Patenting photonic inventions:
Addressing the challenges
JEFFREY B. POWERS
Capturing the value of time and
money invested in R&D is the goal
of every person that files a patent application. Success or failure frequently depends on the precision and com-
pleteness of the document and may
hinge on the meaning of a single word
So, it is important to realize that
pitfalls can manifest themselves in
the patent claims (where the appli-
cant sets forth the boundaries of his/
her protected invention) or in the pat-
ent specification (where the applicant
fulfills his/her obligation to teach how to make and use the claimed inven-
tion). A failure to clearly yet broadly specify the invention in the claims and
specification can result in failure to obtain a patent or diminish the value of
the patent that is obtained.
As an application is prepared, it is important to have the relevant audiences
in mind. Although the applicant’s legal obligation when writing a patent application is to teach “one of ordinary skill in the art” how to make and use the
invention, it is essential to consider the following: 1) before a patent is granted,
it is an examiner (who may not be as extensively trained on a particular technology as the inventors) who will make determinations about how one of ordinary skill in the art would understand the application, and 2) when a patent
is enforced, it is individuals who are likely non-technical (i.e., a judge and/or
jury) who will make determinations about how one of ordinary skill in the art
would understand the application.
Additionally, during the process of claim drafting, it is important to
take a step back and consider how competitors might design around
your claims and to address any deficiencies in your claims. Ultimately,
as shown in the figure, the goal of a patent is to keep competition away
from not only the best solution to a problem, but also away from the
second- and third-best solutions, etc., thereby providing the maximum competitive advantage in the marketplace. Pitfalls in achieving
the above goals come in many guises.
Here are several examples of pitfalls and types of pitfalls for patent applicants to consider and avoid when preparing patent applications for
Naming and measurement conventions should be clearly identified.
Photonics/optics is notorious for having multiple naming and measurement conventions, and while members of a given design team (i.e., the
preparers of a patent application) may well understand the intended
meaning of a term in an application, an objective outsider (i.e., one of
ordinary skill in the art) may be left with questions. A failure to teach
him/her about your invention can be fatal.
For example, use of the terms “radiance” and “irradiance” have different meanings to different individuals, and without a clear indication
of the meaning in a given patent application, clarity issues may arise.
Similarly, specifying an aberration in terms of a number of wavelengths
of light without precisely specifying that the measurement represents a
The ultimate goal of a patent is to provide maximum
competitive advantage while keeping the competition
away from the best solution, and even the second
and third best.