ENHANCING PATENTABILITY WITH DESIGNER EXPERIMENTS

As a patent attorney, one of the most frustrating experiences is seeing a client lose potential rights because they do not recognise they have something patentable.

Most potential patentees understand that the invention must be novel and inventive to be patentable. Therefore, when a new product or process is developed that uses something which is previously known, this is often dismissed as being unpatentable. However, under certain circumstances, good experimental design, along with appropriately drafted patent specifications can produce strong, commercially effective patents.

This can be achieved in a number of different ways, some of which are discussed below:

Selection Inventions

"Selection invention" is a term often applied when there has been prior disclosure of the general subject matter in a previous patent specification, but the specific subject matter is not present in the patent claims. While normally attributed to chemical patents, the broad principles of selection inventions can be applied to any subject matter - provided there is sufficient experimental data backing up the claims.

Often inventors do not realise that the process of choosing the best way to operate a process or design a product can be patentable, even if the basic elements are already known. Further, discovering the best way of doing something is worth protecting as it can provide a competitive advantage in the market.

For a selection patent application to be allowed, it must be proven that the selection of the best conditions, dimensions or materials meets the following criteria:

• the selection is based on a substantial advantage resulting from the use of the selected members;
• substantially all members of the selected class possessed the advantage in question; and
• if the selection is in respect of a quality of a special character, that character can fairly be said to be peculiar to the selected group.

Essentially it must be shown that an unexpectedly good result is achieved within a certain parameter range or selection of compounds/materials - which is not achieved outside of that selection.

Simply knowing what works well is not enough. The inventor needs to be able to show the boundaries of what works and what doesn't work with evidence to back it up. Not only is this information useful for supporting the claim to a selection invention in the patent, but also can prompt the inventor to consider other potentially useful materials or parameters. This may lead to effectively broadening the inventive parameters or to greater improvements.

New Use of a Known Product

Many inventors do not recognise that using a known product in a new way can be patentable.

If the usefulness of the old product for the new use was totally unexpected, then the new use is potentially patentable. In order to achieve this new use, it may be that the inventor has had to adapt the old product for the new use. Often these adaptations can also be patentable and are worthwhile pursuing.

As with selection inventions, good experimental design can provide the backup for the claimed invention.

Experimental design can include:

• showing how the original product would not work for the specific use,
• information on how the specific use has special conditions not present with the conventional use of the product, and
• data on the trial and error approach to determine the adaptations required.

An example of this is the application of communications technologies to electric fence systems. Communications technology is highly sophisticated and well known. However, electric fence systems have some peculiar attributes not found in normal communication systems.

These include generation of a 10,000 volt pulse every second and greater chance of attenuation or shorting occurring through grass or animals touching fences. Inventing a solution to make a communication system to work in such conditions was patentable and produced a product which has been very successful.

New Combinations

Just putting two known products together is not patentable. However, if there is a synergistic effect or working interrelationship resulting from the combination, then that can be patentable. Again, good experimental design can show this.

Anecdotally one of the better stories about a synergistic effect can be found with Coca Cola. Originally Coca Cola included a combination of caffeine and cocaine. Apparently the caffeine sensitised the neural pathways in the brain so that the cocaine gave a more significant effect. This provided quite an effective tonic for "nervous businessmen". Theoretically, this synergistic combination could have been patented.

Experimental design must include showing the result of using individual components of the combination in comparison with the result of the combination itself. If the "sum of the whole" is greater than the "sum of the parts" then synergy has been shown and the new combination is potentially patentable.

Because of the foregoing, it is critical that patent attorneys are brought in at the start of the inventive process. They can help with the experimental design to obtain data to support a potentially patentable product or process.

By Kate Wilson, Partner