In Patent-Speak: When is a Brassiere an N95 Mask?

In these especially challenging times, one must be able to see through the fog of distracting information.

The same holds true for the bureaucratic process of filing for a patent. A case in point is a 3M Company patent (U.S. Patent No 3,064,329) for a molded nonwoven fabric article and related manufacturing process for making items such as porous breath-filtering face masks used by surgeons, physicians, and nurses subjected to contaminated atmospheres. Nowadays, we might call such items N95 masks. 

Back in 1959, 3M equated their masks to women’s undergarments.  But notwithstanding the distracting patent illustrations, this U.S. patent is not what some may think of when considering N95 masks.  Why is that?

The U.S. Patent & Trademark Office (USPTO) uses an arcane classification system to pigeon-hole patent applications into the proper “bucket” of technology.  Although the original patent classification of this 3M patent has changed during reclassification efforts of the last 60 years, this patent is currently classified in U.S. patent class 450, subclass 39.  Here, the USPTO classifies inventions that include “breast or chest, e.g., brassieres; molded preshaped shell-like cup, e.g., plastic latex”. 

Interestingly, the broadest claims of this patent actually make no mention of breasts or brassieres.  Rather, brassieres are buried in two short claims towards the end of the list of claims.  So how can a brassiere patent not be a brassiere patent, and why would 3M or any patent applicant obfuscate the intended invention?

The answer can be as simple as the first rule of any good persuasive writing:  write for your audience.

The USPTO includes over 8,000 patent examiners that review patent applications in discrete buckets of technology. Over time, each examiner becomes expert in reviewing their own peculiar area of inventions. This pejoratively means that each examiner knows a lot about very little.

One way that seasoned patent practitioners have learned to use this to their advantage is to draft a patent application broadly enough to cover the intended commercial product, but simultaneously insert enough flavour into the application to shepherd the case into a preferred bucket of technology.  In the case of the 3M patent, it is likely that the examiner who reviewed and granted that brassiere patent was expert in women’s undergarments rather than N95 masks.  In theory, this can make a patent practitioner’s job a little easier when trying to persuade a USPTO examiner that an invention is new and nonobvious.

Knowing how to effectively navigate the USPTO patent classification system to get a patent application under the right examiner’s nose can often affect the outcome of negotiations.  So, when is a brassiere not a brassiere: when the patent applicant calls it an N95 mask. 

Indeed, a rose by any other name would smell as sweet!

IAMPATENT1000 ranked Brion Raffoul as one of top 14 patent prosecution firms in Canada

IAMPATENT1000 is one of the most respected rankings for patent professionals globally because of peer review in validating its research. The IAMPATENT1000 published the following about Brion Raffoul:

Ottawa-based IP specialist Brion Raffoul is the recipient of emphatic feedback from the market: “Its professionals are extremely organised, proactive and very easy to work with. They have an excellent grasp of their subjects, execute with speed and precision, all while being very responsive.” Cited as being “entrepreneurial and driven practitioners with world-class skills”, Art Brion and Natalie Raffoul form the fulcrum around which the practice turns. Brion is an influential figure in the start-up community and a sought-after representative for companies spun off from universities. Business methods and software patents are bread and butter for Raffoul, who is a “creative, cost-effective, efficient and solutions-oriented partner”.

For more information: https://www.iam-media.com/directories/patent1000/rankings/canada

Protecting Your Innovation: Improvement Patents

Build a better mousetrap, and the world will beat a path to your door.”

Blockchain, nanomaterials, AI, CRISPR – disruptive technologies can transform entire industries.  A common misconception is that patents are only for protecting cutting-edge and disruptive innovation. Indeed, only technology that is new and non-obvious can be protected by a patent. However, these requirements do not mean that only disruptive technologies can be protected. In fact, the Canadian Intellectual Property Office (CIPO) estimates that 90% of patents are for improvements to existing patented inventions. For example, a patent was granted this week for a bar of soap!

An improvement patent is based on technology that builds on a previous idea or invention – a better mouse trap if you will. An improvement patent does not give you the right to use the original patented invention as the patent holder can exclude others from using their invention. However, an improvement patent gives you the right to exclude others from using the improvement.

Exclusivity over the improvement can be a valuable defensive tool when faced with the threat of an infringement suit. Companies can avoid protracted and expensive patent litigation by aligning with would-be competitors or infringers and cross-licensing your technology with the patent holder of the original invention.
A cross-license is an agreement to grant mutual rights to each party’s respective patents.

A perfect example of a beneficial cross-licensing relationship is Google and Samsung Electronics, who signed a broad cross-licensing agreement in 2014. By joining forces, Google and Samsung Electronics mitigated their risk of infringement, allowing the companies to place a larger emphasis on innovation. Cross-licensing agreements are especially effective for companies that target different markets, creating a win-win for everyone.

Far too often companies underestimate the value of small improvements made to existing technology. By protecting incremental improvements, companies can bolster their IP portfolio and create new opportunities to license other technology.