Do you understand how to write patent claims for utility patents issued by the U.S. Patent and Trademark Office? In Part One of this article about patent claims, we briefly explained what patent claims are and wrote some simple patent claims to protect a stool and a chair, specifically:
1. A device for a person to sit upon, comprising:
a seat having an upper surface, a lower surface, and a peripheral edge; and
at least three legs, each leg projecting downward from the lower surface of the seat.
2. The device of claim 1 further including a back support projecting upwardly from the upper surface of the seat.
Now let’s keep trying to break our new claim 1 as though we’re our own competitor. What else can we do to get around these patent claims? How about something like this?
Now we have a smart competitor who has figured out how to at least argue that he’s not infringing, claims 1 or 2. His legs do not project downward from the lower surface of the seat, like our claims require. Instead, they project downwards from the peripheral edge of the seat. Now, again, perhaps you don’t care about that type of competitive product because it’s hideously ugly and will never have great success in the marketplace.
But then again, what do we know? People buy some strange things, and if your patent practitioner had spent some time to figure out how to get around this possibility, perhaps he would have written the claims to encompass something like this ugly chair. For example, he might have claimed that the legs and back simply project from the seat and not from a specific location on the seat. You can see that if we eliminate that language from the claims, we end up with something like this:
1. A device for a person to sit upon, comprising:
a seat having an upper surface, a lower surface, and a peripheral edge; and
at least three legs, each leg projecting downward from the lower surface of the seat.
2. The device of claim 1 further including a back support projecting upwardly from the upper surface of the seat.
As you can see, we’re strengthening the claims by reducing their size… that is, by removing limitations. Generally speaking, the more concise a claim, the stronger it is. In fact, my chemistry professor at college still holds the record of the most concise claim ever allowed by the PTO, namely claim 1 in US Patent 3,156,523, which reads simply: “1. Element 95.”
How about this product? Does this infringe our new claims 1 or 2?
Again, the answer is no, because our claim 1 requires that each leg project downwards from the seat. It could be argued in court that the central post is a “leg” that extends downwards from the lower surface of the seat, but in this case additional “legs” project outwardly from the first leg, not from the seat itself. So this is an ugly chair, too, and perhaps you don’t care about this being all that competitive with your design. But if your practitioner had spent a little more time with claim 1 he might have written it like this:
1. A device for a person to sit upon, comprising:
a seat having an upper surface, a lower surface, and a peripheral edge; and
at least three legs, each leg connected with the seat.
2. The device of claim 1 further including a back support projecting upwardly from the seat.
3. The device of claim 1 wherein each leg is connected with the seat at a lower end of a post, the post fixed at a top end thereof with the seat.
Now these claims are starting to get a little unwieldy and more difficult to understand. Notice we wrote that the legs are connected with the seat, not to the seat. The preposition “with” is used to indicate that the legs are connected with the seat either directly or indirectly, whereas the preposition “to” indicates that the legs are connected directly to the seat. This is one of many nuances to writing claims that you might not discern if you’re new to claims language. If we specify that element D is the post, our claims now protect the following:
1. AB
2. ABC
3. ABD
And if we wanted to protect everything with a single claim, even though it would be the most limiting claim (but the claim most likely to get allowed by the PTO), we can add ABCD together by writing a dependent claim such as:
4. The device of claim 2 wherein each leg is connected with the seat at a lower end of a post, the post fixed at a top end thereof with the seat.
Remember that with claims, we’re balancing the two competing goals of having broad protection and getting the patent claims allowed. It’s easy to write a broad claim with few elements, like ABC, but it’s more likely to be rejected because lots of other prior art might fall within the scope of such a simple claim. It’s easy to get a claim allowed if it has elements ABCDEFGHIJKLMNOP, but that’s not a very strong claim if it has a lot of elements that are non-vital and easily removed by a competitor.
Now it’s your turn! Let’s attempt a set of claims for a simple skateboard, and then add the optional features of a “grippy” top surface and a front headlight. The optional features should not be included in claim 1, so for claim 1 think about just the elements of a simple skateboard.
We’ll discuss a claim for a simple skateboard in the last part of this article to see how well you did!
