Article by Bruce S. Itchkawitz, Ph.D.; originally published at PhotonicsPatents.com on January 20, 2014
Google recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’s tears. I thought it’d be interesting to review the relevant patents to see how the company has protected its interest in this innovation. What I found was an instructive example of how to protect innovations that have been developed over the course of years. The following discussion lists five lessons from Google’s example that can be emulated by start-ups as well as more mature companies.
The project’s co-founders, Brian Otis and Babek Amirparviz, are both professors in the Electrical Engineering Department of the University of Washington (UW), and most, if not all, of the patents by these two researchers in this technology space were filed and are owned by UW. Google has likely negotiated an exclusive license with UW’s Center for Commercialization (C4C), since C4C’s searchable database of UW’s patents available for licensing does not list the patents relevant to this technology. However, Google’s license does not wholly exclude the federal government, which, according to the patents themselves, has certain rights to the inventions by way of supporting the research through grants by the Department of Defense, the National Science Foundation, and the National Institutes of Health.
Lesson 1: Keep an eye on relevant research being done in academia, as well as at national laboratories, and take licenses to technologies of interest.
Nearly all such institutions have “technology transfer” offices whose job it is to license out the technology being developed, bringing much-desired funding to the institution. In many cases, if your company can identify a research group doing work in an area of interest, exclusive rights can be obtained to the fruits of this research which can be helpful in carving out a portion of the marketplace from which your company’s competitors are barred.
Looking now to the patents themselves, the trail starts in November 2007, when UW filed a provisional application to a “Free-standing photosensor with integrated interference filters for self-assembly” disclosing a “polymer transfer process” by which features can be microfabricated onto two sides of free-standing semiconductor components. As I’ve described in this blog previously, a provisional application can be thought of as a “placeholder,” which can be filed relatively cheaply to get the earliest-possible priority date for work done so far, but for whatever reason (e.g., lack of budget, unsure of marketable value), the applicant does not yet want to expend the time, money, and effort on preparing and filing a regular patent application. To take advantage of the early priority date though, a regular patent application must be filed within one year of the filing of the provisional application. That is what UW did, filing a regular patent application in November 2008 on the one-year anniversary of the 2007 provisional application.
Note that the 2008 regular patent application actually has multiple priority dates. For example, if there is some additional material in the regular patent application that was not in the provisional application (e.g., material describing further developments made by the researchers during the one-year period after filing the provisional application), any claims based wholly on the material disclosed in the 2007 provisional application get the provisional application’s early priority date (November 2007), and any claims based at all on the additional material not in the 2007 provisional application get the filing date of the regular patent application as their priority date (November 2008).
Lesson 2: File early.
With the recent change of U.S. patent law to a “first inventor to file” system, it is more important than ever for applicants to file their patent applications as early as possible. An early priority date can be of great value, both to antedate any prior art references that may otherwise be cited against the patentability of the invention and to antedate any other applications that may have been filed by others (i.e., to qualify as the “first inventor to file” in the U.S.). If foreign patent protection is contemplated, filing an application before the invention is made public is crucial, and a U.S. provisional application can be used for this purpose.
After filing the regular patent application, UW’s research efforts continued on, and a second provisional application was filed in October 2010 to “Solar power for active contact lenses,” disclosing a method of fabricating free-standing solar cells and mounting these solar cells onto a contact lens in appropriately-sized wells. Additionally, a third provisional application was filed four months later in February 2011 to “Wirelessly powered CMOS glucose sensor for an active contact lens” which appears to include the pre-print of a session proceedings of a talk given three days later at the 2011 IEEE International Solid-State Circuits Conference.
Lesson 3: File often.
If key developments are being made quickly, it can be prudent to file multiple provisional applications to retain the earliest possible priority dates for these developments, rather than filing the first provisional application and holding off and waiting to include the subsequent developments in the regular patent application at the one-year anniversary. Multiple filings may be especially important if a public disclosure of the developments is contemplated (e.g., a paper published in an academic journal, a conference presentation, a product being sold).
These two provisional applications were followed respectively by the filing of two regular patent applications on the one-year anniversaries of the provisional application filings. The first of these two regular patent applications was filed in October 2011 as a ”continuation-in-part” (CIP) of the 2008 regular patent application. A CIP application is a type of “continuing” patent application that has multiple priority dates, analogous to the multiple priority dates of a regular patent application relying on the earlier priority date of a provisional application. A CIP application includes the material from the earlier-filed application, as well as additional material. [In contrast, the other types of “continuing” applications (i.e., continuation application and divisional application) only include material from the earlier-filed application, so they have only the priority date of the earlier-filed application.] To rely on the priority date of an earlier-filed regular patent application, a continuing application must be filed while the earlier-filed application is still pending at the U.S. Patent and Trademark Office (USPTO).
In this case, the 2011 CIP regular patent application relied on the priority date of its 2010 provisional application, as well as on those of the 2008 regular patent application and its 2007 provisional application. The second of these two regular patent applications was filed in February 2012 as a CIP of the October 2011 regular patent application. Thus, it relied on the earlier priority date of its 2011 provisional application, as well as on the earlier priority dates of the other applications filed in 2007, 2008, 2010, and 2011.
UW may have filed these regular patent applications as CIPs because UW expected that at least some of the claims of these regular patent applications would be based wholly on the material in the earlier-filed applications. However, after reviewing the materials disclosed in the various applications, this does not appear to be a highly likely event. For example, while the 2008 regular patent application disclosed a fabrication process that may have been used to make the solar-powered active contact lenses of the two regular patent applications filed in 2011 and 2012, the 2008 application does not disclose “contact lens,” “photovoltaic”, or other features recited in the claims of the 2011 and 2012 applications. Therefore, none of the claims of these later-filed patent applications appears to be wholly supported by the 2008 disclosure.
Lesson 4: Carefully evaluate whether a patent application is going to rely on the priority date of an earlier-filed patent application.
While reliance on an earlier priority date of an earlier-filed regular patent application can be helpful, as described above, it does not come for free. Unless extended to account for patent office delays, the lifetime of a patent is constrained to be 20 years from its earliest priority date (excluding the provisional application filing date), so a patent with an earlier priority date expires earlier as well. Therefore, unneeded reliance on an earlier priority date can cut years off of the patent’s usefulness.
A group of patents and patent applications that share priority dates is sometimes referred to as a “patent family.” For example, the patent family disclosing UW’s research in this area includes the three patents resulting from the three regular patent applications: U.S. Pat. No. 8.394,660 issued in March 2013 (from the 2008 application), U.S. Pat. No. 8,579,434 issued in November 2013 (from the 2011 CIP application), and U.S. Pat. No. 8,608,310 issued in December 2013 (from the 2012 CIP application). The patent family also includes another pending regular patent application that was filed in 2013 and that is a continuing application of the 2008 application (i.e., it relies on the priority date of the 2008 application, but not either of the 2011 or 2012 applications).
This pending application includes claims covering some of the two-sided devices fabricated using the method described in the 2008 application, which UW and Google presumably thought was worth protecting further. In addition, if UW or Google decides to pursue additional claims based on the 2008 application, the pending application can be used to provide a priority date for one or more future continuing applications as well.
However, UW and Google allowed both the 2011 and 2012 applications to issue without filing any further continuing applications. Therefore, the opportunity to pursue additional claims to the specific material disclosed in these two applications related to active contact lenses is severely constrained. There are avenues to re-open the possibility of pursuing additional claims (reexamination or reissue), but these options can be expensive and are constrained in ways that a timely-filed continuing application is not.
Presumably, UW and Google were satisfied with the scope of the claims obtained by the 2011 and 2012 applications directed to this material, and didn’t think that pursuing further protection was warranted. This may be because the technology has evolved to take a different direction in which the 2011 and 2012 applications have less relevance.
Lesson 5: For technologies of interest, keep at least one patent application pending to maintain the option of pursuing additional protection.
The option of pursuing further claims can be highly valuable, for example, to pursue claims focused on a competitor’s products or claims that are less vulnerable to arguments put forth by competitors (e.g., in a reexamination or litigation context). For example, in a related area in which Google is marketing a product (i.e., the Google Glass® wearable mobile device), the company has a much wider patent portfolio with many pending continuing applications. In addition, even before rolling out a product or having a competitor on the horizon, having a patent family pending at the USPTO directed to a start-up’s key technology can significantly increase the value of the start-up to potential investors or buyout candidates.
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