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"Maximizing the Returns on Your Intellectual Endeavors"

“The Language of Patent Law,” Guest Lecture at Univ. Of Maryland Law School, 9/7/00

Patent

            A United States patent is basically a grant from the United States government to the owner of an invention to exclude all others in the U.S. from making, using or selling the invention for a limited time (.i.e., extending from the date of issuance of a utility patent for a period which may extend up to 20 years from the date on which an application for the patent was filed, provided that specified maintenance fees are paid at certain intervals after the patent’s issuance date: 3.5, 7.5 and 11.5 years).  35 U.S.C. § 154(a)(2) and § 271. 

Alternatively, a patent is the name used for the document that is crafted from the information contained in the inventor’s patent application and published by the U.S. government.  The specification (text) and drawings of a patent must enable one skilled in the technology of the invention how to make and practice the invention, and must set forth the best mode contemplated by the inventor for carrying out the invention.  The specification must conclude with one or more claims that particularly point out and distinctly claim the subject matter which the inventor regards as his/her invention.  35 U.S.C. § 111 and § 112.

Claim

            A claim is a listing of the minimum elements of an invention.  A Patent claim has nothing to do with an assertion of properties or performance of the invention; it is not at all like an “advertising claim.”

            Rather, a patent claim is a set of words which defines an invention in its minimum terms, e.g., 

A fastening device comprising:

(1) a threaded bolt,

(2) a threaded nut mounted on said bolt, and

(3) a washer mounted on said bolt inward of said nut.

            The specification portion of the patent might show a lock washer as the preferred kind of washer in this combination.  But the claim is not limited to devices which include lock washers; the combination of a bolt, nut and flat washer would also be covered by the claim.  Similarly, the specification might show, as the preferred embodiment of the invention, a steel bolt and a steel nut.  However, the claim is not thus limited; it will cover, for example, threaded aluminum bolts and nuts, threaded plastic bolts and nuts, etc., so long as they are used in combination with the recited washer.

            A patent claim is roughly analogous to a criminal statute:

-         it proscribes conduct (i.e., determines what is infringement),

-         it does this by reciting what are the minimum elements necessary to constitute the offense;

-         its terms can be met by a nearly infinite variety of specific occurrences of human conduct, a host of different scenarios, each one meeting the minimum element set forth;

-         the offense is not made to go away by the fact that the minimum elements are accompanied by other additional acts/elements.

A patent will usually have a number of independent and dependent claims (recognizable by wording such as “as recite in Claim 1” appearing in the preamble of the claim).  Each claim then serves as a sort of mini-patent, in that its coverage is independent of the coverage of any of the other claims in the patent.  For infringement, all that is required is that the accused infringing product or process have all of the elements recited in any one of the patent’s claims.  The validity of each claim is judged independently of the other claims in the patent.

The reason why good patent attorneys put many claims in a patent is that no one is ever sure whether a given claims will be held valid by the courts.  This problem is partly due to the subjectivity of some claim validity issues; partly due to the uncertainty in predicting how a court will rule on any given proposition, and partly due to the attorney’s lack of knowledge, at claim-drafting time, of the full extent of the prior art.

Comprising

            The word “comprising” in a patent claim means “including at least …”  Thus, the above claim covers every arrangement in the world which has at least these three recited elements, regardless of whether the arrangement has additional elements present.

Narrower Claim

Adding more recited elements to the claim has the effect of narrowing, not broadening the claim’s coverage.  If we were to add a fourth element, for example, “a second washer mounted on said bolt inward of said first washer,” the claim would now be narrower, because it would cover all things in the world which have all four elements – a smaller subset of things than that covered by the previous claim.

Claim “Reads On”

A claim is said to “read on” some physical thing when each element or phrase recited in the claim is found in that thing.

A claim reads on a prior patent when each element of the claim corresponds to or is to be found in the disclosure (specification and drawings), not the claims, of the prior patent.

A claim reads on a prior non-patent publication, such as a technical journal article or paper, when each element of the claim is found in the article or paper.

Since all publications can sometimes use broad and non-specific language, we have to be careful not to take too cavalier a view of whether a later claim “reads on” such disclosure.  The rule is:  An element or  phrase of a claim reads on a publication if the publication discloses the element at least as specifically as the claim recites it.  Thus, a claim recitation of “metal” reads on a publication that discloses “copper.”  But a claim recitation of “copper” does not read on a publication that says: “Any metal will suffice.”

Anticipation: “Claim reads on the prior art”

            In the USPTO, it is the claims, not the drawings or the rest of the specification, that are examined and allowed or rejected by a Patent Examiner.  To be novel, and “not anticipated” by the prior art, a claim must not read on any arrangement of elements appearing in a single prior product or in a single prior publication (i.e., the “prior art”).

Infringement: “Claim reads on the accused infringing device/method”

            To be infringed, a claim must read on the accused infringing product or process.

            Finding the various individual elements of a claim in various plural pieces of prior art is very commonplace, and does not anticipate the claim or render it non-novel and invalid.  The individual elements of a patent claim are nearly always old.  This has nothing to do with the novelty or validity of the claim.  It is the combination of the elements which is claimed, and if this combination appears all together in a single piece of priori art, then and only then is the claim anticipated and hence invalid.

Novel

A person is entitled to a patent if the invention is “novel” –

– Unless prior to one’s invention date (i.e., date on which one actually reduces the invention to practice; which may be either “actual - makes a proto-type” or “constructive - files a patent application for the invention):

It’s described in printed publication anywhere in the world,

                        It’s publicly known or used by others in the U.S.,

                        Someone else’s earlier filed application, which later issues, discloses it,

                        Someone else in the U.S. earlier reduces it to practice, but files a later application which would otherwise qualify for the issuance of a patent – Interference Proceeding

                        - Unless prior to more than 1-year before filing an application for the invention: 

                        Applicant publicly uses or sales it in U.S.

                        Applicant publishes an article describing the invention anywhere in the world.

See 35 U.S.C. § 102.

Nonobvious

A person is entitled to a patent if the invention is “nonobvious” –

“the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains....”, 35 U.S.C. § 103(a).

Enabling Disclosure and Notice

A person is entitled to a patent if he/she files an application with the USPTO that provides “enabling disclosure and notice”:  “An application for patent … shall include – a specification … contain(ing) a written description of the invention. And of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor for carrying out the invention.  The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor regards as his invention.” 35 U.S.C. § 111 and 112.

Statutory Subject Matter

Not all novel and non-obvious things can be patented.  In order to be patentable, the subject matter of the invention must be “statutory subject matter”.  This is defined by 35 U.S.C. § 101 as “any new and useful

                                                process,

machine,

manufacture, or

composition of matter, or

any new and useful improvement thereof.”  

            However, the Court of Appeals for the Federal Circuit (CAFC) instructs that “the question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to …. but rather on the essential characteristics of the subject matter, in particular, its practical utility.   Section 101 specifies that statutory subject matter must also satisfy the other "conditions and requirements" of Title 35, including novelty, nonobviousness, and adequacy of disclosure and notice.”  State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368 (Fed. Cir. 1998).

Meanwhile, the Supreme Court has tended to construe statutory subject matter broadly, noting that Congress intended statutory subject matter to “include anything under the sun that is made by man.” See Diamond v. Chakrabarty, 477 U.S. 303, 309 (1980), quoting S. Rep. No. 82-1798, at 5 (1952) and H.R. Rep. No. 82-1923, at 6 (1952).   However, despite this seemingly limitless expanse, the Supreme Court has specifically identified three categories of unpatentable subject matter as:

“laws of nature,

natural phenomena, and

abstract ideas.” 

            This decision followed many years of lower court decisions in which these courts employed various exclusionary words to define non-statutory subject matter.  These words included: 

            “printed matter” for inventions that relate merely to the meaning or significance of an arrangement of printed matter without a reference to the process, product or machine that is used to prepare the printed matter, See In re Miller, 164 USPQ 46 (CCPA 1969); 

            “naturally occurring article” for inventions that occur in nature and are merely found; See Ex Parte Grayson, 51 USPQ 413, for the denial of a patent for a shrimp with the head and the digestive tract removed; 

            “mathematical algorithm” for those elements of inventions which were generally expressed as mathematical equations, and where the invention was not drawn to a practical purpose for producing a new and useful result, See In re Walter, 618 F.2d 758 (CCPA 1980) for denial of a patent for  improved mathematical methods for interpreting the results of seismic prospecting, and 

            “method of doing business” for inventions consisting of business schemes that are not related to a physical process or method carried out in connection with a workpiece or product, and thus not within the “useful arts,” Hotel Security Checking v. Lorraine Co., 160 F. 467 (2nd. Cir. 1908). 

            The use of such exclusionary words is now strongly in disfavor for resolving statutory subject matter issues:

            [The business method exception] is . . . an unwarranted encumbrance to the definition of statutory subject matter in section 101, that [should] be discarded as error-prone, redundant, and obsolete. It merits retirement from the glossary of section 101. . . . All of the "doing business" cases could have been decided using the clearer concepts of Title 35. Patentability does not turn on whether the claimed method does "business" instead of something else, but on whether the method, viewed as a whole, meets the requirements of patentability as set forth in Sections 102, 103, and 112 of the Patent Act. See In re Schrader , 22 F.3d 290, 298, 30 USPQ2d 1455, 1462 (Fed. Cir. 1994) (Newman, J., dissenting). 

To resolve “statutory subject matter” issues, one is best advised to focus on “the essential characteristics of the subject matter, in particular, its practical utility and whether the claimed invention also satisfies the other "conditions and requirements" of Title 35, including:

novelty,

nonobviousness, and

adequacy of an enabling disclosure and notice.”