ROBERT E. MALM, Ph.D

ATTORNEY AT LAW

CLAIMCRAFTED™ PATENT APPLICATIONS

HOW TO COLLABORATE WITH YOUR PATENT ATTORNEY

Before I became a patent attorney, I worked for a number of high-tech corporations. During those years, I became acquainted with a number of patent attorneys in the course of my inventing activities.

My usual practice was to disclose an invention to the patent department in the form of a technical report that also served to document the work performed for internal administrative purposes. The patent department would pass the technical report to an outside patent attorney who, in the course of time, would produce a patent specification for me to review.

A patent specification, as many of you know, is a document that describes an invention in both technical and legal terms. If the United States Patent and Trademark Office decides that the invention is patentable, the specification becomes the text of the "letters patent" that the inventor receives as evidence of his patent. The inventor, when called upon to review his patent attorney's work, is confronted with two types of material. The technical description that tells the public how to make and use his invention and the claims that serve as the legal definition of his invention. I never had any problem reviewing the technical description. It was usually a reproduction of sorts of my technical report and I simply checked it for accuracy.

The claims were another matter. I could recognize my invention in the words of the claims, but the claims seemed redundant and I did not understand the logic of how they all fitted together. Moreover, I had no idea as to the quality of the claims. By quality, I mean the degree to which a set of claims perform their intended purpose of preventing others from making, selling, and using an invention.

CREATING QUALITY CLAIMS

It is only since I became a patent attorney that I have come to realize that there is such a thing as quality claims. In my inventing days, I had always assumed that writing claims was more or less an automated response by a patent attorney to an inventor's disclosure. I felt that claims were like cookies—they are basically the same regardless of who wields the cookie cutter.

There is an element of truth in this feeling. When true collaboration between inventor and attorney does occur, it doesn't matter who "wields the cookie cutter." Unfortunately, in most instances genuine collaboration does not occur. The inventor feels that his duty is done once he has disclosed to his patent attorney a species of his invention—his so-called preferred embodiment. In many instances, however, his attorney is incapable of identifying the genus of the inventor's species and is unwilling to take the time and expend the effort necessary to extract the answer from the inventor. 

I have used two words—"genus" and "species"—with which every inventor should be familiar since they provide one of the keys to quality claims. The terms, of course, have their origin in biology, where "genus" refers to a major subdivision of a family or subfamily in the classification of plants and animals and "species" refers to a member of the sub-division. In the patent context, a genus is an invention that can be embodied in a number of different forms called species. For example, a fastener—something that fastens two things together—is a genus, and four species of the genus are a screw, a nut and bolt, a nail, and a rivet.

Let us assume that none of these fasteners is presently known or used and that you have invented a nail. You describe your invention to your patent attorney and he writes the following claim:

Claim 1: A device for fastening two boards together comprising an elongated cylindrical body, one end of the body tapering to a point, the other end of the body terminating in a cylindrical head, the head being larger in diameter than the body.

You read the claim and congratulate yourself and your attorney. He has claimed exactly what you had described. Perfect collaboration between inventor and attorney? Hardly.

THE GENUS CLAIM

The problem here is that both you and your attorney have focused on the structure of the invention and have ignored the functions being performed. What your attorney should have done is to ask you how the nail performs its fastening function. The answer to this question should lead the attorney to a genus claim.

If you had been asked the question, you would probably have answered somewhat as follows:

The friction between the body of the nail and the two boards causes the body of the nail to exert a frictional force on the first board along the longitudinal axis of the nail in the direction of the second board and vice versa.

Your attorney now decides a second claim is necessary.

Claim 2: A device for fastening a first object to a second object, the device comprising an elongated body having two ends, one end having a means for exerting a force on the first object along the axis of the body in the direction of the second object, the other end having a means for exerting a force on the second object along the axis of the body in the direction of the first object.

Now we have a genus claim to your invention and potentially a more valuable patent. Note that your attorney now phrases the claim in terms of objects rather than boards, thereby giving the claim a more general flavor.

But your attorney should not stop here. He should ask himself (and you, if necessary) if there might be a more encompassing genus claim and whether any of the limitations of Claim 2 could be removed.

If the attorney is clever enough to look at the functions performed by the nail without becoming enmeshed in its structure, he will recognize that the nail body is not an essential element to performing the functions of the nail. He may then decide that a third claim would be appropriate.

Claim 3: An apparatus for fastening a first thing to a second thing, the apparatus comprising a means for exerting a force on the first thing along an axis in the direction of the second thing and a means for exerting a force on the second thing along the axis in the direction of the first thing.

It would appear that your attorney has gone as far as he can in generating genus claims. It would seem that the exertion of opposing forces along a common axis is just about as general a description of a fastener as one can get.

THE SPECIES CLAIM

Is the attorney now finished? No, no, no! At this point, he should attempt to stimulate your inventive juices so as to cause you to come up with other species of your invention. He does this by asking the question, "Is there any other way besides a nail that you could perform the fastening function of Claim 2?"

You might respond, "I can't think of any." In this case, your attorney might try asking other probing questions. If you, as the inventor, cannot come up with other species, the collaborative effort between you and your attorney comes to an end. Even without additional species claims, you and your attorney are to be congratulated. You have at least reached the point of having two genus claims and a species claim.

On the other hand, your attorney's efforts in focusing your attention on the functions performed by the nail rather than on its structure might cause you to think about some way of applying forces to the two boards that does not involve friction. You might ask yourself, "How about using an elongated body with a head on each end to apply the forces?" Good—you now have another species of your invention for your attorney to claim. (You've just invented the rivet. Given this type of thinking, you might even invent the structure of a screw or a nut and bolt.)

Depending on your inventiveness and the effectiveness of your attorney's prodding, you may end up with significant extensions of your invention to other structures besides a nail.

Is it possible to go any further? Possibly. Your attorney should next ask you to think of species of the Claim 3 genus that would not be included under the Claim 2 genus.

You ask yourself, "How do I apply forces to two things and hold them together other than by a "device comprising an elongated body having two ends?"

"Simple," you say . . . and describe a pair of bookends.

At this point, your attorney dampens your enthusiasm by pointing out that bookends are well known. Things that are already known or used by the public are not patentable and since bookends do indeed read on Claim 3, your attorney concludes that Claim 3 claims your invention too broadly and must be discarded.

REVIEW YOUR CLAIMS

What I have attempted to illustrate with this simplistic example based on fasteners is the collaborative process that should go on between inventors and their patent attorneys. The process usually begins with an inventor describing an embodiment of his invention to his patent attorney in terms of structure. Ideally, the inventor should provide his attorney with a functional description as well. If the inventor does not, his attorney should attempt to obtain a functional description by the adroit questioning of the inventor.

After a functional description is obtained, the inventor should be encouraged to come up with other embodiments of his invention that fall within the functional description.

This brings us back to the imperfect collaborations that usually take place between inventors and their patent attorneys. How do you tell if you've had a meaningful collaboration? Review your claims. If you do not see any "means plus function" claims, chances are you have not spelled out the genus of your invention to your attorney and he was not able to discover it on his own.

In the future, engage your attorney in discussions of genuses and species of your invention. He will be pleased by your familiarity with the terms and the result may be a truly outstanding patent.

© 2002 Robert Malm