The “Nearly Ideal Patent” – A teacher’s tool
To teach me the formulation of patent claims, my supervisor told me a long time ago about the “nearly ideal patent”. The “nearly ideal patent” is based on claims with detail-rich language and many structural features. This facilitates an understanding of the invention by the (independent) claims alone, without having to look at the figures or reading the description of the patent. This type of claim offers many advantages to the “nearly ideal patent”:
– The inventor/owner of the patent can easily identify her/his invention from the most important part of the patent (which are the independent claims).
– The examiner will profit from the same effect and most likely will find no prior art at all.
– This will delight the inventor/owner of the patent even more, because a quick grant decision and little prosecution costs can be expected.
– Every competitor can also enjoy the patent. Because she/he can easily determine that her/his products or services do not implement all of the many detail-rich claim-features, and therefore do not infringe. A competitor even gets a free suggestion from the patent on how to develop and commercialize unprotected embodiments.
The advantages for competitors make it clear why my supervisor only termed such a patent as “nearly ideal”. It was an ironic exaggeration. – The problem with detailed patent claims is that they confer no scope of protection at all. In effect, the constitute a scam investment (unless a numbers-only-driven patent portfolio is preferred). This mistake will continue to cost money until the patent owner recognizes the problem, abandons the patent for other reasons, or the lifetime of the patent ends (for a German patent this would result in wasted renewal fees of about 13.000 Euro).
Five Rules for Drafting Patent Claims
But how does a good patent claim set look like? And what is an optimal content for an independent claim? This is not an easy question. In the following five important aspects for drafting patent claims are explained: Abstraction, usability, examinability, enforceability, and adaptability. By considering these aspects, a patent will provide the broad scope of protection that an applicant deserves for an invention and that justifies the investment.
First of all, a patent claim must formulate an abstraction of the embodiments of the invention. Only by an abstraction a scope of protection can be provided that goes beyond the implementations reported by the inventor. The need for abstraction has been determined several times by the German Federal Court of Justice (FCJ). In the decision “Dipeptidyl-Peptidase-Inhibitors” from 2013 the court stated:
“The patent applicant is in principle at liberty not to limit the protection by the claims to embodiments expressly described in the documents originally filed, but to make certain generalizations, provided that this takes account of the legitimate concern to cover the invention in its entirety.“
In other words, a claim should be an abstraction of the embodiments. But it must not be an abstraction of the invention. The inventor has the right to protect the invention in its full scope. The FCJ even saw it as legitimate if this abstraction comprises embodiments that are not working or that cannot be carried out. This requirement, also known as “enablement”, holds for a patent, but not for a claim.
Maximizing the scope of protection leads to a first rule for drafting a good patent claim: An independent claim should only comprise features that exist in every embodiment of the invention. As easy as this sounds, in practice this is difficult. The identification of the invention independent from any of its single embodiments is one of the most difficult tasks during the drafting process.
It also turns out that a distillation of the invention from its embodiments makes the drafting process difficult for the inventor/owner of the patent. As stated in the first advantage above, the inventor/owner needs to understand what the subject matter of the claim is. Because it should be used by him/her. Often the inventor/owner of the patent will be the only one who scans the market for infringing products. If she/he is not sure about the scope-of-protection conferred by the patent an effective identification of infringing products or services is not possible.
Therefore, as a second rule it can be stated that: An inventor/owner should always be able to understand what the broadest form of the invention is and how it is described by an independent claim. The fact that different patent owners or different in-house counsels can be responsible for the patent throughout its lifetime illustrates how difficult this can be.
A patent application drafted with the two above rules in mind could already lead to a decent patent. However, the perspective of an examiner at the patent office still misses. The examiner is the first instance that grants or rejects an independent claim. Examiners care for material aspects of the patent, such as novelty, inventive step and enabling disclosure. Examiners also care for formal matters such as clarity of the claimed scope-of-protection. They need to make sure that the society knows what is protected. Although the requirement of clarity is legally well defined it is often confused with broadness of the patent claim.
Even more difficult are claims on the basis of which a state-of-the-art search is difficult for an examiner to perform. The prior art search is the main task of the examiner. If this is made difficult by the claim language, the examiner will make the granting of the patent difficult. The examiner is a human being with rational and subjective, i.e. less rational, evaluations. From this human being a positive decision is desired.
This leads to a third rule: Claim language should provide a clear impression of the invention and facilitate a prior art search by an examiner. A problem of this rule is that it might be add odds with the first rule. Because a good impression is provided by details. And details – at least if they belong to certain embodiments only – are constraining the scope of protection and facilitate unprotected implementations of the invention.
This leads to a further requirement of a good patent claim: It must be enforceable. Enforceability decreases with scope of protection and in particular with claim details that are hard to proof before a court or even more in informal licensing discussions with an infringer. An infringer will do everything to argue that not all claim details are implemented. Claim features that are not abstracted and that are related to certain structures of an embodiment are the most dangerous details in this aspect.
Please remember, all features of a claim have to be implemented for an infringing product or service. Even in a broad claim, a single cumbersome detail could render the claim unenforceable. This is even more difficult if a standard essential patent (SEP) is sought. More and more standards seem to be deliberately written in a broad language, in order to avoid patenting the standard. Hence, the claim language must be broader in order to cover the respective feature of a standard contribution to be submitted.
A fourth rule can hence be formulated: A claim should be devoid of any bottlenecks or hard-to-proof features. The enforcement/litigation perspective is often forgotten in the drafting process. Because it only emerges far in the future. And because the drafting patent attorney might be unfamiliar with licensing and litigation. Therefore he/she cannot feedback information of these experiences into the drafting process. However, it should be made clear that the main motivation for the investment in a patent is the protection of the invention – and protection is the effect of enforceability.
The FCJ has acknowledged the difficulties when producing claims. In the decision “Communication Channel” from 2014 the court stated:
“Insofar as claims are already formulated in an application, these have […] only a provisional character. It is only in the course of the subsequent examination procedure that it is necessary to work out what is protectable in the light of the prior art and for which claims the applicant seeks protection.”
As a consequence, the claims of a patent application have not to perfectly define the scope-of-protection when initially submitting the application. Submitting perfect claims initially is even impossible because of the lacking information that will be provided by the examiner (e.g. prior art).
Initial claims of the patent application should provide an adaptable starting point in order to arrive at a broad, intelligible, and enforceable claim set for the patent, i.e. at the end of the granting process or of an opposition procedure. This should be the fifth rule for drafting claims for a patent application.
In sum, the five rules are:
1. An independent claim must only comprise features that exist in all embodiments of the invention.
2. An inventor/owner must always be able to understand what the broadest form of the invention is. And she/he should know how it is protected by an independent claim.
3. Claim language must provide a clear impression of the invention and facilitate a prior art search by an examiner.
4. A claims must be devoid of any bottlenecks or hard-to-proof features.
5. Initial claims of a patent application have to provide an adaptable starting point for the granting procedure. The goal is to arrive at a broad, intelligible, and enforceable claim set for a patent.