Lesson 2.  The Claim                   site map

           Good fences make good neighbors.   Robert Frost

A patent claim is a single sentence that lists the interrelated building blocks or steps of your invention and in doing so, tells others what you own.  It's the legal fence that surrounds your property.

In order to construct the best possible patent claim one must emulate the mental skills of three famous thinkers:  George Boole, Bruce Lee, and Vito Corleone.

     George Boole                                                  Bruce Lee                                            Vito Corleone

George Boole*,our eponymous benefactor of Boolean logic, developed ideas

            of logic regarding groups and how groups could overlap.  The best possible patent claim

            features the smallest number of the largest possible groups that adequately define your idea.

          *George Boole was married to the former Mary Everest who's uncle George was the eponymous British

             surveyor of the world's tallest mountain (known at the time as Peak 15). 

George Boole and perpetual motion machines.

Bruce Lee.   Bruce Lee said "True refinement seeks simplicity"  

                      He also said:   "..become water."

                    "Empty your mind, be formless, shapeless--like water.

                    Now you put water into a cup, it becomes the cup,

                    You put it in a bottle, it becomes the bottle,

                    You put it in a teapot, it becomes the teapot.

                    ...Be water, my friend."

In 1895, a sixteen year old Albert Einstein wondered what would be happening if he were riding on a wave of light.   These unimaginable ponderings led him, by 1911, to his theory of relativity.  When writing your patent claim, especially for a process, you'll want to put in a little Zen time and use Bruce Lee's fluid logic to metaphysically "become" your invention and the object or substance, if applicable, that your invention acts upon in the case of a machine. 

The Nexus between Bruce Lee and George Boole regarding the Jepsom formatted claims is quite facinating.    In the world of patents you may claim your invention by how it relates to other products or processes.  Jepsom claims spook patent examiners.

Using a Jepsom claim is like putting a chip on your shoulder and daring someone to knock it off.  It's a very gutsy move.  Admit the invention that came before then add the improvement and say:  "Knock this off if you can, I dare you!!!!!"

Vito Corleone.    In The Godfather  when Tom Hagan, at the funeral for Don Vito  asked 

                               matter-of-factly of Michael "Do you know how they're going to come after

                                you?"  Michael knew, the Don had told him.

                               If your claiming what you believe to be a valuable invention, you'll want

                               to start wondering "how they're going to come after you" sooner rather

                               than later.  Good fences make good neighbors.  "Keep your enemies closer."

Don Corleone is, of course, the most important of these three thinkers.  Why? 

Along with these guys you should take Hemingway's advice and steal what you need to perfect your patent claim(s).  All published patent information is legally free for the taking, another reason why being able to read existing patent claims is so critically important.  You can't steal what you can't see.

       Ernest Hemmingway

"Grand Theft"

Stalking a claim, our hopes take flight,   for

Writing the method that's just ..oh ..so right.

Searching in e'rnest on this wondrous errand

Stealing.....the claim drafter's gerund.

Willie G.  from the posse

We'll teach you the importance of this poem in lesson 1.

Note:  Patent lawyers routinely write bad patent claims.  We'll examine them and correct them.

We will point out the bone headed mistakes that cost inventors fortunes.  Again we will

repair these disasters.  This is never done by the courts, by the various patent blogs, nowhere.

"Law cannot persuade where it cannot punish. "
                   Thomas Fuller

If patent lawyers were tarred and feathered and paraded around town when they made mistakes, the mistakes would probably tail off somewhat.

Phillips v. AWH    This is an interesting case of bad claim construction toward jail construction.

OK here's the deal:  Mr Phillips invents a way to crank out jails in a big hurry, overcrowding and all that.  A brilliant invention.  His patent lawyer got sucker punched by the examiner and amended a claim to include baffles.   The baffles were present to perform two functions:  a.  to provide load bearing structure, and b.  to act as angled (not 90 degrees) bullet deflectors!

And so these baffles, interjected in to the claim, is what brought Mr. Phillips to grief.  Don't become seduced by the brilliance of your design when you are claiming the thing.  Unless these wall panels are to be only used as a back drop for a firing squad, why cloud the claim with this kind of stuff?  Regarding the prosecution of the above patent there was only one prior patent of any weight used.  It was not load bearing.  That was Mr. Phillips invention.

    In lesson 1 we dive straight away into patent claims and how they compare and contrast with other types of property claims (explorers, prospectors, dibs etc.).  This lesson delves further into the subject and contains three more patents to read that are more complicated than those of lesson 1.  We'll look at a famous and  technically "pre-claim" pistol patent issued to Rollin White.  A patent that had they been using today's laws would have been worthless, but one that made "Smith and Wesson" household names and unfortunately made Rollin White a pauper.  Rollin White agreed to a licensing deal that paid him 25 cents per gun.  Smith and Wesson wanted an exclusive license but noooo Rollin White insisted on being able to build and sell his gun also.  S&W said O.K. but that Mr. White would have to enforce his patent in the courts to stop infringement if and when necessary.  This was his undoing.  His lawyer made out O.K. (a recurring theme). 

             The Rollin White "Repeating Fire Arm"

You wouldn't want to get into a shoot out with this weapon because once you study it's patent you'll soon discover that it's a single-shot fire arm despite it's sophisticated title.  There is also a mistake in this patent, small but it's there, we'll see if you can find it.   White's boss Samuel Colt had no interest in this patent.  We'll show you why S&W had to have it.

How to conquer claim writers block, which we refer to as "The Oxford Coma".

    Case law that deals directly with patent claims.   Markman, Festo,  and others.

As a writing assignment you won't "indict a ham sandwich" but you'll prosecute several;  ham and some pickles on french bread with Zatarans Creole mustard (simple but good)  ;  ham on wheat, mayo, lettuce and a slice of tomato;    croque monsieur etc.

     We'll pretend that you are the Earl of Sandwich and you want to patent a deli's worth of sandwiches.  You'll use independent claims, dependent claims, a German claim (extra sauerkraut) and a Markush group of condiments.  How about a nice pastrami and Swiss on rye, mustard, no mayo, with at least one slice of a pickle.  You're claim will be broad enough to cover even a corn dog.

© 2002 Devinet Inc.