Evolving patent laws

June 2012 » Features » PATENTS
At the intersection of patent law and civil engineering: Overcoming the prior art
Stephen L. Keefe, P.E., Esq.

The 2011 Leahy-Smith America Invents Act made fundamental changes to American patent law, including harmonizing U.S. law with global trends. Under this act, and using a global pool of prior art, the patent office rejects civil engineering patent applications that claim identical subject matter as a prior art reference, or that are obvious over one or more prior art references. Though obviousness poses an intimidating obstacle to the civil engineering inventor, innovation remains the touchstone for overcoming this guardian of the public domain.

The globalizing U.S. patent system offers an open field for patent eligibility for civil engineers. But, patent eligibility is the easy part. Defining an invention over the "prior art" presents the real challenge to any inventor, including civil engineers. The patent bar uses the term "prior art" to describe everything in the public domain available to patent examiners to use in rejecting a patent application.

Enacted on Sept. 16, 2011, the Leahy-Smith America Invents Act unleashed the most significant overhaul of American patent law since 1952. The new law strives to harmonize the U.S. patent system with prevailing trends in the patent laws of most other countries. The deepest change transforms the United States on March 16, 2013, from a "first-to-invent" system to a "first-to-file" system, in line with virtually every other nation. With the switch to first to file, the probability of defeating an earlier-filing rival applicant vastly decreases as compared with the old first-to-invent system. Under first to file, the first inventor to file with the patent office will likely win over later-filing rivals.

Central to the transition to a first-to-file system, Congress redefined the prior art available to the U.S. Patent & Trademark Office (USPTO) for rejecting patent applications under Section 102 of Title 35 of the U.S. Code (35 U.S.C. § 102). Under the old first-to-invent U.S. patent system, some foreign patent applications and foreign public uses of inventive subject matter fail to qualify as prior art until they are filed or made public in the United States.

Starting on March 16, 2013, some of these same foreign sources become prior art for use in USPTO and U.S. judicial proceedings as of their foreign availability date, so long as that foreign availability date pre-dates an applicant's filing date at the USPTO. So generally, anything that went public anywhere in the world before an inventor's filing date morphs into a weapon aimed at the desired patent claims, with some exceptions for an inventor's own public disclosures. For civil engineers, the increased amount of foreign prior art available against each patent application under the new law provides an even greater impetus to file patent applications as soon as possible on technical innovations.

Congress laid out prior art under 35 U.S.C. § 102 in its sweeping 1952 Patent Act, which the 2011 Patent Act subsequently revised to harmonize U.S. prior art rules with other nations. 35 U.S.C. § 102 sets forth "anticipation," the first of two primary prior art hurdles that successful patent applicants must overcome. If a single prior art reference, such as a previously issued patent or a journal article, includes each and every element as set forth in a patent claim, that prior art reference "anticipates" the claim. When a reference anticipates a patent claim, the USPTO automatically rejects that claim.

Because it is often difficult to find a single prior art reference having each and every element of a patent claim, anticipation presents a low bar for applicants to overcome. Typically, anticipation occurs when an applicant claims an unrealistic amount of subject matter. In fact, patent examiners often will reject unrealistic claims with numerous anticipating references, if only to send the applicant the message that "you're not even close to a patent right now."

Obviousness attacks
Because applicants routinely sidestep § 102 anticipation rejections with minor claim amendments, anticipation often presents an easily eliminated obstacle, assuming the applicant claims a reasonable scope of subject matter. The real threat emerges when patent examiners roll prior art under 35 U.S.C. § 102 into obviousness rejections. § 102 prior art sometimes morphs into an insurmountable barrier to patentability under the specter of 35 U.S.C. § 103 obviousness. Under § 103, an examiner asserts that the claimed invention would have been obvious to a person having ordinary skill in the art. The examiner may take the imperfect reference that falls short of anticipation and roll it into an obviousness rejection, effectively telling the applicant that "this reference isn't perfect, but it's close enough to make your would-be invention obvious." Obviousness is the patent applicant's most formidable enemy.

In its 1966 Graham v. John Deere case, the court interpreted just what it thought Congress meant when it enacted 35 U.S.C. § 103. Using Graham, courts determine if the differences between the subject matter and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art. Basically, a patent examiner, judge, or jury wades into the quicksand of theoretical legal thought and tries to determine whether one of ordinary skill looking at the existing prior art at the time of invention (old law) or before filing (new law) of the application would have deemed that the invention amounts to an obvious step forward. Globally, though differing in form, most nations employ an analog to § 103 obviousness.

Civil engineers should resort to the patent system each time they cross paths with innovation that could accelerate the technological progress of the industry.

Although technically an objective determination, obviousness under 35 U.S.C. § 103 tends to devolve quickly into a slippery subjective affair, in which hindsight from the patent at issue often creeps into the legal manifestation of the person of ordinary skill in the art. Worse yet, patent examiners and courts may combine any number of existing prior art references to cobble together hideous Frankensteins of "obvious" combinations that one of ordinary skill in the art would have "obviously" constructed. Although court opinions consistently rail against determining obviousness based on hindsight in light of the patent itself, hindsight relentlessly creeps into the minds of examiners, judges, and juries to skew their judgment.

When the inventor's specification and drawings are in front of an examiner or court, which explain all of the details of an innovation, arriving at the invention may seem deceptively easy. In response to these hindsight-infected analyses, many inventors would surely like to tell a USPTO bureaucrat: "Here's just the prior art and the problem I solved. Why don't you try coming up with my invention on your own, without getting to see my patent application, and see if it's a little less —€˜obvious' than when my application is sitting in front of you." Unfortunately for patent applicants, the law provides no such scenarios.

In the end, the applicant often faces an inevitably hindsight-plagued analysis featuring a person of ordinary skill who has a significant capability to construct obviousness monstrosities out of an expanded global pool of prior art. On top of this, patent examiners tend to stubbornly stand by obviousness rejections, with the statement, "Applicant's arguments have been fully considered but they are not persuasive," often appearing on examiner's actions. Also, would-be patent infringers often supply some very good prior art to the courts and the USPTO to use against applicants.

Innovation as touchstone
Though obviousness poses a daunting obstacle to each patent applicant, innovation remains the touchstone for overcoming this guardian of the public domain. Aspdin's portland cement technology, Bessemer's steel process, Hennebique's reinforced concrete construction methods, and Freyssinet's prestressing innovations tremendously advanced civil engineering. Patent law recognized and protected the innovations embedded in each of these breakthroughs, helping to transform civil engineering. Civil engineers should resort to the patent system each time they cross paths with innovation that could accelerate the technological progress of the industry. If your innovation is significant – and truly presents a sizable jump from the expected rate of obvious development in civil engineering – the patent office will usually grant your patent readily, and challengers will have difficulty invalidating it.

By providing legal protection to investments in innovation, patents can incentivize research and development in any of the pillars of civil engineering, such as the structural, geotechnical, environmental, hydrological, and transportation branches of the industry. The American and global patent systems can promote and protect the innovative potential of future products, construction methods, and engineering materials to meet the infrastructure challenges of dynamically changing times.

Figure 1: Estimated patent applications filed per year per U.S. engineer based on U.S. Department of Labor Statistics (2008) and World Intellectual Property Organization (2007) data

Unfortunately, relative to mechanical and particularly electrical engineers, civil engineers do not significantly patent their innovations overall as a profession (see Figure 1). However, this pessimistic reality grants civil engineers the possible advantage of having less prior art to overcome at the patent office. Civil engineers may then have an easier time prosecuting patents to issue through the thicket of prior art, at least in the near future, than their mechanical and electrical engineering counterparts.

In patenting the many innovations waiting in the wings of their industry, civil engineers should strive to similarly keep the eyes of patent office examiners and courtroom fact-finders on the true technological advancement at the heart of each good civil engineering patent application. These advances can break through the prior art found by the patent office and future challengers, provide valuable intellectual property to a civil engineering enterprise, and contribute to the technical progress of the civil engineering industry as a whole.

Disclaimer: This article presents general information only and should not be regarded as legal advice. Accordingly, the author disclaims liability for any omissions or errors. Readers should contact their own lawyer regarding their own specific legal questions, and should not take actions relying on the information presented in this article. This article does not establish an attorney-client relationship with the author or his firm.

Stephen L. Keefe, P.E., Esq., is a patent attorney with Rabin & Berdo, in Washington, D.C. After graduating from West Point with a degree in civil engineering and serving in the U.S. Army, Keefe practiced as a structural engineer for six years and earned a Master's Degree in civil engineering from Columbia University. He served as a patent examiner at the U.S. Patent & Trademark Office, received a Juris Doctorate from the George Washington University Law School, and practiced patent law for several years at a large Washington, D.C., intellectual property law firm. He can be contacted at skeefe@keefepatentlaw.com.


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