Quick and Dirty Patent Analysis

Many people believe that once a patent has been granted – an invention has been properly protected.  Unfortunately, oftentimes this is not true.

The scope of the protection provided by a patent is determined by the allowed claims.  The allowed claims are the numbered paragraphs at the end of an issues patent.

To understand the quality of the claims in an issued patent, it is necessary to understand what must be done to infringe a claim.  Infringement means to recreate the invention described in the claim.  If a claim is long, that is it includes many words and phrases, many things must be done to recreate the claimed invention.  To infringe a claim everything described in a claim must be reproduced.  If a limitation described in a claim is not reproduced, then there is no patent infringement. 

Looking at the infringement of a claim from the opposite viewpoint, if a claim is short, that is if a claim only has a few number of words or phrases, only a few things need to be done to recreate the claimed invention.  Short claims are often considered to be broad in scope.  Broad claims are the hallmark of a high quality patent.

When a claim has many words and phrases, it is considered to be narrow in scope.  Because every word and phrase is a test, and every test must be passed for there to be infringement, a claim with many tests is considered to be narrow in scope.  Thus, for someone concerned about possible infringement of a patent, a narrow claim may provide many opportunities for avoiding patent infringement.  Specifically, if a product can be made without a limitation that appears in a claim, patent infringement can be avoided.

When a claim has few words and phrases, only a few things need to be done to recreate the invention described in the claim.  Such a claim is broad in scope.

Another thing to evaluate when looking at a claim is the nature of the words used to describe the invention.  If the words used in a claim are complex and specific, then the claim may be narrow in its coverage.  On the other hand, if the words used to describe an invention in a claim are simple and not specific, the claim is considered to be broad in scope.  Once again, broad claims bring quality to a patent and increase its value.

When picking up a patent for the first time, most experienced patent professionals go directly to the claims at the end of the patent.  A quick look at the claims will enable spotting those independent claims which occupy the least space.  Recall that dependent claims, while short in length, include all the limitations of the independent claim(s) from which they depend thus dependent claims are actually longer than independent claims.

Claim 1 will always be an independent claim.  Claim 1 is also, most often, the shortest independent claim.  But, not always.  Thus, it is important to scan the whole claim set looking for the shortest claim.  Sometimes there may be multiple short independent claims of equal length.  Sometimes there may be long device claims and short method claims on the same invention.

While the claim length and simplicity is a good place to start, claim length and simplicity are not always determinative of claim scope.  For example, a claim may include a lot of superfluous elements, but the description of the actual invention within the claims is succinct.

For inventions, particularly those involving cutting edge high technology, a claim may include a lot of complex technical jargon yet still be problematic.  Such claims create choke points for those inventors that follow.  Thus, to take the next technological step forward, it will be necessary to do what others have done thereby improving the work of others, it may be necessary to reproduce the work of others.

Another potential pitfall occurs when reviewing the claims in a recently issued patent.  If a quick review of the claims indicates that the claims are lengthy and use complex words, there may still be a danger of patent infringement.  Such danger of infringement occurs when a set of claims has been divided up during the prosecution of a patent application.  To get a patent issued quickly, an inventor may accept an offer of allowance of the more complex claims from the USPTO.  However, the remaining short, simpler claims may still be pending.  Thus, it is important to go back to an early Published US Patent Application, if one is available, to determine if short, simple claims may still be in a pending status.

Those interested in buying or licensing the patent rights of another want to know what they are getting for their money.  Purchasers or licensees, look for quality patents.  Patents with long claims full of complex words are not generally quality patents, with some exceptions, as described above.  Patents with short claims including simple words are considered to be high quality valuable patents.  Such high quality patents are often sold for lots of money or produce a long train of royalty payments.

Those interested in selling or receiving a string of royalties for their patent in the future should pay attention to the words and the claims in a pending patent application.  Unfortunately, it is frequently necessary to extend the prosecution of a utility patent application to obtain an allowance of claims which describe an invention succinctly and with simple words.