The Key to Drafting an Excellent Patent – Alternatives
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Apr 1, 2011 @ 4:15 pm
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I hear all the time from inventors that they don’t understand why I want to know about various alternatives and optional features that could be a part of their invention. After all, the invention they have created is one of a kind excellent and no one in their right mind would want to change it one bit! OK — you keep thinking that if you like, but it is that thinking that leads inventors to get unnecessarily narrow patents.
There is nothing inherently wrong with a narrow patent, as long as you know that is what you are getting, but if there is more that could be available to you why would you ever settle for a narrow patent? Why would you settle for a patent that might not be narrow but which is more narrow than could have been obtained? If narrow is all that is available and you accept that, fine. But in most cases when inventors represent themselves or settle for the extreme discount patents sold online by dubious patent mills there is far more available than obtained, and that is a tragedy.
There are a number of old litigation sayings that basically say that in order to get people to believe you and understand you need to tell them three times. Tell them what you are going to tell them, tell them and then remind them that you told them. There are advertising corollaries, and teaching techniques the rely on the same thing. So based on the belief that repetition with subtle differences can make a difference, what follows are three different ways to describe why it is critically important to describe variations to your invention with the fullest and most complete description possible.
The First Articulation: Describe Anything That Works
The trick with drafting a patent application is to describe anything that will work, no matter how crude, no matter how defective. You want to capture everything. This is because the only power of a patent is to prevent others from doing what is covered in the patent. If you are making money there will be others who want to do what you are doing. Your patent can prevent them from doing what you are doing, but a strong patent will also prevent would-be-competitors from doing anything that is close.
You want to prevent would-be-competitors from directly competing and from competing with substitutes, even substitutes that are inferior. Think of the patent as creating a wall around your invention. You do not have to use all of what you capture/define in your patent application, but having it will create the barrier to entry that can insulate you from copyists.
The Second Articulation: How Will Others Try and Rip You Off?
It is absolutely essential to do everything you can not to unnecessarily limit yourself as you describe your invention. Always ask yourself how someone could essentially copy without literally copying, because if you are successful that is what they are going to try and do.
Most businesses are not interested in getting involved in activities that are infringing. While it is certainly true that there are many businesses that don’t understand about patents or don’t care, so they don’t make inquiries to see whether they will be infringing. But for those that are trying to stay clear of infringement, they will attempt to understand what you have done and then figure out how to copy what you are doing without infringing. Sometimes people will even look for patents to see what they can learn and then modify what is being done so it isn’t infringing. Then you wind up competing virtually against yourself with no recourse because you didn’t describe everything you could.
The point here is that if someone were to make minor changes and not copy your invention exactly they would be “essentially copying” your invention, but not infringing your patent rights. So in your disclosure describe not only what you are doing and what you have specifically invented, but also disclose all those alternatives that you can think of. Spend some time trying to think in devious ways and try and engineer around your own invention and then describe everything in the patent application. This will provide the broadest protection, which will in turn provide the greatest and strongest disclosure.
The Third Articulation: Remember What the Patent Grant Gives You
By definition a patent gives you the right to prevent others from making, using, selling, offering for sale and importing into the U.S. It is absolutely critical to remember that the patent does not give you the right to do anything! Failing to understand that the patent does not give you a right to actually do anything is a huge mistake inventors make, and probably a bit part of why they resist at every turn describing the full glory of what they have invented, or could have invented with only a modicum of creativity and imagination.
Because the patent does not define any positive right to do anything it does not need to be limited to the versions you are going to use. The patent is not like a business license that limits you to operate doing a certain thing at a certain time or place, but rather it gives you the ability to exclude others, but you can only exclude others with respect to what you have ultimately claimed. That being the case you want to make sure you cover what you want to do, but also cover other alternatives.
The claims are what define the exclusive right you obtain with your patent, but the claims are a subset of the disclosure. An inadequately narrow disclosure produces ridiculously narrow claims, it is just that simple. So when you do your patent application yourself or pay $1,000 to $1,500 for a complete nonprovisional patent application, what gets cut is the disclosure. There just isn’t enough time to do everything that could be done, so the applications get done cutting a lot of corners.
Hopefully the same lesson shines through in each of the above articulations of the rule. It is indeed true that the strength of any patent is based on the number of alternatives that are disclosed, and how specifically the alternatives are described. You want to describe everything you can, in broad general terms and in highly specific terms, and everything in between.
You want to disclose everything that will work, no matter how crudely. The idea is to not only disclose what you want to do, but disclose what others might want to do. This will give you a buffer zone and make it much more difficult for others to provide substitutes. Even if the substitutes would be inferior for some reason, you still want to make sure competitors cannot get close because many times an inferior product is a workable substitute for consumers. If you have any doubt just look at the knock-off market place and you will see that there is a big market for products that are known to be counterfeits and known to be inferior.
For goodness sake, please don’t limit yourself any more than you have to, and don’t make succeeding any more difficult than it needs to be. Good luck and happy inventing!
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.