ILMA Compoundings - July 2019 - 22

continued from page 18
Lubricant manufacturers will certainly want to file a utility
patent, which will have "pages and pages and pages" of
written description, but the key element is the claims section
toward the end, Herbert said. That's where your company
lays out what it believes to be unique about the invention and
will take to court to have enforced. He often likens the claims
section to the description of a parcel of real estate in a deed.
"Anything inside of that description is the invention,"
he said. "Anything outside of the description is what we
call 'prior art,'" meaning that it's in the public domain.
"With claims, my goal every day is to try to best define the
description of the real estate. You can't step over the line, or
the claim will be invalidated. But I want to get as close to
that fence as I can."
Herbert recommends that inventors start with a patentability search to determine whether one or more meaningful
claims would stand up. If similar intellectual property can
be found elsewhere - whether it's in an article in Popular
Mechanics, a booth at a trade show or a foreign document
that's translated into English - the claims won't be enforce-

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able. If that process doesn't turn up prior art, attorneys help
prepare a written description and sometimes drawings,
although Herbert figures that there aren't many of those
when it comes to lubricants.
U.S. law requires that patent applicants disclose any and
all information about their invention that a patent examiner
would find relevant. Examiners consider the claims and
search for prior art. Most often, Herbert said, the federal
Patent and Trademark Office rejects the first round of claims
as too broad, and the applicant responds by amending them.
For example, a lubricant manufacturer might apply for a
patent for a certain chemical compound and claim that any
and all Group II chemicals should be bounded within the
patent for this particular use. But the patent examiner finds
prior art with regard to one of those chemicals - although
not the one the company has tested most heavily and is
banking on to release a profitable product.
"You can amend the claim to say, 'Only this chemical, not
the one in prior art.' You abandon your quest to get all of
the Group II chemicals," Herbert said. "It's usually a giveand-take until the examiner gets more comfortable."
Pool usually tries to focus clients on what's at the heart of their
invention. "What's the central thing that needs protecting?"
he asked. "We can talk about the bells and whistles later. We
want to obtain as broad a protection for the products on the
shelf making money, for as long as the client needs to do so."
That length of time depends on the sales life of the product
- to the extent that there is rapid turnover in the types of
products, the patent term becomes less relevant, Pool said.
"It's helpful to know that as soon as possible," he said. "You
need to be figuring that product life cycle at the beginning, to
determine how long you're going to need that patent."
Sometimes, companies become focused on the trees rather
than the forest, Pool said. "Remember what the goal of the
venture is. We're not just trying to obtain patents for the
sake of trying to obtain patents," he said. "We're trying to
make sure that the products you're selling on the shelves
are protected as robustly as they can possibly be, all the
way through the nitty-gritty claims that are going to occur
through prosecution. If we're not marching toward that end
goal, everything we're doing is absolutely meaningless. You'd
be surprised how often that gets lost sight of, especially
down the chain of command."

Post-Filing

Once the patent is issued, your invention has full legal
protection, but it's up to you to enforce it, Leiter said.
"The Patent and Trademark Office doesn't provide advice
or enforcement," he said. "If somebody wants to infringe, the
typical remedy is to go to federal court. You have to think
about all the possible angles that might make somebody want
5/16/19 9:20 AM

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ILMA Compoundings - July 2019

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