Alternate Embodiments

[listenup77]

California. When filing a non-provisional application and getting a patent, are the Alternate Embodiments protected as much as the Preferred Embodiment? If I mentioned it in the Alternate Embodiments, no one can get a design patent on the changes, right? Thanks in advance.

 

[divgradcurl]

California. When filing a non-provisional application and getting a patent, are the Alternate Embodiments protected as much as the Preferred Embodiment? If I mentioned it in the Alternate Embodiments, no one can get a design patent on the changes, right? Thanks in advance.

Is this a design patent, or a utility patent?

 

[listenup77]

Sorry, forgot to add that. It is a utility application.

 

[listenup77]

Forgot to ask, I've been reading up on the whole Festo case and I've learned a ton on the approach I should take when appling for a patent. I don't really under stand what they mean by "the equivalent" to my invention. On a utility appl. does the equivalent mean more of the materials used to make the product work (example: laces instead of Velcro for a fastener) or the structural alterations (example: a rectangle shape instead of a oval)?

 

[divgradcurl]

Forgot to ask, I've been reading up on the whole Festo case and I've learned a ton on the approach I should take when appling for a patent. I don't really under stand what they mean by "the equivalent" to my invention. On a utility appl. does the equivalent mean more of the materials used to make the product work (example: laces instead of Velcro for a fastener) or the structural alterations (example: a rectangle shape instead of a oval)?

Equivalents means just that -- equivalents! It's kind of deliberately fuzzy, so that it can be applied (or not) to different factualy scenarios. The purpose of the doctrine of equivalents is to allow a patent owner to defend his invention against "equivalent" designs that didn't exist when the patent was filed, but are "equivalent."

For example, if your invention required tape to hold two pieces together, and later velcro was invented, and someone found they could practice your invention using velcro instead of tape, the courts would not "penalize" you because you didn't disclose velcro in your patent -- how could you, since velcro wasn't invented yet? Instead, the courts, in an infringement action, would apply the "doctrine of equivalents" to see if the use of velcro was actually a "new" invention (it solved a new problem) or was simply an "equivalent" way to practice your existing invention. In the latter case, the courts would find that the doctrine of equivalents would allow for infringement, even if the velcro was not disclosed in the application.

If you've read through all of the Festo cases, then you certainly found that the doctrine of equivalents, while it still exists, is not very narrow, and should not be relied upon -- if you know an alternative, disclose it, don't rely on the doctrine of equivalents to save you later.

EDIT: I should have made my description clearer, the DOE is NOT limited to equivalents that you didn't know about, or weren't invented when the application was filed -- it could be any equivalents. But, practically, it can be very tough to win on DOE grounds if an equivalent was known and existed at the time of filing the application, and you failed to disclose it.

And further, any ammendments made to the application may also further limit the DOE, as discussed in other threads.

 

[divgradcurl]

California. When filing a non-provisional application and getting a patent, are the Alternate Embodiments protected as much as the Preferred Embodiment? If I mentioned it in the Alternate Embodiments, no one can get a design patent on the changes, right? Thanks in advance.

Don't confuse the scope of what your patent covers and the scope of what your patent prevents OTHERS from patenting. If you disclose something in your patent, an "alternative embodiment" of whatever, that will forclose anyone else from getting a patent that covers that embodiment. However, whether you can ENFORCE your patent against that embodiment will depend on what you "claimed," in other words, what your claims cover. It is entirley possible to draft an application that discloses "inventive" matter, but then fails to claim that matter -- in that case, the disclosed but not claimed matter is effectively in the public domain -- nobody else can patent it, but anyone can use it without permission.

If you are concerned about infringement, then the general rule is that you may not read "limitations" into the claim from the preferred embodiment -- in other words, the invention (the claims) are not limited to the preferred embodiment, except in very limited cases (like where the claims are narrow, and the preferred embodiment is the only thing disclosed in the specification). If you have a preferred embodiment, and alternative embodiments, then both (or all) will be covered by the patent, assuming properly drafted claims.

Further, the patent may be even broader than even the disclosed emdoiments in some cases -- but this will be limited by prosecution history and the narrow post-Festo version of the doctrine of equivalents.