Posts Tagged “reduction to practice”

An interesting-sounding exhibit at Harvard.

I’m not a big fan of the PTO and today’s patent examiners but I have to admit their job has become more difficult over the years since the PTO was established. One thing that has made their job harder is only having a written description of the invention in front of them – and a set of (now) low quality figures. A new exhibit at the Harvard Science Center shows us 75 patent models – miniature representations of the invention – that inventors used to have to submit along with their applications. The requirement for a model was in force from 1790 to 1870.

For more background on patent models, read History on a small scale in the Harvard University Gazette Online.

Entitled “Patent Republic: Materialities of Intellectual Property in 19th-Century America” presents patent models for common inventions such as washing machines, carpet sweepers, and ice skates, as well as Thomas Edison’s carbonizer. The exhibit is on view, free, through Dec. 11 at the Science Center, 1 Oxford St. Open weekdays, 9 a.m.-5 p.m.

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Independent inventors and inventors at small companies are always so enthusiastic about their inventions. They are excited and want to get their patent so they can start marketing their product. We’re usually about 20 minutes into the conversation when I have to pop the question…”But does it work?

What I’m really asking, with patent jargon stripped away, is whether the invention has been reduced to practice. The patent world views invention as a process that is spread out over a period of time, sometimes days but more typically months or even years. The invention process has three distinct phases: inspiration, perspiration, and reduction to practice. A (valid) patent can only be issued on an invention that has been reduced to practice – one that operates as described in the patent specification.

Overly enthusiastic inventors, abetted by sluggard examiners at the patent office, often want to file a patent application immediately after the “Ah ha” moment, the inspiration. Examiners, looking primarily for anticipation, obviousness, and specification support for the claims, often seem unworried about the actually functionality of the invention. And certainly there is no explicit proof of reduction to practice, of operation as intended, required in one’s patent application.

Skipping the reduction to practice (RTP) step, or at failing to document that step adequately, can cost you your patent. If you file before RTP, your application might not include modifications to your invention that are needed to make it work; those modifications might be just the tip-off opposing counsel needs to get your patent invalidated.

Or you might find yourself in the same shoes as HAROLD R. GARNER, who lost his interference battle because he could not prove his invention was reduced to practice at an early enough date. The examiner rejected his claims as anticipated by the earlier filed “Quate” patent. To provoke an interference with the Quate patent, Garner amended his application to copy the claims of the Quate patent. Garner, as the junior party, had the burden of establishing prior invention. It is important to remember that the law grants the patent to the person who is first to conceive of the invention AND diligently reduce it to practice.

According to the court decision, Garner attempted to establish his priority by submitting: (i) photographs of a device he allegedly built before the filing date of that prior art reference; and (ii) lab notebook pages that allegedly showed that the device worked. To corroborate his claim that he had built the device depicted in his photographs, Garner also submitted a one-page declaration of an independent party, John Fondon. The CAFC ruled that Garner’s submissions did not sufficiently corroborate his claim of actual reduction to practice. His photographs and lab notebook pages themselves do not prove operation and the Fondon declaration, alas, only states that Fondon saw the device shown in the photographs in Garner’s laboratory in November 1997. Fondon does not testify that the device operated or worked for its intended purpose. In fact, Fondon does not indicate that he ever saw the device operate. At most the Fondon declaration corroborates the existence of a device purportedly shown in the photographs. As the court said “corroboration of the existence of the device is not sufficient in this case to establish corroboration of reduction to practice. It is also necessary to corroborate that the device worked for its intended purpose.”

Have you ever rushed a patent application through before you actually proved your invention works? Have you ever tried to file a patent application, particularly a provisional application, on a concept? If so, consider that although the patent examiner may give you a bye regarding reduction to practice, failure to document that your invention works as intended by your filing date may result in saying “goodbye” to your patent rights.

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