Chemistry Expert Witness On Patents Part 2
Chemistry expert witness Edward Funk, Ph. D., presented this short course to senior level chemical engineers on patents:
There are some criteria for high-quality MOIs’.
First, is this something of current or potentially future business interest to the company?
An MOI can get a high rating if the invention appears to be something that could affect a
core business. A very small improvement in a large-scale process can be critical.Second, the MOI should sell the invention. It should show how the invention improves
the technical state of the art. It is usually very persuasive when the MOI includes
unexpected effects. The classic example is the discovery of teflon; an experimental
problem led to production of a polymer that wasn’t just an annoying“goo” but had truly
unexpected properties. Most inventions are not "bolts out of the sky" of radically new
technology, but incremental discoveries that solve a problem known to the experts in the
field. Highlighting this solution is an important part of a good MOI. The MOI should
also include the three keys parts required in the PTO specification: (1) a clear written
description of the invention, (2) information to enable a reasonably astute colleague to
practice the invention and (3) the best mode of operation. While these may be
significantly revised in discussions with the patent attorney, they do provide a starting
point for the patent application.
