There are many articles on what can be protected by a patent in Quantum technology.
However, here we briefly look at some of the pitfalls in preparing the patent application for quantum technology.
To obtain a patent it is necessary to show that the claims of the patent define something that is new and non-obvious. There are also requirements for the description of a patent application. In Europe, the patent application must “disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. Thus, some of requirements to get a patent are quite subjective, such as whether the invention is not-obvious and also whether the disclosure of the invention is sufficient.
Patents in the field of quantum technology therefore present specific challenges.
This is a rapidly evolving field, and the patent office examiners are learning where the boundaries lie when making subjective assessments. The test for obviousness and the sufficiency of the description are based on the knowledge of a “person skilled in the art”. Whereas the knowledge and aptitude of this person is often a point of contention in patent prosecution, the situation is exacerbated in an emerging technology area where there can be little guidance from existing case law.
Also, in an emerging technology area, the meaning of terms used in the art can be still be evolving. For example, does the term measurement device independent (MDI) QKD also cover Twin-field (TF) QKD or are MDI-QKD and TF-QKD alternatives? Scientific papers in this area use the terms as alternatives, but some suggest that one is a subset of the other. Also, specialist terms sometimes do not translate correctly. An example of this is the term “ultrafine particle” which was often used in Asia whereas the term “nanoparticle” was generally used in the West.
To mitigate some of these problems, the description can be drafted anticipating these issues and the following two guides should be kept in mind.
1) The description needs to explain the invention so that it can be understood by one skilled in the art. It is safer to underestimate rather than over-estimate the knowledge and aptitude of a person skilled in the art. It is helpful to err on the side of explaining more basic principles, operation of basic equipment etc.
2) The description needs to be a reservoir for amendments - The Examiner may argue that some of the terms in the claims are not clear. For this reason, it is important to have alternatives to the terms used in the description and explanations. Also, using a variety of different terms in the description also helps to avoid translations issues.
Whereas a scientific paper can form part of the description of a patent application, it should not be the entire description as it unlikely to meet the above two requirements on its own.
There are many pitfalls to the preparation of the description and it is not just merely a description of the invention. Patent Attorneys working in the specialist area of quantum technology are up to date with the current practices of the various national and regional patent offices and are able to advise on the preparation of the entire patent application.
[This article first appeared on Dead Cat Live Cat here]
