Saturday, May 21, 2011

Patent Models & Communication

I was rereading Katherine Durack’s article, “Tacit knowledge in patent applications: observations on the value of models to early US Patent Office practices…” and I got stuck wanting to know more about the models. I’ve been asked about models for provisional patents lately, and the word model, in Durack’s case, little things glued together, and in the recent example, examples of written communication, seem at odds. One shows; the other tells.


So possibly, the theme to this post has more to do with getting sidetracked while writing than anything else.

Durack shows how the inventor uses models as one way to communicate tacit knowledge “knowledge that is understood but cannot be expressed” (definition from Michael Polyanyi).

This idea of communicating tacit knowledge is a much more eloquent way of asking a supervising patent examiner, as I have before, “So what happens when you just don’t understand the science in the patent application?”  

It’s a fair question, I believe, because the purpose of a patent is to protect a novel idea, and if the patent examiner understood the science completely on the first filing, this question remains unanswered: Is the invention all that new?

In the nineteenth century, models were used to fill the gap between the information communicated through the patent application and the patent examiner’s understanding of the application. Examining the model communicated the information that the inventor had trouble writing down.

Two fires destroyed many of the models, but I wanted to find some examples. I found two volumes, titled: “Patent models index: guide to the collections of the National Museum of American History, Smithsonian Institution,” by Barbar Suit Jannsen. The National Museum of American History is one of my favorite places (just FYI: in the dark, when it looks a little creepy inside, the replica of Julia Child’s kitchen is rather inviting).

UMaine has electronic access to both volumes, and I was pleasantly surprised to find that they are illustrated.

Durack raises this question: “When a single patent application might encompass many thousands of pages on multiple compact discs, disclosure might be complete, but is it intelligible?”
Yeah, I wanted to know what the longest patent application is, too. According to Ask the Invention Geek, Genentech, Inc. holds the record for the longest patent application for US20070224201A, Compositions And Methods For The Diagnosis And Treatment Of Tumor. It has 7,154 pages. This application also has the most figure sheets at 6,881 sheets. Read the application here…

Durack explains that we might benefit from using technological models to communicate 3D ideas as a way to bridge the gap between words on the page and understanding on the part of the patent examiner. Would Genentech, for example, need 6,881figure sheets if they could show a dynamic model?

On the other hand, what happens when the model takes away the interplay between inventor/patent agent/attorney and the patent examiner? How would claims be limited?

And that’s where I am…in this space between written application and the patent examiner—the space Durack identifies tacit knowledge—and I’m thinking about audience and what happens when the patent examiner doesn’t always understand the science.

***
Images are from pages of the Patent models index: guide to the collections of the National Museum of American History, Smithsonian Institution,” by Barbar Suit Jannsen.

Durack, Katherine T. “Tacit knowledge in patent applications: observations on the value of models to early US Patent Office practice and potential implications for the 21st century.” World Patent Information 26 (2004) 131-136.

3 comments:

  1. Wow--this looks like good info, Charlsye. I just found your blog. I'll email you.
    Tim Hadley
    Texas Tech

    ReplyDelete
  2. Very useful. Patent protection is available for any product, process or design that meets certain requirements of novelty, nonobviousness and utility. And so it is important for an inventor to understand patent process.

    ReplyDelete
  3. Thanks for the feedback. I have met several inventors who lost their patents because they did not pay attention to the details surrounding patenting.

    ReplyDelete