Intellectual Property Directions

Double, double toil and trouble, infringer burn and lawyer bubble…

Although many inventors think they can save a lot of money by filing their patents pro se (for themselves), I always caution my clients to use a patent attorney, at least to draft their claims. Sure, you know the science and technology of your invention better than anyone else, but writing claims is only one part science - the rest is eye of newt, oops, I mean the rest is an art.

For example, I’ve previously blogged about a patent infringement suit in which the patentee almost lost the right to stop an infringer because their claim used the word “composed” rather than “comprised”. To the patent world, an invention “composed” of x plus y does not cover one that also includes “z”. But a patent that covers an invention “comprising” x and y can be asserted to stop someone from making x plus y plus z. [In this case the patentee won on appeal because "z" was irrelevant to the function of x plus y.]

Just recently we have another example of the arcane art of claim construction. In Baldwin v. Siebert the CAFC reversed a claims construction error of the District Court. In patent claims, it is the rule that inventions comprised of an object may equally well have two or more of the objects. Thus, Baldwin’s claimed printing press cleaning system, which comprised “a pre-soaked fabric roll”, did indeed block Siebert from selling a system that had more than one pre-soaked fabric rolls. As the CAFC said:

That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one”.

A patent attorney friend of mine suggested viewing the rule this way: if the invention is defined to include one of these objects, then a copy that includes two must, by definition, also be said to include one. You can’t have a second if you don’t have a first!

The point, of course, is not to tell you to always use comprise or to add a dependent claim adding the second or more duplicate objects. The lesson to be learned is to always seek experienced counsel to draft your claims. You’re a scientist or engineer, you never served a claim writing apprenticeship with a master artisan. Find someone who has learned this art.