ROBERT E. MALM, Ph.D
ATTORNEY AT LAW
CLAIMCRAFTED™ PATENT APPLICATIONS
The legal specification of an invention is provided by "claims". As specified in §1.75 of the Patent Rules:
"Pointing out . . . the subject matter which the applicant regards as his invention or discovery" is accomplished by identifying the features of the invention.
Quality claims are those written to include all possible embodiments of an invention except those disclosed in the prior art. CLAIMCRAFTINGTM is a process I use for writing quality claims. The CLAIMCRAFTINGTM process provides the means for claiming the invention rather than just an embodiment of the invention.
To illustrate the process, we go back to the time when the only things available for driving nails into wood were rocks. Imagine the inventor of the hammer showing his patent attorney an embodiment of his invention consisting of a solid iron cylinder having a hole which has received one end of wooden handle, the handle being retained in the hole by the effect of a wedge driven into the end of the handle. The patent attorney examines the embodiment and lists its features in a hierarchical fashion:
The first-level indentations correspond to the broadest specification of the features of the invention. The second-level indentations add further detail to the features specified at the first-level indentations. The third-level indentations add further detail to the features specified at the second-level indentations. There could be any number of indentation levels. It is the judgment of the patent attorney as to how many are necessary to protect the inventor's invention.
A typical patent attorney would probably claim the inventor's hammer broadly by an independent claim such as:
If the patent attorney were concerned about some creative individual having already made a hammer by tying a stick to a rock, he might write dependant claims based on the indented features of the invention such as:
A typical patent attorney might, at this point, consider his claim-writing job done.
This approach to writing claims might be described as claiming the embodiment since the features claimed are readily identifiable from the embodiment. The claiming-the-embodiment approach does not require much thought, can be done quickly, and impresses the client because the claims mirror so closely what the client believes is his invention.
The problem with the claiming-the-embodiment approach is that the inventor may not receive the protection of his invention to which he is entitled.
The first rule of CLAIMCRAFTINGTM, the process by which I arrive at a CLAIMCRAFTEDTM patent application, is:
The first step in CLAIMCRAFTINGTM is to identify the functions performed by the embodiment in practicing the invention. I return to my "hammer" example. The inventor and most patent attorneys would probably identify the highest-ranking function in the hierarchy of functions performed by a hammer as:
After all, the first sentence out of the inventor's mouth when he met with his patent attorney was probably: "I have invented a device for driving a nail into wood." Hopefully, many patent attorneys would recognize this function as being unnecessarily limiting and suggest the following higher-ranking function:
The problem a typical patent attorney would have at this point would be to identify the lower-ranking functions in the hierarchy of functions. Most patent attorneys would be unable to do so, even for a simple structure like a hammer.
If patent attorneys were as well-grounded in physics as they presumably are in patent law, they would recognize the necessity of expressing the functional requirements in terms that are scientifically meaningful. What must a hammer do to accomplish the task of "driving a first object into a second object"? The function that the hammer must perform is:
With this definition of the highest-ranking function of the hammer, a world of possibilities opens up and we can derive an appropriate hierarchy of functions such as the one below:
It should be noted that there is only one highest-ranking function. If there are more than one, they are either redundant or there is a higher-ranking function that includes them all.
A patent attorney, with this hierarchical outline before him, might write the following independent claim corresponding to the highest-ranking function:
The patent attorney should also consider including dependent claims corresponding to the lower-ranking functions in the hierarchy:
7. The process of claim 6 wherein the other form is potential energy.
8. The process of claim 7 wherein the other form is the potential energy of a compressed spring.
9. The process of claim 7 wherein the other form is the potential energy of a charged capacitor.
10. The process of claim 7 wherein the other form is the potential energy of a charged battery.
11. The process of claim 6 wherein the other form is kinetic energy.
12. The process of claim 11 wherein the other form is the kinetic energy of a mass.
13. The process of claim 11 wherein the other form is the kinetic energy of a rotating flywheel.
14. The process of claim 6 wherein the other form is the work associated with a force acting over a distance.
15. The process of claim 1 comprising the step:
Note the abundance of claims that could be written for a hammer by using the CLAIMCRAFTINGTM process. And even the dependent CLAIMCRAFTEDTM claims are much broader than any of the "embodiment" claims. Claims 3 and 12 are functional specifications of the hammer embodiment discussed in detail above. The other claims pertain to other embodiments of a hammer.
I am not suggesting that "embodiment" claims be abandoned in favor of "function" claims. What I do advocate is NOT abandoning "function" claims in favor of "embodiment" claims.
© 2002 Robert Malm