Add Orthogonal Limitations To Circumvent Prior Art

Yet another filing strategy that can be used in difficult cases is to include limitations in a claim that have little or nothing to do with the underlying invention. Consider, for example, a case in which an applicant is trying to claim subject matter that was disclosed many years ago, but never really commercialized. Simply claiming the apparatus or method in a straightforward manner is not a viable option because the prior art anticipates the invention. Thus, a method of whitening teeth with a peroxide solution could not currently be claimed as follows because the method has been practiced for decades.

1. A method of whitening teeth, comprising:

providing a polymeric material for use in conforming a tray to a set of teeth;

providing a solution containing peroxide to a user; and

providing instructions to the user to apply the solution to the tray, and then juxtapose the tray against the teeth to effect whitening of the teeth.

But one can still add a novel step that would preclude competitors from entering the space. For example, the combination of steps in the following claim has almost certainly never been done before, and is entirely non-obvious.

1. A method of whitening teeth, comprising:

receiving information that a solution containing peroxide is effective to clean rubber feed rollers in a photocopy machine;

providing a polymeric material for use in conforming a tray to a set of teeth;

providing the solution to a user; and

providing instructions to the user to apply the solution to the tray, and then juxtapose the tray against the teeth to effect whitening of the teeth.

After securing issuance on that revised claim, all one needs to do to exclude a competitor from the marketplace is to send them a letter advising that the peroxide they use on teeth is effective to rubber feed rollers in a photocopy machine. Upon receipt of that letter the competitor is suddenly infringing.

The strategy can be expanded in all sorts of ways, including claiming undesirable activities of competitors in challenging a patent. For example, one could make competitors think twice with the following sort of claim:

1. A method of whitening teeth, comprising:

(a) providing a polymeric material for use in conforming a tray to a set of teeth;

(b) providing a solution containing peroxide to a user;

(c) providing instructions to the user to apply the solution to the tray, and then juxtapose the tray against the teeth to effect whitening of the teeth; and

(d) filing a pleading with a court that challenges validity of a patent claiming steps (a) — (c).

The claim is clearly novel because no one has yet practiced step (d). Moreover, the patent office will have a terrible time establish prima facie obviousness because the absence of this sort of claim in the prior art necessarily means that there was no teaching, suggestion or motivation in the prior art for practicing step (d).

Now, should Congress allow this sort of claiming strategy? Who knows? In less blatant forms, they already do. People get broad patents all the time on extremely narrow inventions that have absolutely no inventive merit. As recently reiterated by the Federal Circuit ,

"… patent acquisition does not require any threshold level of effort or ingenuity. See 35 U.S.C. § 103(a) (2000) ("Patentability shall not be negatived by the manner in which the invention was made".); 35 U.S.C. § 103 Revision Notes and Legislative Reports, 1952 Notes ("It is immaterial whether [the invention] resulted from long toil and experimentation or from a flash of genius".)

The problem is not clever patent attorneys, but the way the law has evolved. Patent and copyright laws were originally intended to promote the arts and sciences, and they have done a fabulous job of doing that for more than 200 years. But in the last few decades the system has been twisted dramatically in favor of monopolists and against the public interest. One can hope that Congress will start taking the problem seriously, and find some sort of solution. Until that happens, however, it is the duty of patent attorneys to do whatever they can to secure broad claims for their clients, including writing claims using ever more clever patenting strategies.