The more I invent the less I have - huh?

[LaplacesDemon]

I'm confused. I'm writing my claims and I'm finding that the more capabilities I give my invention the less I actually own. I've taken something that people have struggled with for years trying to figure out and figured out a way to fix the problem. In fact I can get the problem to perform like a trained seal. I can make it do back flips, jump through a flaming hoop, sit up and beg and anything else you'd like to see it do. Then it lays its head on my lap and begs for a Scooby snack. Then I get to page 9/9 in the NOLO book and it says

The less you recite in a claim - that is, the fewer the elements you recite - the broader the claims will be. This seeming paradox exists because an accused infringing device must have all the elements of the claim to infringe. Thus the fewer the elements specified in a claim, the fewer the elements an accused infringing device needs to have to infringe... To claim more you should recite less.

Well, sure, I could put fewer elements into the invention but then it won't do as much now will it? I suppose the ultimate goal is to turn in a blank sheet of paper and declare myself king of the world.

I'm guessing the way around this is to have more independent claims is that correct? I'm looking on the USPTO price page and I see it says more than 3 independent claims $110 for a small entity. Is that $110 per incident or just more than 3? Am I right in thinking that's how the problem is solved? Just break it up into a larger number of smaller claims?

[Robert K S]

I suppose the ultimate goal is to turn in a blank sheet of paper and declare myself king of the world.

In the patent world, indeed, that would be goal.  In general, the shorter your claim, the more it is likely to cover.  Claims that run on for 200 words are unlikely to be found to be anticipated in prosecution, but are also unlikely to ever be literally infringed once the patent has issued.  The process of prosecution is often, though not always, about finding a midpoint between the two extremes that the inventor can live with and the examiner will accept.

I'm guessing the way around this is to have more independent claims is that correct?

Is there some reason why you can't get the job done with dependent claims?  You get, with the basic fee, 20 claims total, 3 of them being independent claims.  In our practice, we usually try to fill those up and call it a day.  The cost-benefit of fees for extra claims usually doesn't work out, especially since the first response of an examiner is to try to knock out claims through restriction.  If we have more to cover after we get those first claims allowed, we'll go back and do that through a continuation.

If you're confused about these basic issues of claiming, you're strongly advised to seek experienced counsel.  You risk ending up with an expensive but worthless patent if you pursue claims that were written without an understanding of how claims ought to be written.

[LaplacesDemon]

That sounds like good common sense advice Robert.




Obviously you don't know me very well, lol.


Part of the problem is that I actually have several inventions that are wrapped around a core concept. USPTO may well come back and tell me that I have to split it up. I have what I think is a very well written document (at least from the technical perspective) including a couple of claims that I think are perfect. Or at least they will be if they're approved. But they don't capture all of the invention's capabilities. What I may end up doing is submitting it with a few of the claims written as best I can but not as good as I'd like  and then straighten it out later. That way I'll at least have a filing date and go from there. That will give me time to get a better handle on things. I may yet end up hiring an attorney but being on disability I have far more time than money.

[khazzah]

Well, sure, I could put fewer elements into the invention but then it won't do as much now will it?

Why do you want the invention to "do a lot" ? Are you concerned that a product with features A, B and C will be more valuable because it "does more" , so that no one would want to build a product with only A?

Doesn't matter. If someone builds a product with more, e.g., A+B+C, and you have a patent to feature A, then the product infringes.

But [the existing claims] don't capture all of the invention's capabilities.

So? You want a claim that captures one novel feature. Any more, and you've made it narrower than necessary. Why do you want to give an infringer a way out by choosing not to include one of those features that you've put in your claim?

If you have multiple novel features, put them in different claims. If it's the combination of features that *makes* it novel/nonobvious, when then, it's not a novel feature, as I'm using the term.

Claims with different novel features do increase the risk of restriction -- the Examiner forcing you to file additional applications because you're only allowed one "invention" per claim. But even supposing you can't afford to file additional applications, why do you think a patent to A (one of the claim sets to which you are restricted) less valuable than a patent to A+B+C+D (no restriction because you have only one invention) ?

If B, C, and D are novel/nonobvious, you might put them in dependent claims. That way, if your claim to A gets invalidated (e.g., accused infringer finds better prior art than the Examiner), perhaps a claim to A+B or A+B+C or A+B+C+D will stand.

[JimIvey]

Well, sure, I could put fewer elements into the invention but then it won't do as much now will it? I suppose the ultimate goal is to turn in a blank sheet of paper and declare myself king of the world.

You've got some good answers already, but I'll try to distill it down even further.

Don't think of the claims as defining every facet of your clever innovation but rather think of claims as describing what others must make, use, sell, import to infringe your patent.  You'd like others to have less things required of them before they owe you money.

Regards.

[LaplacesDemon]

One of the things I would like my patent to achieve is to establish that the way my invention does what it does doesn't violate someone else's patent.

Let's say I have invented a way to get to the top of a mountain. Now I can say that my invention is to get to 500 feet. Getting to 500 feet is good. Nice view up there.

But I want to show that where the other guy got to 800 feet by climbing up the face I got to 1200 feet by going around to the back side of the mountain which he didn't think to do. That way when he's standing down below accusing me of violating his turf I already have documentation that proves I didn't.

That way when I approach an investor and he says, "Doesn't someone else own that?" I can say "Not according to the USPTO."

That's the way I see it anyway. Which doesn't mean its right. Everyone here probably knows more about it than I do. I've got the basics of my ideas down to 3 independent claims and some dependent claims that don't give up much territory if any at all. Mostly my dep claims are just definitions of the indy claims. And the rest are designed to get more and more specific about what I actually want. And I've given myself two ways to get around what I consider to be the biggest hurdle.

But those only establish so much. I'm thinking of buying another independent claim showing me at the top of the mountain with a big grin on my face. Is that a smart decision? Or does it only risk the chance that the examiner might say its a violation setting a precedent that's worse than if I hadn't climbed the hill at all?

I spelled out so much in my specs that I wasn't sure myself which direction I would take the claims in till I got there. The idea being that whatever I don't use would therefore fall into public domain so anyone claiming to improve the idea with any of those concepts gets determined as being the O word. And its had the added benefit of muddying the waters of the specs.

I've got to get this done this week to hang on to my provisional filing date. Just putting some final touches on it. Any advice you all can give me will be much appreciated.

[Robert K S]

Seek experienced counsel immediately. :-)

[JimIvey]

One of the things I would like my patent to achieve is to establish that the way my invention does what it does doesn't violate someone else's patent.

Patents don't do that.  Your patent claims should not cover any prior devices/systems or any obvious variations thereof, but that's it. 

A patent will not protect you from allegations that you infringe someone else's patent.  So, don't even try to use it for that.

That way when he's standing down below accusing me of violating his turf I already have documentation that proves I didn't.

That way when I approach an investor and he says, "Doesn't someone else own that?" I can say "Not according to the USPTO."

The Patent Office doesn't check to see if your intended implementation of your invention infringes anyone else's patent. 

Patents don't infringe each other or avoid infringing each other.  Acts of infringement include only making, using, selling, and importing -- and don't include patenting.  A patent is a right to exclude and no more.  Using it for something else generally isn't a good idea.

Regards.

[LaplacesDemon]

I guess what's confusing me is that if people are only patenting that portion of an invention that is required to block others from producing a device how do I know that remaining portions of what I want to do don't infringe?

I mean I can boil my device down to a couple of sheets of formulas. And it has value at that level and I can probably patent just that. But that's not the way I see it being used. When I put the pieces together it approaches a prior art but I don't think he and I do things the same way. He seems to have claims for a few elements I don't use. But God only knows what the USPTO would find on it.

Maybe I'm wrong but it seems the patent would be worth more if I can include more of what I've actually designed. I figured I'd submit it as dependent claims and they'd tell me what parts if any aren't acceptable. what am I missing?

[JimIvey]

Maybe I'm wrong but it seems the patent would be worth more if I can include more of what I've actually designed. ... what am I missing?

Well, you must understand that patents are not easy.  I practiced for 3 years, more than "full time", before I was permitted to sign my own papers, even with supervision of a partner in the firm.  Understanding exactly what a patent is and what it does and how it's valued takes some perspective, and most don't have that perspective.

You are wrong.  The patent is not worth more if you include more of what you've actually designed.  Your patent is worth more if it excludes more competitors, more variations of what you've actually designed.  All someone must do is change one detail that appears in your claims and they've successfully avoided infringement of your patent.  If you really prefer something be made of wood and your claim says that it's made of wood, a competitor can make exactly the same thing out of plastic and they don't infringe. 

So, yes, the more detail in your claim, the less your claim is worth.

That is fundamental to patents.  Your claims really should be written and prosecuted by someone who understands that much.

Regards.

[DogDayPM 9er9er9er]

[1] I guess what's confusing me is that if people are only patenting that portion of an invention that is required to block others from producing a device how do I know that remaining portions of what I want to do don't infringe?

[2] Maybe I'm wrong but it seems the patent would be worth more if I can include more of what I've actually designed. I figured I'd submit it as dependent claims and they'd tell me what parts if any aren't acceptable. what am I missing?

Hiya, you need to separate out [1] from [2] in your head (this is not grumping at you, by the way - I get confusion on the interaction between patentability and infringement or "freedom to operate" all the time, even from experienced scientists who have a lot of experience in filing patents). 

There is essentially no connection between, on the one hand, what you put in your patent regarding your invention (and how the PTO examines it), and on the other hand, whether or not practicing your invention will infringe another's patent.  This is because the PTO's examination of your claims will focus broadly on what is disclosed by one or more prior art references - i.e, whether they disclose what is in your claims.  Whereas whether you infringe is based only on what an in-force patent claims.  The PTO rarely pays any attention to a prior art patent's claims while examining your patent, because it's much easier to learn what a prior art patent discloses by focusing on the Abstract and main Description portions of the prior art patent.

[1] to determine whether or not you can practice your invention without infringing one or more other person's valid patents, you would need to do a search of what you plan to do as against the claims of in-force patents.  There are any number of search firms who can do a good search for you if you give them a good technical description.  But interpreting the search may take legal help.

[2] you should indeed well and fully describe your invention in the text of your specification/description.  But in the independent claims, your invention should be described only specifically enough to make it patentable.  Yes, as you note, you can put the other items in the dependent claims.  And indeed, you may need those other items in the dependent claims, to amend your independent claims, if it turns out your independent claims are not patentable.

Summary

PTO Examination of your application:
  - -  Your Claims versus what prior art patents (or other publications) disclose.

Your practice of your invention, "do I infringe"?
  - -  Your practiced invention versus what in-force patents claim.

[LaplacesDemon]

Well, again, thanks to everyone for your kindness and patience.

The good news is that I've finished on time and I'm confident that I've covered my bases. I'm going to get a good night's sleep and go over it one more time and upload it tomorrow. Everything is sitting nice and neat and I've backed it up to a dvd just in case.

I'm sure this application has turned out 100 times better because of everyone here. And a big mega mega thanks to whoever mentioned the Slusky book. That's helped tremendously. Even though I've only read a few chapters so far.

As it turns out I was able to word my patent such that the very things that get me around the prior art are the exact things I don't want someone else copying. How perfect is that? I guess the USPTO will tell me huh?

I'm confident that my patent provides enough detail that someone with the right skill set could easily produce and operate the device. I was very specific in the descriptions but I don't commit to a dog gone thing till I get to the claims. Its all about, "As indicated in fig. 5" which I explained about 25 times "is only one embodiment of many possible options. Here are 15 other ways it could be done." I didn't know myself which way I was going till I got to the claims.

So now I can finally move on to the next chapter in the NOLO book about office actions and the like. I'm taking it one step at a time. I'm anxious to review other parts of this site. Its a great group here and I'm really enjoying the mental work out.

BTW I would not suggest that just anyone do what I'm doing. But a large part of my background is in tech writing in the field of my invention. And you've all helped more than you realize. Thanks!

[Robert K S]

You might find it advantageous to submit a form-fillable ADS and check the "Do not publish" box.  Electronically sign your name to it in the signature field by surrounding your typed name with forward slash marks on both sides.

Also, ABXPDF is your friend for baking PDFs.

Standard disclaimers apply--the above is not advice, I am not your lawyer, etc. etc.

[LaplacesDemon]

Thanks for the suggestion. Yeah I read about how the USPTO is taking so long to complete a patent that its sitting on their website for anyone to steal for 3 years while someone saturates the market so the people who do all the work get nothing. Is the ADS different than the NONPUBLICATION REQUEST
UNDER 35 U.S.C. 122(b)(2)(B)(i) form?

I went with Nitro PDF Pro on the PDFs. They have a 2 week free trial. I mean this is ready to go. All I gotta do is push the upload button. Just one last review first and then the sky opens and it rains money.  

[Robert K S]

Thanks for the suggestion. Yeah I read about how the USPTO is taking so long to complete a patent that its sitting on their website for anyone to steal for 3 years while someone saturates the market so the people who do all the work get nothing. Is the ADS different than the NONPUBLICATION REQUEST UNDER 35 U.S.C. 122(b)(2)(B)(i) form?

The "Do Not Publish" check box takes the place of the nonpublication request form.  The other annoying thing is that if you don't request non-publication, the USPTO will charge you a publication fee.

I went with Nitro PDF Pro on the PDFs. They have a 2 week free trial. I mean this is ready to go. All I gotta do is push the upload button.

Yeah, so you think, until it rejects your PDFs as being non-compliant.  It happens.  Not with ABXPDF, though--not to me, not yet.