Making patent claims easier to read
posted by Michael Abramowicz
A principal reason for the profusion of claims in individual patents is that patentees offer narrower versions of their claims. A court might invalidate a broad claim, yet accept a narrower one. And so, sometimes claim 2 will read something like this: “A method according to claim 1, further comprising …”, with the language following adding some additional feature of the invention. (The more features in a claim, the narrower the invention.) Even understanding this approach, I’ve always found that it makes patents frustrating and confusing to read.
This approach also produces a practical problem. Let’s suppose that I believe that I have patented a version of the peanut butter and jelly sandwich, but just in case a court disagrees with me, I’d like to point to ten additional features of my invention that could be used to narrow my claims. The challenge is determining how to group these. For example, claim 2 could be “The invention of claim 1, further comprising” five of the features. But I would rather add only four of the features if I can get away with it. In theory, I could have a total of 1024 (= 2^10) claims, to cover all combinations of possible additional features, but that is cumbersome and expensive.
It would be nice if one could draft patents in a kind of collapsible outline form. (If you don’t know what I mean, see this example of a collapsible outline.) One’s broadest claim would appear without any need to click on a “+” sign. Narrower versions of the claim could be viewed by clicking on “+” signs, revealing either additional elements of a claim or, indented below a particular element, narrower versions of those elements (or, recursively, of subelements).
A possible counterargument is that such cascading claims would be easy to read on a computer, not so much on paper. I’m skeptical, though. I think it would be simple to adopt typographical conventions that would make it easy to read such claims on paper, too. The elements constituting the broadest claim could be in Roman type, with everything else in italics. As with the collapsible outlines, different indent levels would specify narrower versions of claims. Dividers could be used to separate alternative means of narrowing a claim (so that one could patent the almond-butter-and-jelly sandwich and the cashew-butter-and-jelly sandwich). I would show you just what I mean, but it’s not easy with this blogging software!
Granted, this is not a patent reform priority, and the PTO would need to develop some new means of calculating application fees. But are there any substantive or stylistic reasons to oppose such a reform?
January 21, 2007 at 10:39 am
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Responses (3)
Adam - January 21, 2007 at 4:12 pm
I don’t think we should make it easier to claim combinations of elements in the way you outline. To be perjorative to the idea, patents should not be land-grabs, but disclosure of what you think is new, useful, and non-obvious. If you think combo ABDE is useful, say so; don’t say “and we’d like to protect a set of things whose use we can’t really concieve of.”
mmm - January 22, 2007 at 9:00 am
Adam, I do not think his proposal changes things. The idea of a “land grab” is essentially what the broadest claim is anyway. Everything in the “outlined” claims already are encompassed by the broad claim (that’s the point) For example:
I claim
1. A sandwich.
2. A sandwich in 1 comprising peanut butter and jelly.
The reason to do this isn’t to expand the scope, it’s to CYA. If there is invalidating material for 1 that you may not be aware of, you still can protect 2.
My hunch, however, is not that this way of claiming is difficult to read, but that there are just a number of bad writers.
In it’s own way, patent law is arcane and obscure. This has a lot to do with the proclivity of patent prosecutors to adopt language with known/litigation-tested meaning.
dak - January 22, 2007 at 12:18 pm
Foreign jurisdictions allow multiple dependent claims that depend from multitply dependent claims, for example:
1. A PB&J sandwich.
2. The PB&J sandwich of claim 1, with crunchy PB.
3. The PB&J sandwich of claim 1 or 2, with strawberry jam.
4. The PB&J sandwich of claim 1, 2 or 3, on whole wheat bread.
Under US law (35 USC 112, para. 4), claim 4 is improper, as one multiple dependent claim that depends from another. If such claims were permissible (and understood to mean that each possible combination of dependency is included), that would allow drafters to write compact claim sets that cover many independent combinations of features.
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