the inventors identified the problem and solved it. CFM filed for and received a third patent on the improvements they discovered while working to satisfy TI.

YieldUp, in defending itself against infringement, convinced the trial court that the patents were invalid for nonenablement; that is, the invention as described in the specifications "could not clean" wafers and that more than a routine degree of experimentation (the work at TI and the resulting patent) was required to correct the deficiencies.

Luckily for CMT (and the rest of us too), the Appeals Court determined that the district court erred by setting the bar too high; "Enablement does not require an inventor to meet lofty standards for success in the commercial marketplace", absent a claim limitation to that effect. Only "If a patent claimed a system that achieved [a specified, numerical] cleanliness" would "enablement" require the specification to describe such a system. Thus, the level of disclosure necessary to satisfy the law varies with the scope of the claims.

Specifically, the Appeals Court absolutely rejected the district court's reasoning that the original patents were not enabled because of the further invention witnessed by the third patent. "Improvement ... inventions are ubiquitous in patent law; such developments do not alone cast doubt on enablement of the original invention." "... most inventions require further development to achieve commercial success. Thus additional inventive work does not alone show nonenablement."

The take-away from this decision is that you should clearly patent the invention you have now and follow it up with improvement inventions as they occur. If you delay filing on the alpha or beta version because it is not perfect you may miss your filing opportunity due to public disclosure or on-sale bars. Just make sure that your alpha system works... even if it doesn't work well.

Read this article on line.

Return to Contents

  • Tip of the Month
Don't wait for perfection, file for a patent as soon as your invention "works" - file again with the improvements:
  • An invention is ready for patenting when it works - The patent system does not demand that your invention be commercially viable, only that it works as described and claimed.

  • File generally first and follow up with the improvement details - By not waiting for "perfection" you will not lose sight of the forest for the trees.

  • Consider getting an outside opinion - If you are too focused on the final product you might miss the earlier chance to file on the working alpha or beta units.
Return to Contents

  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

Return to Contents

  • On-Line Patent Glossary
  Industry's Best Glossary
Return to Contents


email us :: visit our site

phone: 617-243-0007



Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.


To forward a link of this web version of
the December 2003 Directions
 to a friend

---->CLICK HERE <----

To forward other issues, click here