Technical Professionals for the Patent Industry™

Blog by Andre Grouwstra

TPS21 - Why Are Patent Claims So Weird, Anyway?

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Introduction: The claims seem to be some decorative appendix to a patent. Weird language, often hardly understandable. Each claim is one sentence, sometimes a very looooooooooooooong sentence. They're at the end of the patent, and it is where most people stop reading. What's up with the claims? As many times before, Joachim Pistorius, a US patent agent working in Germany, gave valuable input for this post. He saved me from being a bit too opinionated, and also added a pretty useful tip for inventors.

They're weird, aren't they? Are the claims not just some kind of summary? Is the description of the invention not boring enough? What's up with the language?

To some extent there is tradition. A document as important as a formal recognition of a noble invention could not be written in street language. There is also that some practitioners don't afford to analyze an invention properly. To cover that they don't understand, they may dress up an inventor's text with expensive and antiquated language.

Let's take a step back. A patent is a legal document. When issued, it gives you the privilege to decide about a bunch of rights for an invention that you have made. You get the privilege for 20 or 21 years, and after that, the invention becomes public domain, and all of humanity can benefit. To make the whole thing work, of course you need to describe clearly what you've invented, and you need to claim precisely what is unique about it. Usually, you have a couple of independent claims, in which you claim your invention as broadly as you can get allowed, and each independent claim may have a string of dependent claims that can narrow it down to what you have actually built. Or thought of building.

The claims are THE MOST IMPORTANT part of your patent. My friend Joachim gave a really good tip for inventors. When you review the draft of your application, don't skip the claims. Take a pencil and a paper and take the claim language as instructions for a drawing. Are the instructions clear enough to make the drawing? Do you recognize your invention? If not: discuss with your practitioner!

You cannot write the claims yourself, though. All fighting about patents in court is about the content, meaning, and language of the claims. There is a boatload of legal baggage: the laws (US: four that are really important), the regulations (a couple of hundred), the rules (thousands), and case law (all the court cases that make up how the laws are currently interpreted).

There are many legal requirements about the language in claims, even to the extent that it deviates from what a normal person would identify as grammatically correct English. Not one of the requirements, luckily, is to write mumbo-jumbo. In fact, of the four laws (in the US) that form the foundation of the patent system, there is one that specifically requires that the description of the invention be full, clear, concise, and in exact terms. The reality is often different, in some part for the reasons I gave above.

Personally, I believe that a claim should be legible, clear, and defining the invention. That is how you get a strong and valuable patent. Sometimes I feel like I'm the only person who thinks so, though. There are so many patents, especially about electronic circuits and systems, in which the claims seem to be just a meaningless bunch of words. The example on the right (an Apparatus! by Intel) is a claim without obfuscating words or language, that gives a detailed description of an invention. It seems to the point, and defines the invention. Mind you that, without having read the patent, I hardly have any clue what it is talking about—but that is my fault, not the practitioner's.

Claims do not need to contain legalese. But because the language is tightly controlled by patent office rules, and impacted by case law, there are many common words and expressions that have an uncommon meaning when they appear in a patent claim. We are extremely careful using them, or we blacklist them altogether. Using the word or is very tricky. The verb contain is a no-go. We need to think twice before using the word with, or having. Before we can write "the (something)", we have to introduce "a (something)", otherwise we have an antecedent violation. When there are two (something)s and they may be different, we'd better write "a first (something)" and "a second (something)". We can write in a dependent claim that the second one may be the same as the first one.  In some cases, we are forced to accost English grammar.

We do have choices, though. My applications don't talk about "said (something)", I just write "the (something)". Unless forced, I will not write "a plurality of (circuits)"—I will write "two or more (circuits)", etc. I want the inventors I'm serving to be able to read what I write.

For somebody unaccustomed to claim language, reading claims can be a painful exercise. It is not only the legal baggage that makes them hard to read. As mentioned, the claims are the heart of the patent. If your description features this omnipotent vehicle that allows traveling to the moon and back, but your allowed claims are only of a kids' scooter, then the only thing protected will be the kids' scooter. Your claims must clearly target potential infringers, who would usually be certain types of competitors. For instance, if your company is a fabless semi, you may have a circuit claim, even to the extent that it looks a bit like a whole netlist expressed in crooked English. If you have a software invention, one of the claims may be for a memory (such as a DVD) that comprises instructions that cause a processor to (description of the method you have implemented in software).

If you haven't guessed already—reading claims is not the only difficult thing. Writing claims is difficult, too, and can go awry. Let's revisit this infringe thing. I once saw a patent for a major foundry. That foundry has a signature technology with which it distinguishes itself from competitors for wireless semiconductors. The invention was cool, but the lawyer who wrote the patent didn't understand it. When the patent was examined, the examiner saw some prior art issues with claim 1. The lawyer decided to narrow the claim a little bit by throwing in that the circuit be manufactured with the foundry's signature technology. That got him the patent approved. But who were the potential infringers with this new limitation? The foundry's customers‼ By adding in this limitation that had nothing to do with the invention, the lawyer opened up (gave away) the invention to all competitors, and protected the foundry from infringement by its own customers, who pay to use the foundry's technology! OK, so maybe this lawyer didn't have his best day, but claims can be tricky.

Unfortunately, it happens a lot that the commercial value of a patent is destroyed by a patent practitioner who doesn't understand the invention, or its commercial value to the inventor's company. For this reason, I follow my golden rule. When I file a patent application, I will understand every sentence and every word in it. I will understand the invention, and I'll have done my best to understand the customer's strategic goals. And I also want my readers to understand it.

If your independent claims are narrow, then it may be easy for a competitor to get around them. So, independent claims should be as broad as possible and free of anything that is implementation specific. That means that the implementation-specific terms that the inventor is used to are replaced by broader terms. Sometimes, a broader term is easily available and easy to read. But sometimes, a broader term is not so easily available, and the claim may use a term that, although it might be introduced in the detailed description, is still awkward.

I normally claim for the broadest use of an invention (unless a CEO tells me specifically to not care). That means that I will try to divorce an invention from the application for which it was invented. If you invent a microphone for use in a cellphone and that doesn't pick up the noise from the wind, I will take it out of the cellphone context (at least for independent claims), because such a microphone is also very useful for many other outdoors conditions.

Category : Patent Topics

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