Let’s imagine you came up with a great idea. You hired a great patent attorney, who interviewed you in detail. After a few weeks, he emails you the patent application, and asks you to review it before he files it with the U.S. Patent and Trademark Office. What exactly are you supposed to be checking for when reading a patent? What is the simplest way to read a patent? What are the 5 most critical pitfalls in patent drafting? I’ll give you a hint: most of your time should be spent reviewing the “claims” section.
To infringe a claim or not to infringe a claim: That IS the question
Why is the claims section important? A patent claim is a “checklist” for whether someone has copied your invention (i.e. a checklist for infringement). In a patent lawsuit, the patent claims are what the court and the lawyers will be reviewing, to see who’s right. Here’s the surprise to most inventors: in order for someone to infringe your patent, they must be copying everything in a patent claim. “Fairly close copying” doesn’t count. If someone copies 50% of a patent claim, they are NOT infringing. If someone copies 75% of a patent claim, they are NOT infringing. If someone copies 90% of a patent claim, they are NOT infringing. That’s why it’s so important to get the patent claims right. The good news is that you can include multiple claims in a single patent. And someone needs to infringe only one of the claims.
How to review a patent: Tips for the inventor
When I read a patent, I start with the claim section before anything else, because it’s so important. The claims are the last section of a patent, so start from the back. I always start with reading the independent claims. (If an independent claim is not infringed, then it’s impossible that the dependent claim is infringed. Dependent claims reference a different claim; independent claims do not reference another claim. Dependent claims can be important if an independent claim is “invalidated” due to prior art.)
Here are the 5 common pitfalls to patent claims:
- Claim has multiple ‘actors’
A claim is like a checklist for infringement. But the checklist should only be applied to one infringer at a time. If the claim was a screenplay of a movie, there should only be one “actor” in this movie. This is important because if the infringement requires multiple entities, each will blame the responsibility on the others. The law makes it very difficult to sort out these ensemble infringement issues (e.g. contributory infringement or inducement). This is one of the most common pitfalls in a patent, and also the easiest mistake to correct. Make sure the claim describes the activity of a single infringer.
- Claim is unnecessarily long
A claim should be as long as it needs to be, and not any longer. Why? Because proving infringement requires that everything in the claim has been copied. A longer-than-necessary claim means that proving infringement is longer and more complicated than it needs to be. If the claim seems to have many unnecessary details in it, work with the attorney on figuring out if any of the details can be moved to a dependent claim. Ask whether someone could infringe your patent with a shorter version of the claim, and if that shorter claim still covers your invention. Make sure the claim is not excessively long.
- Claim would be invisible or undetectable in the ‘real-world’
A claim should describe things that would be visible and detectable in the ‘real-world’ (i.e. can be reverse-engineered from the product or service). It might take some hard work to detect, but the infringement shouldn’t be invisible. Examples of invisible features might be software code, or a secret manufacturing process. If you file a lawsuit for infringement, the court requires solid evidence when you file the lawsuit. Stated differently, the court will not let you file a lawsuit as a ‘fishing expedition’, in order to guess at infringement. Make sure the claim describes infringement that can be seen or detected.
- Claim uses unusual words that are not well defined somewhere in the patent
A claim should use simple plain and understandable language, whenever possible. However, there are some situations when a patent attorney must use an unusual word because it’s being used with a very specific meaning. If you don’t understand any of the words in a claim, look in the rest of the patent to see if there is an explicit definition or list of examples. If you explicitly define the words in the patent, the court will give your own definition deference. But if you don’t define it, the court will decide the meaning during the lawsuit. Make sure the claim uses understandable and well-defined language.
- Claim describes a different idea than what the inventor discussed
Every invention begins with an important idea. An inventor should work with a patent attorney to capture that idea in a patent. And a great patent attorney will provide input on how to focus the idea in the most beneficial way. But ultimately, the claim should describe the idea that the inventor and attorney have discussed. If the claim describes something different, there may have been a miscommunication along the way. Make sure the claim describes the idea that you discussed.
One of the most important jobs of an inventor is to read the patent application before it is filed. These 5 patent pitfalls are very simple to watch for, and don’t require any special legal or technical training. Spending an hour reading the patent claims will save you countless time and money in the courtroom later on. And if you make sure these 5 items are covered, most of the hard work of reading a patent has been accomplished.