Our post of March 19, 2024, makes the good point that patent examiners are not the enemy. We often see patenty people who seem to want to begin each Office Action (“OA”) response with, “Hello. You rejected my patent application. Prepare to die.” In reality, we and the patent examiners share a duty to bring to issue the correct patent — the one with a scope that the inventors deserve in law and equity — not the broadest one conceivable in some alternate universe (Hear us, patent litigators,) nor the narrowest spawn of desolation.
Agreed. Now, onward to implement this point.
How? Review the claims with the examiner before you file the patent application. Huh? Impossible, you say? Well, yeah sure, but consider this approach:
[1] Write claims that broadly cover the invention.
[2] Then self-criticize your claim language to find where your language unintentionally oversteps the bounds of the prior art.
But because humans are notoriously bad at [2]…
[3] Have another practitioner pretend to examine your claims to see if together you can make your submission more palatable from the get-go. At the very least, this second pair of eyes can eliminate so many of those first OA responses, the essence of which is, “What I really meant to say is (see the amended claim set).”
The Three-Legged Stool
Here’s an example to get us started. You’ve interviewed the inventors, examined the prior art, and then drafted the following claim:
1. An office stool comprising:
a first leg;
a second leg; and
a third leg.
Before basking in glory or ringing up the Nobel Foundation in Stockholm (+46 (0)8 663 09 20), why don’t you have your colleague look over your work? This colleague may politely ask the following questions about your life’s work:
[1] What is the purpose of the word “office” in the preamble? Does it narrow the scope of the prior art by eliminating from consideration the field of “non-office” stools? But ontologically, can’t an “office” stool be moved to the kitchen nook and thus become a “non-office” stool? Does “office” simply and mindlessly repeat the inventor’s language without more? There must be a good reason for every word in a claim: Maybe there is one here, but the patent drafter must be aware of that reason.
[2] How many legs does the stool have? While a layperson would say three, a patent drafter should not be a layperson with respect to claim language. The technical answer is: from at least one to as many as will fit in some conceivable universe. Hmmm, why is that, you retort? For the upper unbounded bound (and every patent practitioner should know this without conscious thought), “comprising” means “including at least the listed elements but possibly a whole lot more.” The answer for the lower bound is trickier. While the ordinals “first,” “second,” and “third” are presumably meant to distinguish three legs, the language is insufficient for that, as these three ordinals may be interpreted, especially by the examiner when searching the prior art, as three names for the same leg (or portions of the same leg). Although you might strongly disagree with the examiner on such an interpretation, it is not unheard of.
But that’s ridiculous in the current instance, you say! A one-legged stool makes no sense! The prior art disagrees: https://iansutton.com/safety-moments/safety-moment-83-one-legged-stool.
[3] Does the claimed stool include a rhinoceros? It can, by the “comprising” language (see question (2) above), but we guess it probably doesn’t. Still, it is important for the claim drafter to know the answer, if it turns out to be important to exclude prior art references of stools including rhinoceros. This introduces an ongoing theme: The primary purpose of a claim is not to describe an invention; rather, it is to distinguish the invention from the prior art.
[4] Do the listed elements have any relationship one with another? As stated, this claim can be rejected as simply a “bag of parts,” of which Ikea may be proud but which does not fulfill the “promise” of the preamble to describe a stool. The parts must be assembled in the claim (unless you specifically claim a kit for making a stool). Because the legs probably do not attach to one another (actually, they could, in a folding camp stool), then the claim may need to include a “seat” element for the legs to attach to.
Keeping the above points in mind, a redrafted claim might look like:
1. A stool comprising:
a seat; and
distinct first, second, and third legs,
wherein each of the first, second, and third legs is fixedly connected to the seat.
Better?
(Note that, while claim drafting is all about distinguishing the invention from the prior art, this series of posts focuses on strictly proper claim formatting and, thus, to keep the examples simple, will rarely be concerned with the actual teachings of the prior art.)