Good Versus Bad Patents

Good or bad? Strong or weak? Broad or narrow? What makes a good patent? The classic definition is that a good patent claims an invention as broadly as possible. That definition is fine as far as it goes, but in my view the definition is deficient in that it glosses over both of the fundamental steps in drafting a good patent, namely: (a) identifying what the "invention" is relative to the prior art; and (b) describing the "invention" in a manner that best serves the purposes of the particular client.

Identifying the "invention" in view of the prior art is not necessarily an easy task. Consider, for example, the pop-tops currently found on soda, beer, and other cans. Many years ago soda and beer cans had pop-tops that actually popped off. The pieces that came off were usually quite sharp at the edges, and tended to cause injuries. The removed pieces also tended to find their way into lakes and streams where they damaged fish and other animals. When the first person came up with the idea of a pop-top that didn't pop off, he almost certainly had a particular mechanism in mind. But the real contribution to the field was much more than any particular mechanism, or even a set of mechanisms. The "invention" was the basic idea of keeping a pop-top on a can, and the invention should have been claimed accordingly.

Instead, Simpson et al. (Nov. 1965) claimed their invention with numerous unnecessary limitations, including that the pull-tab had to have a "shallow winged cross section".

1. A sheet metal pull tab particularly adapted for attachment to a tearable container portion, said pull tab being of a shallow winged channel cross section and including a web having sides and ends, a narrow upstanding flange extending along the sides and one end of said web and a wing flange extending outwardly from said upstanding flange along the sides and the one end of said web, and an inturned hem along the periphery of said wing flange in underlying relation to said wing flange thereby forming a rigid structural unit.

Harvey et al. (Dec. 1965), unnecessarily claimed pop-tops that had both pouring and vent openings:

1. A can and opener for establishing spaced pouring and vent openings therein, and including:

(a) a can having an imperforate wall with spaced predetermined weakened pouring and vent areas thereon;

(b) and an opener overlying the wall and comprising a body of hingedly coupled sections extending over and fastened to each of said predetermined areas respectively, with a lever section fastened to the pouring area and extending to the said vent area, and with a lever section continuing from the first mentioned lever section and fastened to the vent area and extended laterally therefrom and adapted to be lifted for operating the opener to sequentially shear from the wall the vent area and then lift the first mentioned lever to shear from the wall the pouring area.

Even Brown et al. (Oct. 1967), who claimed what became the modern pull-tab, recited their invention with unnecessary limitations as to inner and outer stiffening beads "extending around at least half of the circumference of the ringlike portion of the member":

1. A tab for attachment to a tear strip in a wall of a container for manual removal of the tear strip, comprising:

a one-piece member of sheet material having a relatively large aperture forming a portion of the member into a ring-like configuration to serve as a handle for manipulating the member, said member having an extending portion for attachment to the tear strip, inner and outer edges of said member being turned to form stiffening inner and outer beads extending around at least half of the circumference of the ringlike portion of the member, said inner bead being continuous around the inner circumference of the ring-like portion of the member, the outer bead having two ends extending from opposite sides of the ring-like portion of the member along opposite sides of said extending portion to stiffen the member longitudinally.

The narrow claims didn't stop the assignee, Ermal Fraze, from making millions of dollars on the invention , but the claims could have been worded more broadly. The insight that really triggered pubic acceptance of pop-top cans was the stiffened ringlike pull member. The broadest claim should have read "a pop-top can having a stiffened ringlike pull member". That was the inventive concept and that is what should have been claimed.

The difference in approach between claiming embodiments and claiming concepts can be appreciated by comparing the two diagrams immediately below. In both cases the process of patenting is represented by two opposing funnels. In the "Bad Patent" diagram below, the inventor provides all sorts of ideas (leftmost squiggly lines) on how to solve a particular problem.

Figure 29 — Symbolic Drawing Of A Bad Patent

As represented by the left-hand funnel, the patent attorney reduces the inventor's disclosure to a logical set of instructions and examples. In the right-hand funnel, the attorney then fluffs out those instructions and examples to cover multiple options. Sounds good, but the attorney is merely charging a lot of money for rewriting the inventor's disclosure.

In the "Good Patent" diagram below, the inventor still provides a disclosure as to how he solves a particular problem. But the patent attorney extracts from that disclosure a critical set of three or four elements that distinguish over the prior art (designated in bold on the left portion of the diagram). He then expands out those critical few elements into all possible choices. In reducing the "invention" to its core components, the patent attorney is identifying the concept of the invention, not its implementation. It is precisely that reductionistic thinking that is so difficult to do, but that is so important to filing strong claims.

Figure 30 — Symbolic Drawing Of A Good Patent

A well-written patent claim also takes into account the needs of the inventor vis-à-vis the marketplace. Among other things a patent attorney should weigh (a) the likely cost of lengthy arguments during the patent prosecution process to achieve the greatest possible coverage against (b) the benefit of narrower claims that might still be "good enough" to keep the competition at bay. In later sections I discuss numerous strategies for doing just that, including avoidance of multiple independent claims to preclude restriction requirements (the outgoing funnel in the diagram). At this introductory stage the main point is that good patenting is a lot more than simply securing the broadest possible coverage on what the inventor thinks is the invention. A good patent means that the patent attorney took the time to see through the applicant’s disclosure, not just into it.

Above all, remember that the patent attorney's task is much more than just describing and claiming what the inventor thinks he invented. The attorney must also describe and claim all that is inherent in that "invention". To do this, the patent attorney must thoroughly understand how the invention differs from the prior art, and devise all possible ways of embodying that difference. This generally takes much more creativity than inventing the thing in the first place. Often it takes an hour, or even several hours to understand where the invention lies, and to figure out all alternatives. Remember that the invention is almost always broader than the inventor thinks it is.