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Author Topic: Using "Transparent" in software patent  (Read 912 times)

JodiB

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Using "Transparent" in software patent
« on: 09-16-06 at 04:01 pm »

I'm an inventor that is trying to plan out my claims and trying to figure out whether or where to include the word "transparent".  My invention significantly simplifies and in my preferred embodiment even eliminates user actions, so essentially automates some tasks.  In other unrelated patents I have seen the word "transparent" used and am leaning towards including it to help me in case any competitors decide to infringe (the whole point of patents).

Say I have an independent claim 1 with several dependent claims 2, 3, 4.  Now say I see competitor workarounds that
are less "transparent" or require some user actions say for the dependent claims 3 and 4.  Do I use "transparent" in claim 1 and then claims 3 and 4 aren't exactly transparent in some embodiments (competitor workarounds not my preferred embodiment)?  

Even though the competitor workarounds are lessor quality, I could see competitors still going ahead and implementing non-transparent versions because there might be enough $money to be made anyways.

thanks
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Bill Richards

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Re: Using "Transparent" in software pate
« Reply #1 on: 09-18-06 at 08:05 am »

You are treading into an area that is fraught with complexities.  As you may know, if ever litigated, your choice of words will be argued at length; especially ones that may be critical to the claim and any alleged infringer.  "Transparent" may just be one of those words.  Unfortunately, there have been many, many court cases on this subject as well as many articles written.  Without going into too much detail, consider the following:
What is the ordinary accustomed meaning of the word?
Will you be describing the word in your Spec?
Is it a special term of art?
As for using or not using it in other claims, you need to decide if it's necessary for patentability.  And, this Forum is not the place to discuss specifics.
If this is truly a critical term and you're worried about it, I suggest you consult a patent attorney or agent.
« Last Edit: 09-18-06 at 08:08 am by patentpilot »
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William B. Richards, P.E.
The Richards Law Firm
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SoCalAttny

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Re: Using "Transparent" in software pate
« Reply #2 on: 09-30-06 at 10:03 pm »

The spec is used to interpret the claims. If you use the word transparent ensure that you can use your spec to show what it means. You are stuck with the spec after filing so put as much as you need in it.
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