Alternative features in patent law

Originally published in Patent Lawyer Magazine

For the first time, alternative features were identified and became known in world patent practice from the Markush case in 1924.

Dr Eugene A. Markush was the founder and president of the Pharmaceutical Chemical Corporation in Bayonne, New Jersey. He was a leading dye manufacturer in the United States and held more than 20 patents in synthetic dyes and related fields. In 1924, he received a patent for pyrazolone dyes (US No. 1,506,316), which protected a generic chemical structure, in addition to already synthesized products, through the use of the expression “where R is a group selected from.” Although Dr Markush did not file the first generic chemical structure patent, he was involved in precedent-setting litigation in the United States for this type of claim. Eugene Markush was the first inventor to successfully use construction in the claims that represented alternative embodiments of the invention. Initially, such a statement of the claims was typical only for chemical compounds or gene sequences, and alternative features were alternative chemical elements or species, but in further practice, such use of alternatives began to be used in patent claims for methods, devices, and uses.

What does Russian patent legislation say about alternative characteristics? The use of alternative concepts is allowed in cases where it is necessary to characterize several different forms of implementation of a feature that ensures (in combination with other features of the invention) the same technical result, but a general concept covering such forms is absent or its use is impossible.

Alternative features are usually included in the claims in the form of concepts in combination with the conjunction “or”. It should be taken into account that “alternative” can also stand behind a form of notation such as, for example, “at least one hole.” This means that the device has one or more holes. However, this is not a complete list of alternative characteristics. Let’s look at a specific example of an independent claim to see what alternative features might look like.

Epoxy adhesive composition, including: a) the first part of the composition containing:

a.1) at least one epoxy resin or mixture of epoxy resins selected from the group consisting of bisphenol A diglycidyl ether, which is brominated, and its oligomers, bisphenol F diglycidyl ether, which is brominated, and its oligomers, epoxide diethylene glycol and its oligomers, as well as their combinations;

a.2) a reactive diluent selected from diglycidyl ethers of aliphatic C4-C12 diols;

a.3) core-shell nanoparticles, wherein the core contains or consists of at least one elastomer having a glass transition temperature (Tg) in the range from -70°C to -110°C, wherein the shell contains or consists of a compatibilizer based on epoxy resin;

a.4) at least one filler or a mixture of fillers having a thermal compression coefficient of not more than 50 × 10-6 K-1;

a.5) a reactive binding agent that establishes a chemical bond with the filler, on the one hand, and the hardener forming the second part, on the other;

b) the second part of the composition containing:

b.1) a hardener selected from the group consisting of aliphatic polyamines, amidoamines, and aliphatic polyamides, in particular, the reaction products between an aliphatic polyamine and a fatty acid dicarboxylic acid, in particular the reaction products between an aliphatic polyamine and an unsaturated C12-C18 fatty acid dimer or the reaction products between an aliphatic a polyamine and tall oil or a tall oil fatty acid dimer;

b.2) at least one filler or mixture of fillers having a thermal compression coefficient of not more than 50 × 10-6 K-1; it is understood that at least one of filler a4) or filler b2) has a thermal compression coefficient of not more than 50 × 10-6 K-1;

b.3) a reactive coupling agent that establishes a chemical bond with the filler, on the one hand, and the resin forming the first part, on the other hand.

As can be seen from the presented example, the applicant has defended a huge number of different embodiments of the invention. What’s good about so many alternatives? Let us immediately note that the more alternative options protected, the greater the volume of exclusive rights available to the copyright holder.

In the case when the formula proposed by the applicant contains a feature expressed by alternative concepts, for example, if an independent claim of the invention contains a set of features A, B, C, D, and feature D is expressed through alternative concepts D1 or D2, the patentability check is carried out in relation to each set of features that includes one of these concepts.

The patentability check is carried out separately in relation to all alternative options and sets of features existing in the invention formula. This means that if any of the alternatives or part of the alternatives do not comply with the patentability condition of novelty and/or inventive step, then the remaining options have the right to life and can be patented, subject to the exclusion of non-patentable alternatives. Patentability testing may lead to different conclusions for each set of features. It is possible that a set of features that includes one of the alternatives will not meet the requirement of novelty, and a set that includes another alternative will not meet the requirement of inventive step.

In the event that, based on the results of a patentability check, it is established that a set of features containing one of the alternatives is non-patentable, and in relation to a set containing another alternative feature, a conclusion has been reached about the possibility of providing legal protection, the grant of a patent can only take place if the applicant excludes from the claims of the “defective” alternative. In the case where several features are expressed as an alternative, obtaining the same technical result must be ensured by combining each of the alternative characteristics of one feature with each of the alternative characteristics of other features separately. Compliance with this condition can be considered confirmed if the description of the invention presents separate sets of features containing various combinations of such alternative features. If such sets are not presented and, in connection with this, understanding the essence of the inventions described in such a formula is difficult to the point of impossibility of conducting an information search, the expert has the right to request appropriate clarifications from the applicant.

For applications containing a claim with many combinations of alternative features, the applicant may be sent a request with a proposal to supplement the description with relevant information on the disclosure of specific variants of the invention formed from specific combinations of features expressed as alternatives, since their absence does not allow examination essentially or clarify the claims so that the essence of each invention of the claimed group can be established.

Separately, it should be noted that, in accordance with the current patent legislation, the use of alternative features in the formulas of a utility model is not permissible, since only one specific embodiment of a device can be protected as a utility model. Thus, other embodiments of a utility model containing alternative features may be protected by another patent.

Thus, despite the fact that the presence of a large number of alternative features in the claims of the invention makes it possible to obtain a wider scope of legal protection, we should not forget that several different forms of implementation of the feature should ensure, in combination with other features of the invention, obtaining one and the same technical result, as well as the description of the invention, must contain relevant information on the disclosure in it of specific variants of the invention, formed from specific combinations of features, expressed as an alternative. Otherwise, in the absence of such, the chances of obtaining a broad patent are significantly reduced, and the examination may limit patent rights only to the specific embodiments of the invention disclosed and confirmed in the description.