Surprisingly Short Patent Claims in Published Applications
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course Posted: October 2, 2013 @ 7:45 am
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Generally speaking, a patent application will publish 18 months after the earliest priority date claimed. What gets published does become prior art, but the rights may never mature into an issued patent. Sometimes it can be quite interesting to look at published patent applications to get an idea about what a company or University may be working toward achieving, as Steve Brachmann does for us every week as part of our Companies We Follow series. But there are no doubt some bizarre patent applications that have published over the years, such as a method of walking through walls like a ghost. See Knowing When You Have Too Much Time on Your Hands. So you never know quite what you will get with a patent application, although the jokesters are typically kept at a minimum given the expense of filing a patent application.
Nevertheless, recently as I was talking with Paul Dougherty of The Patent Box, he indicated that he could run a search that identified the shortest patent claims. It seemed like it could be fun, and perhaps might become a new series here on IPWatchdog.com.
In terms of observations about these claims, although short some of them may be more detailed than you might think, particularly the synthetic gene that makes reference to a particular gene sequence, for example. Of course, biology and chemistry are beyond the scope of my expertise, so these claims are provided here for your consideration. Hopefully some of our regular community members, who I know do specialize in bio/chemical matters will weigh in with comments.
While the gene sequence claim is no doubt more narrow than you might think, others are almost laughably broad to the point where they have absolutely no chance of being issued. For example, there are a couple so-called omnibus claim on this list, although many were located. An omnibus claim is not allowed in the United States and basically says “I claim what is described in the specification.” That type of claiming is simply not allowed and will be summarily rejected without any meaningful, substantive examination. There are also other very short mechanical claims listed, which seem to have no chance of succeeding on a first review by the patent examiner.
The real problem is that the failure to include claims or realistic breadth means that there will be no meaningful examination provided by the examiner in the first of two substantives reviews. If such obviously overbroad claims are the ones that are in the file at the time of first examination it will be virtually impossible to obtain a patent without at least one, perhaps multiple, additional filings and amendments, all of which cost time and money for the inventor/applicant. The old saying “garbage in, garbage out” comes to mind.
If you make it simple for the patent examiner to reject your claims then you obtain no insight into the examiner’s thinking and have no idea what the best prior art is that the examiner can and will eventually use against your application. In essence, poor claiming at the outset results in prolonged prosecution that is costly and unnecessarily delays whatever the eventual outcome will be.
Now, without any further ado, what follows are some of the shortest claims Paul’s recent search uncovered. File histories available at The Patent Box for those interested.
Claim 1 from Application Serial No. 13416904
Claim 1 from Application Serial No. 13884734
A solid of pitavastatin tert-butyl ester.
Claim 1 from Application Serial No. 13824378
A synthetic gene comprising SEQ ID NO:3.
Claim 1 from Application Serial No. 13878334
An Al-based alloy sputtering target comprising Ta.
Claim 1 from Application Serial No. 13820085
A metal nanoparticle entrapped in a polymer nanocapsule.
Claim 1 from Application Serial No. 13868950, which is an omnibus claim:
A method as described in the foregoing description.
Claim 1 from Application Serial No. 13639626
A medicament, comprising a PDE4-inhibitors and an EP4 receptor antagonist.
Claim 1 from Application Serial No. 13747165
An anti-infective agent comprising copper salts of ion exchange materials.
Claim 1 from Application Serial No. 13852111
The use of an L-ribozyme for producing a pharmaceutical composition.
Claim 1 from Application Serial No. 13789648
A system as substantially shown and described herein, and equivalents thereof.
Claim 1 from Application Serial No. 13825409
A solution for making inhibitory neuron progenitors proliferate, which contains Activin A.
Claim 1 from Application Serial No. 13789311
An extended-release homeopathic composition comprising an active ingredient component and an excipient component.
Claim 1 from Application Serial No. 13868466
An electrophotographic photoreceptor, comprising:a substrate; anda photosensitive layer including gallium, oxygen and zinc.
Claim 1 from Application Serial No. 13695276
An isolated chicken antibody or binding fragment thereof that specifically binds to a nanoparticle.
Claim 1 from Application Serial No. 13747591
A hanger for an aboveground pool cover comprising:a cradle portion;a lateral support; and a hook portion.
Claim 1 from Application Serial No. 13871133
A cleanser composition suitable for application to the skin comprising linalool, hinokitiol and an alcohol.
Claim 1 from Application Serial No. 13884663
A secondary battery cell comprising:an integrated circuit having a measuring function to measure a battery status.
Claim 1 from Application Serial No. 13852100
A composite material bone screw comprising an insert, said insert at least partially embedded within said screw.
Claim 1 from Application Serial No. 13864819
A crusher, comprising:means for crushing, including a crushing element; andmeans for securing the crushing element to the crusher.
Claim 1 from Application Serial No. 13416559
An apparatus comprising:an aft frame, wherein an aft frame exit face of the aft frame has an airfoil shape.
Claim 1 from Application Serial No. 13989142
A frozen confection comprising citrus fibre, characterised in that the citrus fibre has been treated with a glycosidase enzyme.
Claim 1 from Application Serial No. 13786868
A cutting oil comprising Pinhao Manso vegetal oil in an amount of at least about 30 Wt % of the cutting oil.
Claim 1 from Application Serial No. 13413589
A method of manufacturing a detector, said method comprising using a removable double-faced adhesive film to bond a flat panel detector and a panel detector support.
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents
About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.