Sunday, April 15, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 6

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We continue our popular Patent FAQ series below. Portions of this series can be found on our website. Also, check out our Trademark FAQ series, which, until our new and improved website is launched, can be found only in this BLOG. And if you have not already, click the link above or below and go to our website and add it to your favorites. The new and improved site with about 75% more useful content is nearing completion and should be available within the next month or two. It will be an indispensable resource for entrepreneurs, small companies and individual inventors alike.

6. What are Claims and why are they so important?

Simply, claims are one-sentence descriptions of what the inventor considers his invention. The claims legally define the scope of an invention and inventor’s right to exclude others from making, using or selling his invention. Without question, the claims are the most important part of the patent application and subsequent patent.

The claims are also the most misunderstood part of a patent application. They are often written in patent attorney legalese and are very difficult for someone not trained in patent law to read and properly interpret. The typical inventor is unable to judge the quality of the claims provided in a patent application and if the patent attorney has not done a good job, the scope of protection of any resulting patent may be severely limited to the point where the patent has little or no value in preventing other from copying your invention. It is an unfortunate reality that many patent agents and attorneys are also not very adept at writing good legally defensible claims, whether that is because writing good claims would take too long or because of simple ignorance concerning the rapidly changing state of patent law. On the other hand, a good patent claim may provide you with a scope of protection that is greater than you contemplated before you went to see your patent attorney. Accordingly, the choice of quality patent counsel is of the utmost importance.

To give you a better understanding of claims, there are basically two types: independent claims and dependent claims. An independent claim is a complete description of the invention in and of itself. It comprises a set of elements (or limitations) that when taken together in combination defines a novel and nonobvious invention. A dependent claim is a claim that includes additional limitations that further define and limit an independent claim. Consider the example of a pencil with an eraser as provided below:

1. A writing device comprising:
(i) an elongated core comprised of a first material, the first material having a property of exfoliating when frictionally engaged with and moved across a surface;
(ii) an elongated shell comprised of a second material substantially surrounding the elongated core, the elongated shell having a first end; and
(iii) an eraser, the eraser being attached to the first end.

2. The writing device of claim 1, wherein the first material comprises graphite.

3. The writing device of claim 2, wherein the second material comprises wood.

Claim 1 is an independent claim. Claim 2 is a dependent claim that includes all of the elements of claim 1 plus the additional requirement that the first material be graphite. Accordingly, if these claims issued in a patent and a person made a wood pencil with a lead core, he would be infringing claim 1 while not infringing claim 2, because claim 2 requires that in addition to all the elements of claim 1 that the core be made of graphite. Claim 3 is dependent on claim 2 and accordingly includes all the limitations of claim 2 and claim 1 from which claim 2 depends as well as the additional limitation that the second material comprises wood. Accordingly, if a person made a mechanical pencil with a graphite core material and a plastic shell he would still be infringing claim 1 and claim 2, but he would not be infringing claim 3.

How does an inventor know if the claims that a patent attorney wrote for his invention are any good? We do not have an answer for you. Our basic response would be to question your patent attorney before you hire him. Listen to his responses. Does the attorney seem like he takes the claims portion of a patent application seriously. Ask him/her how much time it takes to draft a set of claims. If he/she indicates it can be done in a couple of hours, you can rest assured that the claims will probably not be very good. If you prospective patent attorney says he can draft an entire application for $3000 and his hourly rate is $225 or more, you can be confident he is not going to spend more than a few hours on the claims. In our opinion to draft three really good sets of claims (you can have up to three independent claims in your application for the basic filing fee) takes around 5-8 hours. And incidentally, the shorter the length of the claims, the better they are likely to be. Long claims with a lot of additional language are almost always too narrow!

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