Some tips on arguing your case before the Patent Office…be thorough!

While getting a patent is key to the success of a green tech start-up, the ability to obtain issuance of an application can be quite challenging.  Additionally, each country has its own unique set of patent laws that need to be navigated.  Success in patenting green tech requires not only experience in this field (in my view 10+ years), but a lot of grit and determination (also luck).  However, you can tip the balance in your favour by working closely with your patent agent and being aware of some practical tips and tricks.

After a patent application is filed, a patent examiner reviews it for compliance with the Patent Act and Patent Rules.  The time it takes for an examiner to start the examination process varies after filing of a patent application (or after requesting examination in some countries), but typically takes at least a year.  As discussed in the last blog, in order for the patent examiner to issue a patent, the technology described in your patent application must, at a minimum, be both novel and non-obvious.  During examination, the patent examiner reviews the patent application carefully to ensure it meets these requirements, among others.

One of the biggest road-blocks in getting an issued patent from the Patent Office is convincing a patent examiner that your invention is non-obvious.  When it comes to non-obviousness, the gold standard for patentability is whether your invention produces “unexpected results” relative to what is already known.  If what you are patenting is indeed new and laboratory experiments reveal results that are truly surprising (non-obvious) about your invention, then this is often a recipe for success.  However, if no surprising results are associated with your invention, the analysis need not necessarily stop there.

A major advantage when patenting emerging technologies, such as green tech inventions, is that there are often pressing problems to be solved.  And where there are problems to be solved, it is not uncommon for patenting opportunities to follow.  In fact, a lack of appreciation in the literature (referred to in patent lingo as “prior art”) of the source of a problem itself can factor into the non-obviousness inquiry.[1]  To illustrate, say you invented a new process for purifying a substance by membrane filtration and you have identified the particular reason why prior processes failed to obtain a purity that was as high as what your invention attained.  Perhaps the membrane was prone to fouling by a previously unidentified component present in the material being purified and nobody had yet elucidated that this was the reason for the poor purity.  A step in the process might involve removing this component from the solution prior to it being filtered, which alone might be considered obvious.  Because you have unraveled this previously unknown fact, it might be possible to argue patentability on this basis.  In emerging technical fields, since so much remains uncharted, identifying the source of a particular problem might present more opportunities for patenting than for other more established technologies.

Perhaps the prior art “teaches away”.[2]  In patent lingo, this simply means that what is in the prior art effectively tells you not to do what it is you did when you made the invention.  In short, you have taken a route that nay-sayers said to not take and you nevertheless found success.  The teaching away need not be explicit but can be elucidated from what the prior art document says about the technology as a whole.  It should be kept in mind that a thorough read of a prior art document is needed to find such gold nuggets.  Also, sometimes the Examiner might disagree with what you consider to be a statement of teaching away in the prior art.  While the analysis can often be subjective, if you have a strong and clear cut case, a reasonable patent examiner may very well be convinced to allow the application on this basis.

A well written patent application that is easy to understand can also help achieve allowance.  If the information in a patent application is presented logically and the writing flows, the examiner might be more inclined to give you the benefit of the doubt regarding the credibility of your invention than if the presentation is disjointed or sloppy.  This speaks to the subjective component of the process.  I always try and prepare figures and drawings of excellent quality so the examiner can more easily decipher what the invention is about.  You would be surprised at how often these sorts of details are overlooked.

And a final word of advice – be nice to the Examiner!   In some instances, they can help you navigate through the process as well.  Often (not always) they want to help you achieve success.

[1] See MPEP 2141.02 III.  Whether such an argument can be made is heavily fact dependent and will also vary depending on the country.  It is recommended that you seek advice from a patent agent and not take this as legal advice.

[2] See MPEP 2141.02 VI.  Again, this is highly fact dependent and a patent agent’s advice should be sought.  This blog should not be taken as legal advice.



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