Limits of patent protection

It is important to understand the limits of patent protection. For example, an inventor must be in possession of the invention at the time of the patent application. That means that he must appreciate the inventive concept and know how to make and use it. Taking the patent application, one of ordinary skill in the art must be able to use it to make and use the invention and appreciate the invention as it is disclosed in the patent application, without undue experimentation. The 2011 Federal Circuit case Teva Pharmaceuticals v. Astrazeneca Pharmaceuticals adds an interesting twist: conception requires appreciation of what is made, not why it works. Knowing the stable compound and the components of the formulation was sufficient. It was not necessary to understand which component was responsible for the given result.

While it is desirable to protect a technology and all of the progeny that it inspires, patent protection does not extend to that which is yet to be discovered or invented. Reasonable substitutions of components or process steps based on known technology might be deemed obvious or anticipated (therefore not patentable by others), but is not guaranteed to be covered under the breadth of the patent claims (not necessarily infringing). Again, the patent claims are interpreted in light of the accompanying disclosure. Things not known or discovered are generally not within what is considered in the inventor’s possession at the time of filing.

Disclosure of rudimentary technical knowledge in a patent application can have several effects. It may open the door to a continuation application or continuation in part application in the future. This will help prevent your own technology from being cited as prior art against you and potentially qualify you for an earlier priority date. It also potentially prevents others from patenting it as a defensive publication. However, if the technology is not well developed, you may be making it public earlier than you desired and may start the timeline for getting the details finalized because the continuation must be filed before the underlying patent is issued. It is important to consider how these affect your commercialization plans and schedule.

Disclosure and claiming technology that is in a different art area than the base patent disclosure and claims is likely to receive a restriction requirement and increase the costs of prosecution. There are some tactical advantages of restriction requirements in some cases – we like to argue that the Patent Office cannot take the position is it patentably distinct and then claim it is obvious or anticipated. However, if budgets and speed of patent prosecution are concerns, this may be something to consider carefully in the balance.