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January 23, 2009

Non-Obvious Claiming; Obvious?

Arguably the best-known bit of patent law: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C ยง101. Also, lamentably, commonly ignored during claims drafting.

If you know anything about patents, you know that a person is granted the right to a patent for inventing something new. Yet, many prosecutors, supposed patent experts, continue to file claims that are easily shown to be non-novel or obvious over the prior art cited in the background of their own application. Their inventor client may very well have a novel and innovative idea, yet it is not sufficiently portrayed in the claim language. For some reason, after writing a lengthy specification, prosecutors lose sight of the inventive novelty, completely erase from memory discovered prior art, and draft claims that are as broad and non-novel as possible.

But don't fret, if you've truly invented the greatest thing since sliced bread, or even just an innovative method for conversing with foliage, drafting novel non-obvious claims is as simple as dancing the two-step -

Step 1: Identify at least one novel non-obvious feature of your invention.
Step 2: Recite the novel non-obvious feature(s) in each of your independent claims.

I hope you dance. If you need a partner, contact Platinum Patents. Because we also kill patents for a living, we know how to fortify them for life.

Posted by Mr. Platinum at January 23, 2009 5:20 PM | Prosecution


Hawk, a bit banal, I know, but patentable matter has been summed up as "A difference that makes a difference". Claim the difference, and tell in your specification why that difference is significant.

So, would you care to comment on the wisdom (or otherwise) of writing in the spec something about the technical effects, that flow from the magic technical feature in your claim. I ask, because this is the area where the gulf between US drafting, and drafting as the rest of the world understands it, is greatest.

Posted by: MaxDrei at January 25, 2009 10:40 AM

That makes a lot of sense - at least for small entity inventors. In my experience, though, the strategy for large entities is quite different.

The big guys have a conscious strategy of amassing huge patent portfolios simply to have huge portfolios. They don't really care if each individual patent (or claim within a patent) is valid or defensible. They just want to have a massive pile of stuff that they can use to trade with other large entities.

When large entities engage, both sides know that most of the stuff in each portfolio is trash. But both sides also know that if they look hard enough there is enough good stuff to make the other guy sweat. To save time and money, both sides agree to cross-license the whole pile without really taking a close look at anything - -and certainly without taking anything to litigation. It's sort of a cold war, with detente motivated by mutually assured destruction should they actually attack one another.

In other words, the big guys value quantity over quality. That's where the "if in doubt, claim broadly" philosophy comes from. Big guys don't want to litigate, and it's only in litigation that the overly-broad claims get tossed out. Litigation is always a toss of the dice -- you don't know how it's going to come out, even in what ought to be cut-and-dried cases. Knowing this, the big guys would rather cross-license than litigate.

IMHO, it's the little guys who really need to follow Mr. Platinum's advice. If a little guy is going to get any financial value from a patent, he is going to have to go up against the big guys and ask for cash. The big guys know they can't play the trading game with small entities, so they unleash their litigation team to try to blast the little guy's patent into oblivion. That's where Mr. P's strategy proves its worth. The little guy needs tightly crafted claims that will stand up under an assault waged under the new rules established by recent decisions.

Posted by: Carl Strathmeyer at February 9, 2009 9:06 AM