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“To define is to limit”

By Steve Thomas - Last updated: Thursday, February 16, 2017

It often seems this quote from Oscar Wilde’s The Picture of Dorian Gray is the mantra of inventors and patent attorneys alike when they write their patents.  It’s understandable.  People want to get the widest possible protection for their inventions and hope to cover things that are outside of their original field.  But, it runs the risk of incurring lots of unnecessary patent costs and ending up with a patent that’s relatively easy to get around.

Broadest it not always best

There seems to be a common misconception that the patent offices (in particular the United States Patent and Trademark Office – USPTO) are happy to grant any invention and then let the big companies argue about it in the courts. Anyone who has had to try and get a national filing past the USPTO examiners will tell you that this is most definitely not the case.  What’s more, they are in the driving seat – they can throw up completely irrelevant prior art against a patent and it’s up to you to defend your invention against it (and keep paying the examination fees while you do so).

It’s not personal

Sometimes it feels like its personal too – you get the feeling that the examiner is determined to get your invention thrown out.  Well, maybe they’re annoyed that you wasted their time with an opening claim that never had a chance of getting granted.

I read lots of patents and I have to advise people on whether inventions are going to infringe competitors’ prior art.  The scariest thing in the world for inventors is when they dig up an early stage patent from a competitor, usually the first PCT (Patent Cooperation Treaty) publication. They look at the first claim and crumple in horror because their competitor seems to have such a broad first claim that no one in that industry would ever be able to release a product ever again.  The novel new corkscrew patent that opens with a claim like

“1. A device for removing nominally cylindrical objects from closely fitting apertures by the application of a combination of rotational and tensile forces”

patent2Wow!  How did they manage that? They have coverage for every corkscrew ever invented and probably a claim on half of the other tools in my garage… Well, no, they don’t yet because the examiner hasn’t seen it.  If the patent does end up getting granted then you’ll find that a number of the limitations of the other claims get wrapped into claim 1.  The result is a significantly more limited invention claim that might also end up having less protection than it could have if they’d limited their claims more intelligently from the start.

OK, so we know that we’re meant to play fair – but I still want to get broad protection for my invention – so what should I do?

Keeping it real

Well, one strategy is to actually put a bit more work into understanding your invention so that you can introduce some practical limitations into your claims.

This may be worrying – if I say that my corkscrew is made of 1mm thick steel wire then my competitors can get around my patent by making their wire 2 mm thick can’t they?

Well, yes. But look at it this way.  If you make several versions of your corkscrew with different wire thicknesses you might find that anything over 1.6 mm is too difficult to get into the cork and anything below 0.7 mm gets bent too easily.  Now you know that it’s safe to limit your invention to having wire of between 0.7 mm and 1.6 mm thickness.  Your competitors can make a device outside of this range but you know that it won’t work.

OK – that is a really oversimplified example – but it’s even more important for complicated devices.

As product developers we are regularly called upon to help our clients bring new and competing products into existing markets which are already crowded with IP.  The first step is usually to come up with a concept that doesn’t infringe the live patents that they already know about.  The second step is often more difficult – They want to obtain patent protection for their new product so they also need to steer clear of all of the expired prior art that an examiner may cite against them.

Knowing where the limits are

This is where having broad interdisciplinary teams is invaluable.  When your product designers are working with engineers and scientist you really can go the extra mile.  Yes, we can produce a really good working prototype that looks stunning and has been optimised to give the best possible performance.  But, we can also analyse the key aspects of the device that allow it to work and then find out where it stops working.  It may seem like a waste of money to pay your product developers to take a perfect product and re-design it not to work – but every time you get a rejection from a patent examiner you’re facing a four or five figure bill and several months delay in getting your patent to grant.

By working out where your new product stops working we can give your patent attorney intelligent limitations to build into the claims.  This may be in the form of experimental results to add into your invention description or it may be first principles calculations and computer simulations of the system.  Either way, by doing this extra bit of work to fully understand the invention, we can ease the invention through the patent process and simultaneously give you piece of mind that your competitors attempts to get around your patent will likely fail.

It’s worth remembering that the whole philosophy of the patent is not to stop people from competing with you.  The idea is that you are rewarded with a temporary monopoly to exploit an invention in return for sharing the knowledge behind that invention with the rest of mankind.  No one wants to give away all of their secrets but you may find that working with someone who can properly understand the product that you are developing and describe it in useful detail, will make your patent process both smoother and stronger.

If you’d like to see the original corkscrew patent from 1795 you can see it here.


AuthorSteve Thomas

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