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IP monitor: Email alternatives bring new challenges to supporting patent validity

Canada Publication July 26, 2021

As part of ongoing technological transformations, companies have adopted alternatives to email as a communication tool. Although these new tools may improve efficiency and enhance collaboration, it is prudent and advisable to take precautions to prevent their use from creating a risk of patent invalidity.

New communication platforms

Since its inception in the 1970s, email has become the accepted standard for business communications. However, the maturity of email as a platform does not leave much room for it to respond to modern challenges. One such challenge is the administrative burden of dealing with incoming messages, such as acknowledging their receipt and identifying important messages, which has been compounded by the continued increase in email volumes. Another challenge is attached documents, which often have file size limitations and can be transmitted to and accessed by unauthorized individuals.

The most prominent alternatives to email address these challenges by creating task- or team-specific groups in which messages and documents are posted. These platforms have a similar interface to instant messaging programs, which promotes using short messages that can increase efficiency in the day-to-day course of business. However, this brevity can make it challenging for third parties to understand the discussion, particularly if there is little context and no clear presentation of underlying facts and issues. Likewise, it may be more difficult to appreciate the significance of documents if there is no explanation of their relevance.

The increased difficulty for third parties to understand such discussions that take place during the process leading to a patentable invention can limit alternative communication platforms as a source of evidence to support patent validity, particularly with respect to inventiveness and utility. As such, it is prudent to identify specific validity issues that may arise, and to introduce measures to mitigate the risk created by using non-email communications in a research and development setting.

Inventiveness

While each message on alternative communication platforms should belong to a group dedicated to each research project, a number of discussions on a variety of overlapping topics and experiments may still take place within the group for a given project. Without being able to link a given message to a specific topic or experiment, it could be challenging to rely on such messages to support an individual’s contribution to the inventive concept. One solution to this challenge is to divide conversations within a group into separate threads that deal with the same facts and issues. For example, a separate thread should be used for each new experiment. While it may be difficult in practice to ensure that every message is posted in the correct thread, it should help to show that a given message pertains to the invention at hand rather than to another matter or is a general remark.

Using message threading to improve the understanding of a message’s context can also assist with demonstrating the amount of work and effort expended to arrive at the patented invention. Having a separate thread for each experiment within a project can help to show that an invention is not trivial because many experiments needed to be done by inventive individuals. It would also be prudent to provide a more complete message at the beginning of each thread setting out the goal and roadmap of the experiment, including the expected challenges. This can be helpful to show that challenges were overcome and whether unexpected challenges were encountered, which would both support inventiveness.

Utility

Challenges in supporting the utility of an invention can also arise from the lack of context to messages discussing experimental results and the implications of such results. Although a scintilla of utility will suffice, it must be related to the claimed invention. Therefore, it is important to have a clear link between messages discussing results and underlying experiments that is related to the claims at issue. In addition to its benefits for inventiveness, using a separate thread to discuss the results of each new experiment will help to establish the relationship between results and the subject-matter of the patent claims at issue.

Likewise, a message at the start of each thread setting out the context of an experiment, including the experimental criteria, can be useful to forestall allegations of lacking utility in fact (results show the claimed invention does not work in practice). This will help to establish the context for brief messages that could otherwise be misconstrued by a party alleging inutility, such as “negative results”, “experiment failed” and “does not work”. Including a message that links a conclusion to the parameters of the particular experiment will prevent messages from being understood as general statements regarding the utility of the invention. Additionally, messages pointing to other sources of experimental results, such as lab notebook pages and data files, will add to the body of information supporting the invention’s utility.

Developing new practices

Alternative communication platforms are here to stay and will likely play an increasingly important role as their capabilities continue to be developed. As such, it is prudent for companies to provide their research and development employees with guidelines on how to use these platforms in a manner that reduces the risks of future patent invalidation. In particular, employees should learn when detailed messages are recommended and when brevity is acceptable.

Companies that use alternatives to email to discuss inventive work should also ensure they have retention policies to capture and store the data from these platforms so that it is available in the event of future patent validity challenges. This data should be preserved in a format that can still be read more than 25 years later, given that the underlying inventive work may have taken place years prior to a patent’s application date.

Finally, the potential retention of electronic communications should cause employees to be cautious about discussing the state of the art and the potential scope of patent protection, especially when such communications are not protected by legal privilege. Statements about the state of the art should remain factual, dealing only with what is disclosed. Opinions on perceived differences between the state of the art and the invention could be later used to further an allegation of non-inventiveness, particularly in situations where the context is difficult to establish. Likewise, considerations about the scope of potential patent protection are best left for specific discussions involving patent counsel and agents.



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