This is the fifth post in the How to Patent an Idea: A Guide for Beginners series.
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If you read part two in the series on understanding patents, then you know that only the claim section of issued patents can be used to sue for patent infringement. If you read the third post, How To Protect Your Idea, then you have a few tips for reading patent claims.
Will My Patent Claims Protect My Product?
There is no definitive way to guarantee that your claims draft will protect your innovation, especially given the constant evolution of patent law that can change the way claims are interpreted by the courts.
To give you an example – the claims that you file in a patent application can be thought of as a starting point for negotiations with the U.S. Patent and Trademark Office (USPTO). As part of this negotiation the USPTO may require that claims be amended in a way that reduces the coverage of the original claims.
Additionally, product claims are usually considered much stronger than process claims.
One reason is that an infringing product is easier to detect when a competitor imports or offers the item for sale. Typically, you will also have a much easier time in court establishing that a competitor’s product infringes on your claims. More importantly, science limits the ability of competitors to make similar products that design around well-drafted product claims. It can be relatively easy to change the way a method is performed and still get the same benefits.
To illustrate my point – think about climbing a mountain top.
There may be many other people trying to reach that mountain top along with you, but there is only one mountain top to pursue. In this example Product Claims fence off the land at the mountain top, while Method Claims only block certain paths up the mountain. Let’s take a deeper look at the Product Claim process.
Product Claim Strategy
These are general drafting tips and strategies that you can use to ensure that your claims protect your innovation. As referenced in my blog post – The Most Common Types of Claims, think about how open-ended claims work.
A product claim should only recite the components of a product that are required:
(1) to infringe the claim and
(2) to distinguish the claim over the prior art.
This way you’ll be setting a legal trap for your competitors by ensnaring their product, and avoiding prior art. It also makes your claims difficult to design around or invalidate.
For this reason, you should consider the following key points when reviewing claims that your patent attorney has drafted:
Question 1: Are there any words or components that could be left out of your product claim?
For example,
Claim 1
A square sandwich for satisfying hunger is comprised of:
a first piece of white bread and a second piece of white bread;
a peanut butter layer;
a banana slice;
and a jelly layer,
wherein the peanut butter layer and the jelly layer are located between the
first piece of white bread and the second piece of white bread.
Ask yourself if you could leave out a banana slice or would you lose most of the benefits of your invention?
Question 2: Is each word necessary or does it add an unintended limitation?
If you read my blog How To Protect Your Idea then you might recall my reference to Martin Luther and Claim Fundamentalism. It will never matter what makes sense scientifically or what the author might have meant – the only thing that matters are the words of the claim.
Here’s another example – think about the word “square” when referring to a square sandwich. Do you only want to stop competitors from selling sandwiches that use square bread, or do you want to stop them from selling round and oblong sandwiches as well?
Think about the word “white” in “white bread.” Do you only want to stop competitors from selling sandwiches using white bread, or do you want to stop them from selling sandwiches that use whole wheat or challah bread too? When reviewing your claim, be sure to challenge each and every word.
Question 3: Looking at the claim, how would you design a competing sandwich that would not infringe the claim?
Let’s assume for a minute that your competitors are as smart as you are. Suppose the claim proposed in the above example were stripped down to the following:
Claim 1
A sandwich is comprising of:
a first bread and a second bread;
a peanut butter layer; and
a jelly layer,
wherein the peanut butter layer and the jelly layer are located between the
first bread and the second bread.
How would you design a competing sandwich that gets around this claim?
The claim could be interpreted as requiring two separate layers of material:
a peanut butter layer and a jelly layer. One way around this might be to combine the peanut butter and the jelly into a mixture, then apply them as a single layer. To avoid this you might change the claim to recite – “a filling comprising peanut butter, jelly, or a mixture thereof.”
The claim could be interpreted as requiring two pieces of bread – a first and a
second piece of bread.
What about an open-faced sandwich that has only a single slice of bread? What about a single piece of bread with peanut butter one one side and jelly on the other than folds like a taco to bring the two together? What about a tortilla-type wrap where a single piece of bread was wrapped around itself to make a peanut butter and jelly wrap with the peanut butter and jelly in separate layers that never meet until you bite into it? What about replacing the peanut butter with a different nut butter, like cashew, hazelnut, or almond butter?
How about a kit? What if instead of selling peanut butter and jelly sandwiches, your competitor decides to sell a kit that contains two slices of square white bread along with peanut butter and jelly, with no instructions for assembly.
In that case, Claim 1 couldn’t be directly asserted against your competitor because the peanut butter layer and jelly layer are not located between the first and second pieces of bread.
It would be the end user who infringes your claim by assembling the sandwich, not the kit maker. You would have to sue the end consumer for patent infringement. This could be soccer moms, children, teachers – anyone that creates a peanut butter sandwich using the kit. As you can see this isn’t a sound legal strategy and can become a headache very quickly.
When the customer can easily assemble your product, you may want to include a kit claim. A kit claim is a claim for a kit and all of its contents.
This analysis is critical. If you do not know if your claim would protect against a possible variation of your invention, ask your patent attorney.
If your current patent attorney doesn’t seem to have the time to fully commit to your claim, Childs Patent Law is here to step in and give you the help and support that you deserve.
Give us a call at (832) 621-0353. It won’t cost you a thing, and we’re available Monday thru Friday to answer your questions.
To see how to protect your method by using Method Claims, the next blog in the series How to Patent an Idea: A Guide for Beginners.