John D. Hurt and Steve McDaniel, Technology LItigators08.13.13
Once in a while, you may decide to try to turn your trade secret coating formulation into a patent despite the various issues (e.g., sluggish time to issuance, appeal or filing a request for continued examination) previously discussed in this series. Most inventors of a new coating formulation or coating component will seek issuance of what is commonly considered a strong type of claim to assert: the composition of matter claim. However, there are other statutory types of claims and variants that you should give strong consideration toward filing, as the nuances in claims language and prosecution among the various claim classes may get you to a more rapid issuance of these less glamorous but still commercially relevant claims to protect your product. Because patent prosecution is like opening a box of chocolates, you never know what type of claim structure will be allowed by the examiner – so claim your invention as many different varieties of claim types as you can!
First, the classic composition of matter claim. One of the four general types of patentable inventions recognized by the United States Patent and Trademark Office (the “PTO”). A claim describing a chemical composition or mixture, such as a paint comprising specific components in particular amounts, e.g., “A paint, comprised of 45%-65% total resins solids of [insert chemical formula of your new resin].” A clear, crisp claim that provides solid and commercially relevant patent coverage. And to be honest, a rather dull claim type. The most excitement you get with this type of claim is during prosecution, when you often wind up arguing rather thoroughly with a patent examiner (if the chemical composition is not new and non-obvious) that the specific ranges of the components are non-obvious because that specific mixture of components produces exciting (and non-obvious) “unexpected results.” Hint: have that data at your fingertips to present to the examiner during prosecution.
Next, the trusty and tough side-kick to the lead hero composition of matter claims: the process/method claim! Another of the fab-four recognized by the PTO, and is used to describe an inventive combination of actions (“contacting,” “heating,” “mixing,” etc.) to produce a useful result. This is often the next best thing to a composition of matter claim (or mechanical and apparatus claims, described below), because even though you may not convince an examiner that a material/device/article is new and non-obvious, you may be able to obtain a claim to how to make it or how using it in a new and non-obvious (and profitable) way. Those “unexpected results” data can really come in handy for this claim type as well. Many patents have issued that were clearly directed to compositions, but it was the process claims that were ultimately allowed by the PTO. Accordingly, filing at least one method claim in you patent application to cover this base may be a good idea.
But what about cases where you know how to make a gang-buster hot product (Ponce de León’s bottled water!), but don’t have an exact handle on the chemical composition (“Hey, I just bottle it from that one pond in Florida, I don’t know what’s in it!). Product by process claims are a variant claim structure that may help you out. This claim type combines aspects of composition and process claims to describe a product by the steps in its production process. This is allowed for cases where the product in not definable by other claim structures, such as a case where a chemical reaction produces a desired material (say a new coating resin) but the resin produced is a mixture containing varying amounts of products from side chemical reactions. So the exact chemical composition of the material is unknown, but magic combination of conditions and materials described in the processing steps to produce it is known. During prosecution products that are similar, though produced by a different process, may get you bogged down in obvious type rejections without that ability to point to clear compositional differences. Recent court decisions regarding how this type of claim would be infringed indicate an infringing product would also need to be produced by the same process. So, though an interesting and possibly commercially relevant claim structure for certain situations, you can get unique headaches both coming and going during the patent prosecution/enforcement cycle.
Machine/apparatus claims is another statutory type, and describe anything having parts that cooperate (e.g., moving parts), and computers, circuitry, and mechanical devises are encompassed in this category. Article of manufacture claims are the fourth statutory type, and are similar to apparatus/machine claims, except the item produced does not have moving parts (e.g., a pencil). From experience, these types of claims can be prosecuted quicker (i.e., allowed or subject to final rejection) than other claim types, as the component parts of the device are generally described in a mechanically “the leg-bone connects to the shin bone” clear way. The examiner lines up your claim language versus the closest art, often another patent document that is also so written, and gives the thumbs up or thumbs down. Unfortunately, the straight-forwardness that may grant quickly allowed claims often results in narrow claim language – you rapidly obtain a patent to a very specific device or article, so there is room (unfortunately) for competitors to flourish.
Finally, though there are plenty of other variant claim types that can be considered, let me draw your attention to a claim format traditionally used in biotechnology patent applications, but can work well in the paints and coatings industry. Kit claims are directed to two or more articles not physically connected but grouped together in, unsurprisingly, a kit. And when you think about it, kits are often your store shelf commercial product. For example, “a kit, comprising resin part A, resin part B and additive C, wherein each resin or additive is contained in a separate container.” Paints and coatings are often multi-component products that must remain separate until mixed for immediate application. You sell them as a “kit,” not as the final mixture as applied. So, consider adding a kit claim to more directly protect what you actually sell on the store shelf – coating components in their packaging.
First, the classic composition of matter claim. One of the four general types of patentable inventions recognized by the United States Patent and Trademark Office (the “PTO”). A claim describing a chemical composition or mixture, such as a paint comprising specific components in particular amounts, e.g., “A paint, comprised of 45%-65% total resins solids of [insert chemical formula of your new resin].” A clear, crisp claim that provides solid and commercially relevant patent coverage. And to be honest, a rather dull claim type. The most excitement you get with this type of claim is during prosecution, when you often wind up arguing rather thoroughly with a patent examiner (if the chemical composition is not new and non-obvious) that the specific ranges of the components are non-obvious because that specific mixture of components produces exciting (and non-obvious) “unexpected results.” Hint: have that data at your fingertips to present to the examiner during prosecution.
Next, the trusty and tough side-kick to the lead hero composition of matter claims: the process/method claim! Another of the fab-four recognized by the PTO, and is used to describe an inventive combination of actions (“contacting,” “heating,” “mixing,” etc.) to produce a useful result. This is often the next best thing to a composition of matter claim (or mechanical and apparatus claims, described below), because even though you may not convince an examiner that a material/device/article is new and non-obvious, you may be able to obtain a claim to how to make it or how using it in a new and non-obvious (and profitable) way. Those “unexpected results” data can really come in handy for this claim type as well. Many patents have issued that were clearly directed to compositions, but it was the process claims that were ultimately allowed by the PTO. Accordingly, filing at least one method claim in you patent application to cover this base may be a good idea.
But what about cases where you know how to make a gang-buster hot product (Ponce de León’s bottled water!), but don’t have an exact handle on the chemical composition (“Hey, I just bottle it from that one pond in Florida, I don’t know what’s in it!). Product by process claims are a variant claim structure that may help you out. This claim type combines aspects of composition and process claims to describe a product by the steps in its production process. This is allowed for cases where the product in not definable by other claim structures, such as a case where a chemical reaction produces a desired material (say a new coating resin) but the resin produced is a mixture containing varying amounts of products from side chemical reactions. So the exact chemical composition of the material is unknown, but magic combination of conditions and materials described in the processing steps to produce it is known. During prosecution products that are similar, though produced by a different process, may get you bogged down in obvious type rejections without that ability to point to clear compositional differences. Recent court decisions regarding how this type of claim would be infringed indicate an infringing product would also need to be produced by the same process. So, though an interesting and possibly commercially relevant claim structure for certain situations, you can get unique headaches both coming and going during the patent prosecution/enforcement cycle.
Machine/apparatus claims is another statutory type, and describe anything having parts that cooperate (e.g., moving parts), and computers, circuitry, and mechanical devises are encompassed in this category. Article of manufacture claims are the fourth statutory type, and are similar to apparatus/machine claims, except the item produced does not have moving parts (e.g., a pencil). From experience, these types of claims can be prosecuted quicker (i.e., allowed or subject to final rejection) than other claim types, as the component parts of the device are generally described in a mechanically “the leg-bone connects to the shin bone” clear way. The examiner lines up your claim language versus the closest art, often another patent document that is also so written, and gives the thumbs up or thumbs down. Unfortunately, the straight-forwardness that may grant quickly allowed claims often results in narrow claim language – you rapidly obtain a patent to a very specific device or article, so there is room (unfortunately) for competitors to flourish.
Finally, though there are plenty of other variant claim types that can be considered, let me draw your attention to a claim format traditionally used in biotechnology patent applications, but can work well in the paints and coatings industry. Kit claims are directed to two or more articles not physically connected but grouped together in, unsurprisingly, a kit. And when you think about it, kits are often your store shelf commercial product. For example, “a kit, comprising resin part A, resin part B and additive C, wherein each resin or additive is contained in a separate container.” Paints and coatings are often multi-component products that must remain separate until mixed for immediate application. You sell them as a “kit,” not as the final mixture as applied. So, consider adding a kit claim to more directly protect what you actually sell on the store shelf – coating components in their packaging.
