Our lives are full of conditional logic. Conditional logic means simply waiting for something to happen, and then something else happens in response. For example, you receive a text message from Amazon stating that your package has arrived, and you respond by going to the door and checking your front porch.
We use conditional programming in our gadgets to run our lives for us. Your sprinklers constantly check in with a system clock, waiting for a condition to be met in which the current time matches the time you previously scheduled your sprinklers to go off. When this condition is met, your sprinklers turn on.
Patents have conditional logic just like everything else. And this can weaken a patent claim.
The trick with conditional logic is that when you have conditions, you also have choices. You have options. When those choices are optional, those options neither confer patentability, nor are necessary for infringement. If an inventor is not careful, those optional steps go into the public domain and anyone can copy them in the absence of the patentable steps
For assistance in protecting against this error in your patent application, contact the Law Office of Michael O’Brien.
But let’s take a moment to explain why conditionality can be a liability.
As an example, let’s return to our sprinkler analogy above. Let’s say that back in the ‘80s or ‘90s, when automated sprinkler systems were pretty novel, you file a patent application for a cutting edge reporting system for smart sprinklers in which data on the operations of the sprinklers can be sent to external destinations, such as email, a compatible computer programs, or maybe even something crazy like your answering machine.
In your patent application, you detail that certain communications protocols are invoked when connecting the sprinkler reporting system to a certain computer application or email software. This is an optional condition. You’re saying that this aspect of the reporting system is not integral to your patent, because it isn’t necessary.
As IPWatchdog recently reported, such conditional claims are having a tough time in the patent courts. When you say that something isn’t necessary to the operation of your invention, then they fall outside the scope of your patent. Worse yet, you’ve published them, so now they’re in the public domain. Instead of cornering the market on smart sprinkler reporting systems, you instead make it easy for everyone to develop their own open source reporting systems. Oops. I In addition, there is precedent for USPTO examiners only having to show that one branch of a logic tree of conditions being obvious or demonstrated in prior art for the entire patent claim to be invalidated.
While this may seem a little absurd, there is merit to this approach. Previously, the Federal Circuit has stated that if a copycat duplicates all of the steps of a patented process, then the copycat is liable for infringement. But if a copycat duplicates only some of the steps of a claimed method, then infringement doesn’t occur. This distinction matters.
In Lincoln National Life Insurance v. Transamerica Life Insurance, the defendant was accused of infringement because they had duplicated the first four steps in their patented five step process. The plaintiff asserted that infringement had actually occurred, because the fifth step omitted by the defendant was actually conditional. The courts shot this argument down and found that there was no infringement, because the patent claim indicated that the last step was not conditional.
Lincoln’s attempt at moving the goalpost by labeling a step as conditional (and ergo, optional) shows the weakness of conditional claims in patents. Because a condition can be argued to be periphery to a patent claim, a patent claim that relies on conditional logic can suffer mightily under the scrutiny of a patent examiner.
If you need assistance in handling conditional limitations when drafting your patent claim, the Law Office of Michael O’Brien can help. For more information, give us a call at 916-760-8265, or send us an inquiry using our contact form.