Comments on: Making patent claims easier to read

By: dak

dak — Mon, 22 Jan 2007 19:18:44 +0000

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.

By: mmm

mmm — Mon, 22 Jan 2007 16:00:11 +0000

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.

By: Adam

Adam — Sun, 21 Jan 2007 23:12:44 +0000

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.”