03
03
2011
A Plan is Not an Invention
Posted by Bruce in claims, enforcement, Patent Prosecution, Reduction-to-Practice, Validity, Written description, tags: Abbott, claims wish list, Johnson & Johnson, not merely plan, Written description“When I invented the 2-way wrist radio in 1946, I had bought a bundle of laughing stock.”
Unfortunately, Chester Gould didn’t invent the 2-way wrist radio. If he had, he would have bought himself a lot more than derision – he could have garnered significant patent license fees from the likes of Motorola and Casio who, in the 65 years since Gould conceived of the device, have made and sold smaller and smaller radio communication devices.
Of course, Gould didn’t try to get a patent, but many of us do try to get patents on our inventions – or what we believe to be inventions. When we apply for a patent we should remember the difference between having the concept for the invention and having the invention ready for patenting. To “prove” we have reduced the conception to practice – that we have the invention- we must include a “written description” in our application and that description must be very detailed and specific. As Johnson and Johnson’s Centocor unit discovered, laying out a research plan for how to get to the finished invention does not support a patent. It was a 1.67 BILLION dollar mistake.
The court of appeals recently overturned J&J’s $1.6B patent infringement win against Abbott Laboratories, saying that J&J’s patent failed to provide, as the law says, “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 make and use the same” [emphasis added]. Instead, it said:
…while the patent broadly claims a class of anti-bodies that contain human variable regions, the specifica-tion does not describe a single antibody that satisfies the claim limitations.
and that “the asserted claims constitute a wish list of properties” that the anti-bodies should have.
More importantly, the court said:
The specification at best describes a plan for making fully-human antibodies and then identifying those that satisfy the claim limitations. But a “mere wish or plan” for obtaining the claimed invention is not sufficient.
The message is that we must know what our invention is when we file a patent application; it is not enough to be able to say it might be this or might comprise that. At some point you must be able to state unequivocally, “my invention is such and such”. Oh, and like J&J you will not be put to the test until you try to asset your patent rights against an infringer – patent examiners don’t usually put a lot of effort into checking this aspect of your application.
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