BLAW 2010 Patent Project Part 1I

Why do we have patent laws?

Description and Example At the end of every patent application or issued patent is a section beginning with the words “I Claim:” or “We Claim:” followed by a numbered list. Each number in the list is a separate claim, and each describes an invention that the inventor(s) claims to be his or her own and entitled to patent protection. The claims define the invention that is or will be protected by your patent. When determining whether someone has infringed your patent, a court will look to the claims of your patent and see if the allegedly infringing product or process falls within the scope of one of the claims.

A claim has 3 parts, a preamble, a transitional phrase, and a body. For purposes of illustration, here is an example claim: 1. A writing implement for use on paper, comprising a hexagonal wooden shaft with a central cylindrical hole, graphite filling the central cylindrical hole in the hexagonal wooden shaft, and an eraser on one end of the hexagonal wooden shaft. THree Parts

The Preamble In this example, the preamble is “A writing implement for use on paper”. This is an introduction and the content is generally not essential. It is best used to frame the invention in an Examiner’s mind. This preamble could have been “A writing implement” or even just “an apparatus.” It generally does not affect whether an application is found to be patentable or whether a patent is found to be infringed.

The Transitional Phrase The transitional phrase in the example claim is “comprising.” It transitions between the preamble and the body of the claim and affects everything that comes after it. By far the most commonly used transitional phrase is “comprising,” which means, essentially, “including.” In other words, the claimed invention must have the things in the body of the claim, but it is not limited to those things- it can also have additional unlisted elements.

The Transitional Phrase So in the example, the invention is ANY writing implement that has a shaft with graphite in its cylindrical hole and an eraser on one end. It doesn’t matter what else the writing implement has- it still falls under the claim. Even if the writing implement is also magical and dances and casts spells, it still is encompassed by the claim. This is known as “open-ended” claim language. In contrast, the transitional phrase “consisting of” is close- ended claim language and limits the claimed invention to exactly the elements listed in its body- no more, no less.

The Body The body is the “meat” of the claim. It teaches all the elements that must be present to make up the invention. Each claim is examined on its own for patentability, so each claim must contain elements that satisfy the requirements of patentability, including novelty and nonobviousness. The goal of an inventor should be to make the claims as broad as possible while still including all the elements necessary to make it patentable.

Claim Scope Take a look at the example claim. Are there ways in which it is unnecessarily restrictive? Does it contain more than is needed for the claimed invention to be patentable? Of course, pencils have already been invented, so this claim would not, in the present day, meet the requirements for patentability at all. Additional (novel and nonobvious) elements would have to be added to the claim for it to be patentable- the claim would have to be made narrower in scope.

Claim Scope But let’s pretend it’s 100 AD and pencils have not been invented. No problem with novelty or nonobviousness. Is the claim as broad as it could be? Probably not. Why does the shaft have to be hexagonal? A cylindrical or triangular shaft would probably work too, so why exclude them? Note that with the original example claim, a pencil with a triangular shaft would not fall under the claim and would not infringe a patent that issued with only that claim, because it would not contain a hexagonal shaft.

Claim Scope So to improve the claim, we might just remove the word “hexagonal,” since the patentability of the claim will not turn on the shape of the shaft.

BUT... But, what if you’re not the first person to invent a pencil-like writing instrument? What if other people are inventing new types of writing implements every day? You’re not sure whether they have, but you think your hexagonal design is superior to a cylindrical shaft design because it gives a better grip. Should you include “hexagonal” or not? It may be vital to patentability, or it may not be necessary. You don’t want to limit yourself to hexagonal shafts if you don’t have to.

SOLUTION The solution is to write two claims. The first one reads just like the example claim, except the word “hexagonal” is removed. The second one reads as follows: 2. The writing implement of claim 1, wherein the wooden shaft is hexagonal.

Dependent CLaims This is called a “dependent” claim, because it “depends” from claim 1- it requires all the elements of claim 1. But, it also adds an additional element- that the shaft must be hexagonal. This covers you both ways. If no one has invented a round-shafted pencil and you don’t need “hexagonal” to get a patent, you have a claim without it, the Examiner will allow both claims, and your patent will cover pencils with all differently shaped shafts. But what if someone else did invent a pencil just like yours, but with a round shaft, and filed a patent application for it?

CLAIM 2 Well, the Examiner may find this round-pencil invention in his or her search, but not find any hexagonal pencils. Then, the Examiner would reject claim 1 as lacking novelty or being obvious, in light of the round pencil. But the Examiner would allow claim 2. Although you can amend your claims during prosecution, if you had not originally included claim 2, the Examiner would not have searched for a hexagonal pencil. After claim 1 was rejected, you still would not know if a claim like claim 2 would be allowed.

Claim 2 is even more important to have if the Examiner does not find the round-pencil invention. What happens when a big company steals your pencil idea and sells exact copies of your hexagonal pencils? You sue, but the company raises the issue of this earlier invention that it has found (after spending big bucks on a thorough search). This earlier invention invalidates your claim 1. Fortunately for you, you have claim 2, which is not invalidated, and which is also infringed. So you can still win your lawsuit and collect damages, thank to the inclusion of claim 2.

independent CLAIMS That is why most applications are drafted with one or more “independent” claims that include the minimum possible subject matter that may be patentable. Then they include a series of “dependent” claims, each of which adds more and more elements, narrowing the scope of each claim, but increasing the probability of patentability.

Example 3. The writing implement of claim 1, wherein the erasor is made of a rubber compound. 4. The writing implement of claim 3, wherein the erasor is made of india rubber. 5. The writing implement of claim 4, further comprising a sleeve that attaches the erasor to the wooden shaft. 6. The writing implement of claim 5, wherein the sleeve partially surrounds the erasor and an end of the wooden shaft. 7. The writing implement of claim 6, wherein the sleeve is made of metal. 8. The writing implement of claim 7, wherein the sleeve is corrugated.