Author: Peter Caporn
Apologies to Robert M Pirsig, and in turn to Eugen Herrigel (author of Zen in the Art of Archery, upon which Pirsig played in choosing a title for his classic “Zen and the Art of Motorcycle Maintenance”). There’s little similarity between this post and Pirsig’s classic of American literature, other than perhaps both sharing some exploration of the concept of “quality”.
In the recent Patent Office decision of Siemens AG v ABB Schweiz AG [2015] APO 75, the full text of which can be found here, an otherwise novel and inventive patent application was found to lack ‘fair basis’. That is, the claims at the rear of the patent specification (the specifically worded and numbered paragraphs, without discernible punctuation, that define the monopoly granted by a patent) were found to go beyond the disclosure of the invention found in the specification as a whole. Put another way, the broadest claims of the patent application didn’t contain all the limitations, or features, determined to be essential to the invention by a Delegate of the Commissioner of Patents in the remainder of the specification – they lacked ‘fair basis’.
The technology at issue was, as noted in the title, a method of operation of a tube or pipe mill to dislodge frozen charge in a safe/efficient manner. The dislodging of frozen charge at too high a point in rotation of the mill can cause the mill to crash to bottom causing damage and the mill can be driven in a manner to dislodge the charge at a lower point. The broadest claim read as follows:
- A method for detaching a frozen charge from an inner wall of a grinding pipe, the method comprising the steps of:
controlling a driving device of the grinding pipe to detach a frozen charge from an inner wall of the grinding pipe, which driving device is operable to apply a driving torque to the grinding pipe,
wherein controlling the driving device comprises varying the driving torque applied to the grind pipe wherein the driving torque is always positive so that the grinding pipe does not change its rotational direction.
Much discussion centred around whether the feature of the invention that related to the angle beyond which the mill would not be rotated in the dislodging process. If rotated beyond a 75 degree angle the charge may fall due to gravity and the problems of prior tube mills would not be avoided. The Delegate found that this feature should appear in the broadest claim(s) of the specification and the Applicant, ABB Schweiz AG, has been given a period of time within which they can rectify this by way of amendment.
What’s the big deal you say, they get to fix it? Yes they do, but they’ve spent several years on a patent opposition they needn’t have and they’ve been ordered to pay the opponent’s costs. A similar problem identified later in the patent’s life can have much greater consequences. The key point is the importance that must be exercised in balancing the desire for broad, catch ‘all’ patent claims, versus the need to ensure that what you claim as the invention is actually what is described as the invention. This requirement is only getting more onerous as time passes. The rules relating to ‘fair basis’ have recently changed and will be harder to meet in the future.
Just as Pirsig argues for a world that embraces both the rational and the romantic (using differing approaches to motorcycle maintenance as an analogy), the patent draftsperson must also perform a careful balance.