Issue link: http://read.dmtmag.com/i/703077
I DA U N I V E R S A L J u l y -Au g u s t 2 0 1 6 13 LEGAL LINE Robert W. McIntyre IDA Association Legal Counsel Continued on page 56 I n an investigation of a work- around involving engine parts, the o en mis-under- stood concept of a "method" patent was again in play. In analyzing a patent or series of patents, it is diffi cult to determine if the patent protects an actual device or thing, or instead, the presumed unique way it is made. is is made more confusing by the practice of patent attor- neys dra ing patents that seek to protect the invention of a device and the "method" by which the inventor makes the device. is can result in a double-down minefi eld for the person who wishes to provide a replacement part for the supposed "invention" covered by the patent. To illustrate this concept in the simplest terms, an inventor may apply for and receive a patent for a new machine, a process, or both the new machine and the process, all to make powdered table salt from brine pumped from wells. e protection aff orded by the patent would be that the salt making machine and the way it is used – the process – cannot be duplicated without infringing on the patent. But the end product – the table salt made by this patented method and/or machine – is not patented. Let's break this down to further illustrate the concept. If table salt is made by boiling off the water in the brine and evaporating the residual water to form a slurry that can be dried to a powder, and you invent a new kind of machine to take the brine to the powder, that is patentable. Methods and Machines Or, if you use existing, publicly available equipment that can be patented in a new and unique way, or add new chemistry to the mix, that "method" is patentable, and others with the same equip- ment can't practice your method. Complicating the equation, however, is the concept where you make an "improvement" on a public domain piece of equip- ment or device and try to patent just that improvement. You may succeed, but your patent will only prevent others from making the same improvement to their similar machines. is gets very compli- cated when the fi eld changes to so ware, methods of using so ware and hardware, and of course, the completely undeci- pherable world of pharmaceutical patents. In essence, inventors and their lawyers seek to patent the unseen and, in many cases, things that may not be fully understood. In this context, the over- worked and under-paid are the patent examiners, many of whom examine patent applications for things they barely understand. For example, an examiner with a degree in biology may be examining a patent for a hydraulic pump or fuel system, while an engineer may be wading through the biochemistry of a drug patent for a new ulcer medicine. In many instances, the patents eventu- ally are allowed out of pressure to meet examination quotas in the patent offi ce, or the decisions are endlessly appealed until it is time to walk away or get off the "docket" of overdue appeals. is then leads to the likeli- hood of a lawsuit by a competitor or a lawsuit against an infringing competitor who wants to copy your drug or device. With either opposing party having the option of sending the patent back to the patent offi ce for re-examination and four (yes, four!) levels of appeal, and then to the courts, patent challenges can be on the fi ve-year plan. In one case involving tooling for manufacturing the standard hydraulic port for equipment, the case was lost and the patent invalidated in 2011. A new patent was fi led to try to "fi x" what invalidated the fi rst patent, a new lawsuit was fi led, and between the lawsuit and the re-examination process in the patent offi ce, it is now fi ve years in August since the second lawsuit was fi led. e patent holder, defeated at each hearing and PTO juncture, still has a path to the appeals court before the case comes back down the court chain to the trial of the second lawsuit and then an appeal from that trial. In summary, by using and manipulating the patent offi ce processes and the courts, the holder of a patent that