Patent purity of high-tech complexes
Almost all high-tech complexes comprise a large number of components. In some cases, such components may be patented within the composition of the complexes. However, it is more advisable to patent them as separate devices, because it is the easiest way to ensure patent purity. Naturally, it makes little sense to patent the components right away in all the countries where they may sell, but the Russian patenting alone may already provide a lot of information on the invention’s novelty in the world. According to the classification given in , such inventions belong to the first type. Some aspects of patenting such components have already been discussed in .
Next, the discussion is about the specifics of patenting the components of various complexity in high-tech assemblies. At first glance, it may seem easy to patent an entire complex, but frequently it is not so. As a rule, developers put all their efforts to develop a complex, as a whole, and its novelty is ensured by some new inventive features, meanwhile the components are treated with less care and lower patent-related costs.
Let us take an example associated with the vibratory separation function in scanning probe microscopes (SPM) used in high vacuum (detailed description was provided in ). It is known that in the absence of external resistance (i.e. in a vacuum chamber) the quality factor of oscillatory systems increases, i.e., an item suspended on springs inside a vacuum chamber will oscillate for a long time. However, if this item is an SPM, the main work cannot start until the end of the oscillations. This problem can be resolved by using Foucault currents, which appear in a conductor when it crosses magnetic power lines, interacts with them and slows down the moving conductor. When a Russian company created the main unit, the use of this phenomenon had already been described in many sources, so the firm did not plan to patent it. Yet, when the device was shipped to the customer, IBM sent a package with a handful of SPM patents and a query as to whether the Russian firm does not breach the patents. The first patent in this heap was US4605194 for vibratory separation (magnetic damper) using Foucault currents, which was the exactly same process as used in the Russian invention. Furthermore, the patent applicants, G. Binnig and G. Rohrer, were Nobel laureates for inventing a scanning tunneling microscope.
The inventors managed to work around the IBM patent with almost no design changes: the magnets 1 and 2 (fig. 1) fixed to the base (not shown) were placed in such a way as to overlap the magnetic field lines of the adjacent magnet pairs, so the conductor 3, which is suspended on springs (not shown), stopped moving even more effectively in the magnetic field and this method was protected by the Russian patent RU2244178.
To avoid the described situation, it is necessary, whenever possible, to patent the components of innovations. Below are some typical approaches to this issue.
The first approach is suitable if a component has long been used in the industry and its different variations have been protected by numerous patents, which are very difficult to avoid. The solution is to assign a new additional function to the known module, even if it is yet highly demanded.
Let us see how this approach is used in relation to a piezo-scanner providing a coordinate-based scan of the probe and sample relative to each other. This example has already be described in [2, 4], but because of its relevance, we will have a more attentive look at it. One of the additional functions of the piezo-scanner is associated with the rotation of its end around its axis while moving in its 2D (or XY) plane, which may be useful in work with a ruler or a matrix of probes for their angle alignment with an array of elements. The solution was found thanks to the fact the piezo-tube 1 (fig. 2) performed 2D movement divided by four perforated grooves 2. Each fragment 3 formed two internal electrodes 4 and two outer electrodes 5. In which case, each fragment 3 becomes configured for additional bending in the plane close to its cylindrical surface. When all the four fragments 3 are equally used, they all bend synchronously (each in its own "plane"), and the end of the piezo-tube 1 rotates around its axis.
Conventionally, the piezo-tube 1 is bent for moving its end in the XY plane when respective voltages are applied to the electrodes, and this motion speeds up by reducing the impact of the neighboring fragment pairs on each other. In other words, in addition to the new effect (rotation of the tube end around its axis), the basic characteristics of the entire device (2D motion range) become improved. A piezo-scanner is one of the most important elements in an SPM; therefore, competitors will first pay attention to this element. Accordingly, each SPM manufacturer should pay much attention to patenting its various modifications.
The approach of adding a function has been used repeatedly to work around valid patents. For example, the RU2169401 patent protected a "thermally compensated scanner", which comprised a heater, cryostat, thermal compensators, cold conductors, and thermocouples. This product is a complex device, which is, as mentioned in , usually patented without problems. Another piezo-scanner (Patent RU2297078) is even further away from the conventional piezo-tube scheme, providing increased motion ranges by using round piezo-bimorphs, cinematically unbound in three dimensions.
However, even with a high degree of component protection, it is sometimes possible to patent minor upgrades for existing solutions. When there are a hundred patents for a certain component, it is not prohibited to obtain a hundred-first patent; it is quite contrary, in fact. It is even more so, when the basic prototypes do not have enough umbrella characteristics and have numerous distinguishing features under independent claims. For example, the multi-tube piezo scanner was protected by Patent RU2199171 due to the specifics of connecting its constituent tubes. Considering that the connection point has an area of few tenths of a millimeter, it is almost impossible for a third-party expert to understand the nature of the solutions, and such patents may be misleading and concealing the knowhow. In Patent RU2282258, the piezo-scanner has motion stoppers in all the axes to enhance the service life of the tubes. At the same time, these stoppers provided with a viscous substance reduce the quality factor of the device, which is a very important characteristic in a piezo-scanner. In Patent RU2227363, the well-known multi-tube piezo-scanner design was patented thanks to differing options of electrical connection of the electrodes, which greatly increased its functionality. These patents were obtained in spite of the generally well-known characteristics due to material improvement in their technical results.
If material improvement in technical results is achieved, it is possible to patent even small upgrades in simple devices. "Quartz resonator based magnetic probe" (Patent RU2208763) with the magnetic needles 1 and 4 (fig. 3) was an upgrade of the single-needle quartz resonator. In this invention, the magnetization of the needles 1 and 4 provides their clear coordinate-based self-adjustment in the process of attachment to levers 2 and 5. Later, RU2208763 was upgraded by Patent RU2297054 (fig.4) with the inclusion of an elastic element 8 connected to the needles 6, 7, and regulating the quality factor of the resonator.
Yet, the super-objective of controlling the probe with its simultaneous macro-motion was fulfilled by a piezo-tube, which was used instead of the quartz resonator (Patent RU2300150 "Piezo-ceramic tube based probe for scanning probe microscope").
Patenting the next type of components or complex design solutions is not hard at all, because usually the independent claim includes a large number of distinctive features, which are difficult even for patent experts to "kill" one by one. Of course, these patents have a lower degree of protection, and they are easy to work around by deleting one of the features in the independent claim. However, they do provide patent purity for the innovation. Examples are Patent RU2452065 "Electric detachable vacuum connector for sealing physical devices" and Patent RU2533075 "Sample orientation device for a nanotech complex".
Patenting is even more simplified if some complex components solve a rather complicated objective, because the design description may be supplemented with additional original features. Examples of such patents are "Ultrahigh vacuum transport system" (RU2380785), "Device for maintaining the item temperature for scanning probe microscopes" (RU2244948), "Cryogenic input" (RU2380785).
Patenting of structurally simple components that solve highly complex tasks was described in  using the examples of Patents RU2208845 "Conductive probe carrier" and RU2218562 "Heater device for scanning probe microscope". It should be noted that these patents were obtained in the early 2000-s, and because the requirements have become much stricter since that time, now the patent claims should be more umbrella type. For example, the dependent features of conductive probe carrier (fig. 5) may include various embodiments of U-shaped springs and different cross section profiles of the needle 4. It would be advisable for the device of sample direct heating (fig. 6) to include different shape surfaces of the holder 2, which is in contact with the sample 1, and different shape contact surfaces of the electrode 4.
Another group of components is modules of precision mechanics, for example, coordinate tables and drives. They can be divided into "common" and "uncommon" items. The "common" ones use conventional drives, whereas the "uncommon" ones respectively use non-conventional drives. The "common" ones are more difficult to patent because their drives may have been known for hundreds of years. To ensure patent purity in this case, it is advisable to find their closest prototypes in old monographs, manuals, and even in the medieval texts or expired patents. If someone files patent complaints on such product, it will be possible to refer to the known solutions with an earlier priority, and to threaten the opponent with depriving him of the patent on this basis.
Patenting is easier for "uncommon" coordinate tables and drives by using non-standard components. Here is an example. In a coordinate table (fig. 7), the base 1 is provided with a three-axis piezoelectric element 2, which fixes the first carriage 3. It has ball bearings 4 fixing the second carriage 5, and the pinpoint 6 fixes the third carriage 7. The base 1 has the first magnet 8 attached to it, the second carriage 5 has the second magnet 9 and the third carriage 7 is made of magnetic material. In this example, the operation conditions are adapted to the small size of the coordinate table, which requires using three-axis piezoelectric element 2, and the new objectives are defined in the context of the need for aligned installation of the third carriage 7 and its motion. This problem was resolved by using magnets 8 and 9, which provided the motion of the carriage 5 along the supports 4 and set the exact position of the carriage 7 on the pinpoints 6. The detailed description of this table was already provided in . The main factor that helped to obtain Patent RU2254640 was the use of three-axis piezoelectric element in the form of a piezo-ceramic tube 2, which simultaneously performed 2D motion of the third carriage 7 and the inertial motion of the second carriage 5. Some original piezo-inertial motion solutions are also described in Patents RU2347300, RU2465712 and RU2297072 "Inertial step motor", and in Patent RU2377620 "Device for sample displacement".
It should be noted that patented components might include smaller components patented by somebody else, which may cast doubts on the patent purity of the entire assembly. In this case, the inventor should try to find such solutions in the publicly available literature or expired patents, in order to avoid producing an infinite number of new patents. For example, when using a functional piezoelectric element in the form of a tube, the inventor could refer to the USSR copyright certificate No. 775792 of 1978.
Even if the patent purity of a device is ensured by patenting its basic embodiment and all its components, the owners of prototypes still may complain, if all the features of their independent claim were used. To avoid this, it is advisable to eliminate at least one feature from the independent claim of the prototype, if possible, when drafting the restrictive parts of the claims. In this case, according to Article 1358.3 in Part 4 of the Russian Civil Code, it will be accepted that the prototype has not been used as an invention in this new solution.
The second approach to protect oneself from the complaints by the prototype owners is to use one’s own previous patents as prototypes. For example, a Russian company used its own patent RU2124251 for a radial probe as a prototype for a disk probe in its patent RU2244256. In the device (fig. 8), the probes 1 are fixed to the disk 2 mounted on the base 3 which is rotatable relative to the center O.
Later on, the same Patent RU2244256 served as a prototype for a multi-probe module in Patent RU2306524. The probe 1 (fig. 9) therein is attached to the flat springs 2 in the housing 3. The probe 1 is risen when it is in contact with the pusher 4 fixed to the rotating disc 5. Still later on, Patent RU2244256 became a prototype for a multi-probe module protected by Patent RU2538412.
Thus, to ensure patent purity for products the following is recommended:
•To obtain patents in the countries of sales for the main modules and technologies of the sold products.
•To identify all the components that potentially have inventive features in these products
•To oblige the suppliers of components to submit either their patents for the components (in consideration of the countries of sales) or other data proving that the components can be freely used.
•To find descriptions of the inventor’s own components in publicly available literature or in expired patents.
•If the inventor is not able to follow the previous recommendation, then the inventor should at least file a Russian application for his own components. When examining these applications, the patent experts will conduct a patent search through all available sources in all countries, on which basis one can obtain more information on the risks in the territory of sales.
•If there are risks to fall within the scope of foreign patents in the territory of sales, it is advisable for the inventor to modify the design of components developed by him.
•When patenting components developed by the inventor as prototypes, it is advisable for the inventor to make maximum use of his own patents.