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.