rus
In the high-tech equipment manufacturing areas about 70% of the inventions relate to the devices and about 20% of the inventions relate to the methods. These new methods can be patented with some new equipment and as independent items. The article discusses the features
of patenting of methods and specific examples
and problems that arise in both cases.
of patenting of methods and specific examples
and problems that arise in both cases.
Теги: cantilever patenting inventions probe microscope зондовый микроскоп кантилевер патентование изобретений
The first question that arises before the inventor of a method is whether to patent it along with the device on which it is implemented? It is difficult to give a definite answer. It is quite often that when a new method is created, at the same time the equipment, on which it is implemented, is improved, and it can be patented separately. Nevertheless, every invention is unique, and it often happens that an application for a method eventually becomes the application to the device, and vice versa.
At first glance, the selection of a patenting item is quite simple as a method and a device are patented at the same time by the acts of law but that is only in theory. In practice, there are different situations. For example, a device may be multi-component, and it requires 30 pages of text to make a description; and if it is necessary to describe in detail the independent and dependent claims of a method, it could add another 15 pages. Consequently, the number of errors will increase, and there may be a lack of time, but you need to report to the customer. Another possible situation is that you have won a tender but for that it was necessary to put a high number of patent applications in indicators. It is not always possible to convince monitors with the arguments that you have two inventions in the same application, a device and a method; so, it may be appropriate to patent them as two independent inventions.
But what if by patenting a device, you will still have to describe its operation using the inventive features of the method; and when it comes to patenting a method it will become necessary to describe the device with new features? If it is intended to separately patent a device that implements a new method, one should possibly minimise the features of the method in the description of its operation. It can be possible in many cases because the examiners will check for novelty primarily features of the device and the inventive step. It is a bit more difficult to patent a method when it comes to describing the device for its implementation, which may itself be patentable. If you like to hide the features of the device, in the description of the method you can indicate a (another) well-known device or minimise those of its characteristics which may then be required during patenting. In practice it is more difficult than in the case when it is necessary to hide the features of a method but it is possible.
Let us consider an example in which in the description of the method of creating a sensor element it was necessary to provide a description of the unit in which the method was implemented [1]. As shown in fig.1 in the unit it was necessary to ensure precision movement of the cantilever (flexible console) 13 with the probe 14 relative to the first electron gun 2. For that purpose, the original guides 5 with the drive 7 were used on the X-axis, and drives 8 and 9 on the Y-axis and Z-axis. The system was operated in the vacuum chamber 1; it had a high accuracy of movement, and it was further intended to protect it with an individual patent. Accordingly, it was not possible to present it in more detail than it is depicted in fig.1. Therefore, in order not to cast doubt on the feasibility of this method and its industrial applicability among examiners, a reference was given to the well-known device JEOL 840 on which it was possible to implement the proposed method in its full extent. Naturally, nobody offered to buy this device but this had nothing to do with the examination of the invention, because it is important that the method can be implemented in principle. It would be impossible to do without a description of the device; otherwise it would be simply impossible to given any explanation.
In the invention the method of generating the sensor elements is supplemented with the process photostimulation, ultrasound treatment, regulation of the surface charge on the cantilever 13 by a second electron gun 2 and optical measurement of the mass of the sensor element (probe 14) by fixing the frequency of resonant oscillations of the cantilever 13, for which purpose the laser 15 and photodetector 19 were used. This allowed making an umbrella patent. The technical means for performing the operations described (in the figure and description) were minimised for the purpose of further independent patenting. It was necessary to take the risk and not to proceed with the known implementation means as they could not be found in the available sources. But if the examiners questioned the feasibility of individual features of the method, they could simply be removed from the formula of invention without any significant damage because they were dependent.
It should be noted that the inventive features of the device hidden in the patent for the method [1] were repeatedly used in the descriptions of the coordinate tables and vacuum systems in different designs at a later stage; and several patents were obtained for them. It was necessary to use more time the device shown in fig.1 with the same degree of detail disclosure but this time to describe the possibility of manufacturing multi-probe sensors [2]. Thus one patent described the implementation of the method, and the other one explained the process of manufacturing the new device.
As an example, let us consider the following method for determining the concentration and quality of the distribution of finely dispersed fillers in polymer compositions [3]. For finish measurement of the size and location of the filler particles a standard scanning probe microscope already patented was used, so concealing its features was not relevant. But for plasma preparation of the surface of the sample 10 (fig.2) in order to identify these particles the original chamber 1 with a backing vacuum pump 4, a condenser 3, a source of operating gas 7 and the device for measurement of the plasma parameters 11 were used. Chamber 1 in the description is provided quite arbitrarily to ensure its self-patenting; at the same time were given three links to similar devices to guarantee that the application meets the industrial applicability criteria.
Another example is a patent for a method for registration of deflection of the cantilever of the scanning microscope with an optical lens [4]. In that case, at first an application for the device was prepared (fig.3) wherein the light source 1 generates a caustic field 12 between the lens 4 and the specimen 10. Photodetector 14 detects deflection of the console 6 to the probe 8. However, during the writing of the invention formula it started to show more and more features of the process related to the ratio of the size and location of the caustic 12, the angles of incidence of beams on the console 6, the polarisation of those beams. Eventually it was necessary to execute an application to the method, and it proved impractical to claim the device as an independent invention because it contained little patentable features and such an application would most likely be rejected.
The patent [5] for a method of manufacturing the probes based on quartz resonators a new device (fig.4) is described for oriented attaching a needle 5 to quartz resonators 3. For that purpose, the holders 2 and 4 moved on the platform 1 by means of screws 8 and 9 provide orientation of needles 5 and resonators 3 relative to each other and preserving the position of needles 5 until adhesive polymerisation. But given the low level of invention of the device, it was decided not to patent it as a positive outcome of the examination was unlikely.
In the patent [6] for a multifunctional piezoscanner and the method of scanning in the probe microscopy (fig.5), the device and method could not be divided into various applications as they were closely related. Bending piezotube 2 in the planes XZ and YZ is due to the through slots 3-6 and occurs when giving the electrodes 14-16 and 21 control signals of different shapes that determine the novelty of the method. From the standpoint of novelty it is also important that the flange 13 is rotatable and can be tilted relative of the base 1 with a different sequence of those signals.
The following examples are associated with the operation of the equipment for measurement, evaluation and production of new objects.
In the methods of evaluating the quality of vaccines [7] and detecting toxic proteins based on the scanning probe microscopy [8] the well-known equipment was used, the scanning probe microscopes but the novelty of the processes was just due to the use of these devices; so new features of the method were obvious. At the same time, microbiological operations were integrated into the known measuring processes run by a scanning probe microscopy. For example, in a method for detecting toxic proteins on a substrate four test fields were formed and successively analysed through scanning probe method. Known methods of chemical and physical effects on the toxic proteins were used to improve the measurement conditions. As a result, the reliability of measurements could be increased, and the method proved patentable.
The method for producing atomic-thin single-crystal films [9] differs from the known solutions by a combination of high-tech operations carried out in the known equipment with a strict sequence of characteristic preparatory operations thus ensuring the patentability of the invention. The equipment was described but it did not make sense to patent it since improvements were minimal. The details of the method are described in [10].
A separate category of inventions relates to methods for producing new materials. In the preparation of applications for such methods it is quite important to identify whether the text also describes a new material that could be specified as an independent invention. Typically such applications contain a large number of digital values, tables, examples, and it rather important to avoid typos and reconcile all the figures. An example is the patent [11] which contains far from the largest amount of digital information that the author had ever to agree upon. We will not dwell on this issue as it is adequately considered in [12,13].
The above examples show the variety of situations that arise in the preparation of applications for methods. In particular, very often you have to decide to what extent and how to reflect in the description the device methods to implement them, or new materials obtained during their implementation. It should be noted that the earlier a patenting item can be determined, the easier it will be to prepare a patent application.
At first glance, the selection of a patenting item is quite simple as a method and a device are patented at the same time by the acts of law but that is only in theory. In practice, there are different situations. For example, a device may be multi-component, and it requires 30 pages of text to make a description; and if it is necessary to describe in detail the independent and dependent claims of a method, it could add another 15 pages. Consequently, the number of errors will increase, and there may be a lack of time, but you need to report to the customer. Another possible situation is that you have won a tender but for that it was necessary to put a high number of patent applications in indicators. It is not always possible to convince monitors with the arguments that you have two inventions in the same application, a device and a method; so, it may be appropriate to patent them as two independent inventions.
But what if by patenting a device, you will still have to describe its operation using the inventive features of the method; and when it comes to patenting a method it will become necessary to describe the device with new features? If it is intended to separately patent a device that implements a new method, one should possibly minimise the features of the method in the description of its operation. It can be possible in many cases because the examiners will check for novelty primarily features of the device and the inventive step. It is a bit more difficult to patent a method when it comes to describing the device for its implementation, which may itself be patentable. If you like to hide the features of the device, in the description of the method you can indicate a (another) well-known device or minimise those of its characteristics which may then be required during patenting. In practice it is more difficult than in the case when it is necessary to hide the features of a method but it is possible.
Let us consider an example in which in the description of the method of creating a sensor element it was necessary to provide a description of the unit in which the method was implemented [1]. As shown in fig.1 in the unit it was necessary to ensure precision movement of the cantilever (flexible console) 13 with the probe 14 relative to the first electron gun 2. For that purpose, the original guides 5 with the drive 7 were used on the X-axis, and drives 8 and 9 on the Y-axis and Z-axis. The system was operated in the vacuum chamber 1; it had a high accuracy of movement, and it was further intended to protect it with an individual patent. Accordingly, it was not possible to present it in more detail than it is depicted in fig.1. Therefore, in order not to cast doubt on the feasibility of this method and its industrial applicability among examiners, a reference was given to the well-known device JEOL 840 on which it was possible to implement the proposed method in its full extent. Naturally, nobody offered to buy this device but this had nothing to do with the examination of the invention, because it is important that the method can be implemented in principle. It would be impossible to do without a description of the device; otherwise it would be simply impossible to given any explanation.
In the invention the method of generating the sensor elements is supplemented with the process photostimulation, ultrasound treatment, regulation of the surface charge on the cantilever 13 by a second electron gun 2 and optical measurement of the mass of the sensor element (probe 14) by fixing the frequency of resonant oscillations of the cantilever 13, for which purpose the laser 15 and photodetector 19 were used. This allowed making an umbrella patent. The technical means for performing the operations described (in the figure and description) were minimised for the purpose of further independent patenting. It was necessary to take the risk and not to proceed with the known implementation means as they could not be found in the available sources. But if the examiners questioned the feasibility of individual features of the method, they could simply be removed from the formula of invention without any significant damage because they were dependent.
It should be noted that the inventive features of the device hidden in the patent for the method [1] were repeatedly used in the descriptions of the coordinate tables and vacuum systems in different designs at a later stage; and several patents were obtained for them. It was necessary to use more time the device shown in fig.1 with the same degree of detail disclosure but this time to describe the possibility of manufacturing multi-probe sensors [2]. Thus one patent described the implementation of the method, and the other one explained the process of manufacturing the new device.
As an example, let us consider the following method for determining the concentration and quality of the distribution of finely dispersed fillers in polymer compositions [3]. For finish measurement of the size and location of the filler particles a standard scanning probe microscope already patented was used, so concealing its features was not relevant. But for plasma preparation of the surface of the sample 10 (fig.2) in order to identify these particles the original chamber 1 with a backing vacuum pump 4, a condenser 3, a source of operating gas 7 and the device for measurement of the plasma parameters 11 were used. Chamber 1 in the description is provided quite arbitrarily to ensure its self-patenting; at the same time were given three links to similar devices to guarantee that the application meets the industrial applicability criteria.
Another example is a patent for a method for registration of deflection of the cantilever of the scanning microscope with an optical lens [4]. In that case, at first an application for the device was prepared (fig.3) wherein the light source 1 generates a caustic field 12 between the lens 4 and the specimen 10. Photodetector 14 detects deflection of the console 6 to the probe 8. However, during the writing of the invention formula it started to show more and more features of the process related to the ratio of the size and location of the caustic 12, the angles of incidence of beams on the console 6, the polarisation of those beams. Eventually it was necessary to execute an application to the method, and it proved impractical to claim the device as an independent invention because it contained little patentable features and such an application would most likely be rejected.
The patent [5] for a method of manufacturing the probes based on quartz resonators a new device (fig.4) is described for oriented attaching a needle 5 to quartz resonators 3. For that purpose, the holders 2 and 4 moved on the platform 1 by means of screws 8 and 9 provide orientation of needles 5 and resonators 3 relative to each other and preserving the position of needles 5 until adhesive polymerisation. But given the low level of invention of the device, it was decided not to patent it as a positive outcome of the examination was unlikely.
In the patent [6] for a multifunctional piezoscanner and the method of scanning in the probe microscopy (fig.5), the device and method could not be divided into various applications as they were closely related. Bending piezotube 2 in the planes XZ and YZ is due to the through slots 3-6 and occurs when giving the electrodes 14-16 and 21 control signals of different shapes that determine the novelty of the method. From the standpoint of novelty it is also important that the flange 13 is rotatable and can be tilted relative of the base 1 with a different sequence of those signals.
The following examples are associated with the operation of the equipment for measurement, evaluation and production of new objects.
In the methods of evaluating the quality of vaccines [7] and detecting toxic proteins based on the scanning probe microscopy [8] the well-known equipment was used, the scanning probe microscopes but the novelty of the processes was just due to the use of these devices; so new features of the method were obvious. At the same time, microbiological operations were integrated into the known measuring processes run by a scanning probe microscopy. For example, in a method for detecting toxic proteins on a substrate four test fields were formed and successively analysed through scanning probe method. Known methods of chemical and physical effects on the toxic proteins were used to improve the measurement conditions. As a result, the reliability of measurements could be increased, and the method proved patentable.
The method for producing atomic-thin single-crystal films [9] differs from the known solutions by a combination of high-tech operations carried out in the known equipment with a strict sequence of characteristic preparatory operations thus ensuring the patentability of the invention. The equipment was described but it did not make sense to patent it since improvements were minimal. The details of the method are described in [10].
A separate category of inventions relates to methods for producing new materials. In the preparation of applications for such methods it is quite important to identify whether the text also describes a new material that could be specified as an independent invention. Typically such applications contain a large number of digital values, tables, examples, and it rather important to avoid typos and reconcile all the figures. An example is the patent [11] which contains far from the largest amount of digital information that the author had ever to agree upon. We will not dwell on this issue as it is adequately considered in [12,13].
The above examples show the variety of situations that arise in the preparation of applications for methods. In particular, very often you have to decide to what extent and how to reflect in the description the device methods to implement them, or new materials obtained during their implementation. It should be noted that the earlier a patenting item can be determined, the easier it will be to prepare a patent application.
Readers feedback
