Claiming Intellectual Property

By Dennis Crouch

The chart above comes from Jeannie Fromer's 2009 article titled Claiming Intellectual Property. I like to use the chart in my patent law course when walking through potential ways that patent claims could be drafted. I wonder how our system would be different if a patentee had to plunk-down a working model before obtaining patent protection and then simply received exclusive rights covering that work and non-transformative derivative works.

73 thoughts on “Claiming Intellectual Property

  1. anon: it is those individuals that typically are messing things up, employing spin and mischaracaterizations of law, fact and others’ posts.

    That would be you, troll.

  2. anon, consider your self on my ignore list. I hope Malcolm follows my example.

    Tried that already. Here’s what will happen, Ned: first, anon and 101E will just amp up what they already do, i.e., post l-es about our positions on various subjects and accuse us of “running away”; second, anon will simply find another commenter to troll and while trolling that commenter, anon will smear us with the same old l-es, twenty times a day.

    I ignore plenty of anon’s horsesh-t already. It really doesn’t matter one way or another whether you engage him or not. He’s a troll and his intent is to make the comments unreadable. He’s going to continue to do that with or without our “help”.

  3. AUTO RESPONSE

    The person you have directed your comment to has recognized that you had no intention to have a full adult and intellectually honest conversation to begin with and has created this autor-response to invite you to change your ways and grow up. Just a little bit.

    Thank you.

  4. perhaps we ought to boycott anon

    Ned – you already do – when my questions and points impinge on your “protected” zones (read that as third party interest zones), and conversation is scuttled (by you and yours).

    You really are not advancing anything new here.

  5. So you think I am concealing or disguising my posting…?

    Dude, at least try to make some sense, OK?

    And yes, Ned is using the term incorrectly. My pointing this out is a helpful service (that’s just me being me: helpful). Sure, it turns out that that helpfulness is typically at the expense of certain individuals, but it is those individuals that typically are messing things up, employing spin and mischaracaterizations of law, fact and others’ posts.

    There is no “playing st_pid” since your so-called “calling out” is just meaningless and vacuous posting and QQ’ing that I am shooting down one of your little circle pals.

    accuse whoever” – LOL, no wait, LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL.

    That is one of your hallmarks Malcolm.

    And what works for you? I know: [shrug] and stand by.

  6. what exactly do you think it is that I am concealing or disguising?

    Usually it’s the fact that you’re full of sh-t and trolling people just for the sake of trolling, this thread being a classic example. Ned isn’t attempting to use the term “point of novelty” incorrectly. You’re just being a willfully ignorant —hole and accusing him of holding opinions he plainly doesn’t hold and then insulting him for holding those imaginary opinions. This is one of your classic trolling methods, anon. You’ve pulled it on just about everyone here. And then you play st–pid when you are called out on it. That’s dissembling.

    At the same time, when presented with one of your own direct quotes and asked to clarify or support it, you typically react by calling the person an id-0t. This also isn’t news to anyone.

    Lastly, when these facts are pointed out to you, instead of changing your behavior you will accuse whoever points out those facts of doing the same thing or worse. That’s yet another example of your sociopathological l-ing behavior.

    So, just to wrap up: we’re going to continue discussing the “points of novelty” of claims whenever we feel like it. If you want to make an — out of yourself by accusing us of not understanding the law when we use the term, then go right ahead. But make no mistake, anon: you’re wrong and you’re an —hole. Correction: you’re wrong and you’re a dissembling —hole. But by all means, keep digging. It’s what “works” for you.

  7. LOL – “I can deal with that fact

    Obviously not, as dealing with tht fact entails the abandonment of the canard – especially as Ned is attempting to use it.

    it’s even in the USPTO’s 101 examination guidelines

    LOL – you don’t have a link do you? Mayhap to the update for the Prometheus case?

    LOL

    “dissemble”
    dis·sem·ble
    /diˈsembəl/
    Verb
    1.Conceal one’s true motives, feelings, or beliefs.
    2.Disguise or conceal (a feeling or intention).

    I have asked already in a different context (but you ran away there too): what exactly do you think it is that I am concealing or disguising?

    Or are you just being Malcolm?

  8. Until both of you can deal with the FACT that a claim (a fully valid and patent eligible claim) can be composed ENTIRELY of elements that are not new

    I can deal with that fact and so can Ned. I’m not sure about Ned but I’ve admitted this basic fact directly to you probably dozens of times over the years you’ve spent trolling this blog. You really are a very special kind of dissembling —hole. Are you sure you didn’t migrate here from Answers in Genesis or some other creationist website? It would explain so much.

    As you and everyone else (including the Supreme Court, the PTO, the Federal Circuit and District Courts in every state) understands, claims often differ from the prior art only by the recitation of one new element. Prometheus’ claims are a classic example. The only new element in that claim was a method thinking about a correlation. The other steps (in the order recited) were old. Mental steps are abstractions, regardless of whether mental step involves thinking about a “law of nature” or anything else. The Supreme Court held, therefore, that the claim in Prometheus was effectively a claim to the abstraction itself and therefore ineligible under 101.

    This is all well-understood and not controversial at all. Why, it’s even in the USPTO’s 101 examination guidelines (which matters to you a lot, I know, except when it doesn’t).

    Anyway, anon, we’re all going to keep referring to elements as “the point of novelty” in a claim whenever that element is the only novel feature in the claim. Sometimes that new element may even be a new combination of two old sub-elements. You’ll just need to grow up and deal with it. Or try to grow up anyway. Ah, heck, just be your usual dissembling —hole self. It’s what “works” for you.

  9. Paul, I agree that if prior art were a problem, one would have to add more detail. I did later in this thread to distinguish a pitchfork.

    I think it is hard to define structure like a fork using only structure and not function. But that is what I try to do in drafting claims. It makes infringement much easier to prove.

  10. Why would I even want to coin a phrase for that? What purpose would that serve in the discussions in which Ned wants to abuse his term of choice?

    Until both of you can deal with the FACT that a claim (a fully valid and patent eligible claim) can be composed ENTIRELY of elements that are not new, the canard of Point of Novelty needs to rest in the tr@sh heap.

  11. This claim is entirely structural with no hint of functionality.

    What is a handle. And do you have the handle of a garden spade in mind? if not, why not?

    What are prongs? Are cylindrical members prongs? Is there any point to the pointed end?

    Should the prongs be in any particular direction relative to the handle? Should they stick out sideways? Or backwards? Can they be detachable?

    What is the utility of a fork, being an item of tableware, as compared to a pitchfork? Are the prongs on a pitchfork used for the same purpose as the prongs on a fork (eating iron?)

    I would give your claim 3.5/10 because there is no defined field of endeavour, the relationship between the prongs and the handle is left undefined and the functionality of the prongs is also left undefined.

    It helps quite a lot to think about the technical problem that is solved by a fork (eating iron).

  12. Point of Novelty is … claimed to be “just a way of discussing things.”

    Is there a different phrase you’d like everyone to use to describe the only new element in a claim that otherwise reads on the prior art?

  13. I make no mistake Ned. Quite in fact, it is you that makes the mistake in how you are attempting to use the term.

    Please stop the misuse and abuse.

    Thanks.

  14. No, anon, it was misused by the PTO for obviousness analysis.  That does not mean that it does not apply in 101 or 112 analysis.  That is where you make you mistake.

     
    Sent from Windows Mail
     

  15. Ned,

    Point of Novelty is a canard, misused to great extent and then claimed to be “just a way of discussing things.”

    Sorry – but it has no place in how you are attempting to use it under current law.

    I already provided a cite on this (let’s let the “humming-bird-eyed” Leopold find that case cite (and it is even post 1952 to boot).

  16. point of novelty…

    CANARD.

    Ned, the claim as a whole is your “point of novelty.”

    Can you stop with the canards already?

  17. Les, function can help clarify the structure claimed, indeed. However, if prongs having handles is old, the point of novelty has to be defined in structure.

    I was thinking that neither of proffered examples did that.

    Try this:

    1. Article of manufacture, comprising;

    a shaft having a shaft direction, the shaft having a length adapted for easy grasping by a human hand; and

    a set of prongs connected to the shaft and extending in the shaft direction, each prong of the set of prongs having a length substantially less than the length of the shaft.

  18. I thought we were pretending forks were new.

    I was suggesting that your minimalist claims would have never the less read on old combs and con cob holders and that you could have recited additional structure to read away from them.

    Also, I do think recited intended use can sometimes distinguish. For example, –for aiding in the act of human food consumption– might imply a size range and serve to read away from Neptune’s or Old McDonald’s accoutrement.

  19. read as asked

    I read your comment, anon. I’m asking you to back it up. It appears you can’t do that so instead you insult the person who requested clarification from you.

    Typical.

  20. Extending the hypothetical a bit farther, would it make a difference if one had to demonstrate an actual (or realistically intended within six months) use in commerce while limiting one’s exclusivity to a specific area and means of use, until one can (later) demonstrate that the innovation is famous and deserving of essentially eternal protection?

    At least that hypothetical refers to another part of the same agency… and, for that matter, another part of the same branch of government…

  21. Got busted?

    Not at all.

    Once again Malcolm, you haven’t bothered to read as asked and all you can do is accuse and attempt some odd spin.

    Maybe it’s better than the sick racial ‘humor’ you delight in…

    Try reading before asking for something that should become painfully evident.

    Hey, you figure out the Supreme Court case yet? Still waiting on your choice there: self-defeat or ignorance.

  22. Seems like this paper has excessively focused on only one of the statutory classes. Would have expected to see a diagram for each of the other classes.

    I also suspect that there are other aspects/views, that are outside of the “box” this approach is imposing.

  23. Yeah, it’s amazing all right. Patents weren’t available until the middle ages, that’s why forks weren’t invented until then. Without patents, there would be no innovation in any technology. The Chinese didn’t have patents, so they never got the forks – just chop sticks.

    Comment of the Year Nominee

  24. (sigh)

    Try reading the article, Malcolm.

    Aw, it’s only Monday and anon already got busted for his vile “smear and run” strategy.

    What’s the matter, anon? Did your machine translation program crash on you again? Are you too “busy” smearing those bad leftist academics on some other thread to provide even a single specific example showing us why Fromer’s “basis” (basis for what, exactly?) is “incestuous” and therefore “vacuous” or otherwise wrong?

  25. Convince people they need 5 blades (this is just one example), patent the 5 bladed razor, and you’ve “got something” commercially.

    You don’t need the patent if you convince people that the cheaper razor with 1 to 4 blades is a better value (probably not very difficult to do that). That’s called “truth in advertising”.

    That’s my point.

    Gillette has more than 100 patents on razors in the U.S. alone (including multi-blade)

    As is the case in the old and crowded field of coated stents (“my stent has four coatings and tastes like bubblegum!”), you can bet your life that most of those patents are obvious and invalid j-nk.

  26. Yeah, it’s amazing all right. Patents weren’t available until the middle ages, that’s why forks weren’t invented until then. Without patents, there would be no innovation in any technology. The Chinese didn’t have patents, so they never got the forks – just chop sticks.

  27. On the main question, I am somewhat of the view that all claims should be construed to cover the corresponding structure and equivalents. The discussion with the examiner primarily is for the purpose of determining how much of that structure is necessary to define over the prior art. Once that is determined, the patent should cover that and equivalents.

    But we know, from cases such as Morse, that once claims were invented, that applicants tried to abstract the essence of their invention into a principle such that all apparatus or methods thereafter invented would be covered if they embodied the principle. But such a level of abstraction is not allowed.

    So, we have the fork. Do we claim the fork in terms of what it does, leaving the structural details to one side. Or do we claim the fork in terms of its structure and rely on the doctrine of equivalents?

    I know what the Supreme Court thinks. But nevertheless, patent attorneys will not give up.

  28. What is the essence of a “fork”? Is it: A tool for lifting solid material, the tool exhibiting a plurality of elongate prongs arranged side by side to define a platform on which the material can be lifted. For my illustrated embodiment I suggest a fork lift truck.

  29. Paul, should we also assume that pitchforks of all varieties were long known — used for pitching bales of hay, or for stabbing and lifting fish from sea, or in combat in the arena as a weapon.

    That assumption would make the drafting problem just a bit harder, I think.

    Forks are useful for holding your meat while carving. For lifting meat and other stabbed materials. For cradling other types like a spoon. But all of these uses were somewhat old considering the prior art.

    It is amazing that forks were not invented until the middle ages.

  30. Things that disappoint me in this academic Paper include:

    1. Copyright only protects against copying whereas patents protect even against independent conception. Central claiming is the only way to define copyright works whereas peripheral claiming is the only way (these days) to define patentable inventions in crowded technical fields.

    2. Examining for patentability involves searching the state of the art. Looking at the claim that defines the subject matter, what comes after and infringes that claim would, if coming before, take away its novelty. Thus, on claim construction the patent owner has to sail between the rocks of Scylla (no infringement) and Charybdis (no validity). Against this reality, nothing but peripheral claiming will serve as a practically useful definition of the invention of a utility patent. Why is this reality not discussed in the Paper?

    3. 40 years ago, the EPC set a regime that is between central and peripheral claiming. So why does the author suppose that the choice is confined to a binary one, between 100% central and 100% peripheral claiming?

  31. This is a lovely drafting problm demanding a thoughtful answer.

    Why are forks generically the way that they are? What is the functionality. What would a reasonable claim look like?

    I have some ideas but challenge readers to say what the technical advance in a fork is and to come up with a decent claim.

  32. Not sure what your point is, but Gillette has more than 100 patents on razors in the U.S. alone (including multi-blade)…and currently carries more than 70 percent market share.

    Convince people they need 5 blades (this is just one example), patent the 5 bladed razor, and you’ve “got something” commercially. That is, you end up with one of the most profitable companies in the world.

  33. Note, I try to keep it simple because, after all, one has to construe every fricken word, and then prove infringement. The more words one has in a claim, the worse the problem becomes.

  34. Pitchforks were, I think, known prior to the “invention” of the fork for eating. A fork for eating uses an old design for a new purpose, but is somewhat smaller.

    My question to the folks here, can I re-patent the fork by claiming a new use, or do I need to limit the claims to a process of using a fork for eating?

  35. You missed nothing. I like to illustrate the broadness of claims in rejections, this is the rejection I would make. I would also site no other art, leaving the ball in applicant’s court to come up with a tight claim or face final. Quick, simple, move on to the next one. This is how the game of poker is played. As to the other broader claim above I would use a crow-bar.

  36. Are you implying a tire iron doesn’t read on the claim language here? Just because all the forks illustrated here show prongs in the same plane as the other prongs and the plane of prongs parallel to the longitudinal handle axis does not mean that its in the claim language yet. Assuming tire irons predate forks in this exercise I think its an excellent rejection highlighting where the drafter left more ambiguity than he wanted.

    I will admit most tire irons are blunt, but bluntness is subjective to medium ton pierces and force applied. You show an excellent example of how broadly food can be construed. Maybe there is better art like a chopstick tapered on both sides or a sword with sharpened pommel or guards, but I think tire iron reads.

    What am I missing in your post?

  37. Rejection by examiner would be: Reads on X-shaped tire iron, obvious to make out of material of choice. For carrying food is intended use, tire iron is capable of piercing a cat.

  38. I was thinking of sticks

    That works too, but then you can’t tell the patentee that he has an invalid patent on his hands.

  39. I suppose you’re thinking of those four prongs at the end of your arm

    I was thinking of sticks (but again, the functional terms “implement” or “instrument” would hardly suffice to make a fork “different in kind” from a hand).

  40. And surely merely adding the functional limitation “made out of sterling silver” would not make the implement described by the first claim “different in kind” from objects that belong to “nature’s warehouse.”

    I suppose you’re thinking of those four prongs at the end of your arm that are routinely used for piercing, carrying, eating, and serving food.

    Quite a trivial choice of materials, if you don’t value the articulable fifth prong. Surely, “different in kind” requires more than that.

  41. “simply received exclusive rights covering that work and non-transformative derivative works”

    “simply”, lol

  42. without the possiblity to patent those catheter designs though, they just would not ever have been created.

    I doubt that’s true. Does the same logic apply to multi-blade razors?

  43. Is the spork covered in this patent?

    That would depend on the construction of the term “prong”.

    The second claim is ineligible under 101 according to the “warehouse of nature” theory.

    And surely merely adding the functional limitation “made out of sterling silver” would not make the implement described by the first claim “different in kind” from objects that belong to “nature’s warehouse.”

    Right?

  44. Applicants DO wish to have ALL claims examined, and DO pay to have ALL claims examined, and DO pay to have ALL claims issued.

    LOL – if anyone actually agrees with this claptrap, they need to have their head examined.

    Case in point (above).

  45. No 6,

    Clearly you do not understand the law and the fact that the suggestion of plunking down a working model would violate the portion of law that I provided.

    But thanks for showcasing your (minimal) understanding, as it is.

  46. Agreed 6. You do indeed waste enormous resources. I never did understand why the USPTO doesn’t examine the claim set efficiently, like they do in the EPO.

  47. The point about using forks as a teaching example is that there can never be a class member dim enough not to know that forks come in a great many different designs. Because everybody is familiar with forks. Not every class member knows about subject matter that is so new that it is patentable today. 4G protocols, enantiomers, stent delivery systems, and so on.

    But this blog seems to attract posters who are dim enough not to be able to distinguish between a teaching example and subject matter that is still patentable in real life. Remove “fork” from your first sentence and you might be on to something. There are as many designs of stent delivery catheter as there are fork designs. Without the latest stent delivery catheter designs however, a great many happily stented people would no longer be alive. without the possiblity to patent those catheter designs though, they just would not ever have been created. OK?

  48. “statement in its Abstract that dependent claims are a vestige of how patent law used to operate.”

    I have little doubt. Why a court would have allowed them to spring up under the current claiming regime is not immediately apparent, although they plainly did pop up under the old system.

    Like much that beleaguers our modern world and helps to hold it back so it is with depending claims in their current iteration. Plainly we would be better off only considering claims in the office that the applicant might wish to have issued, but we currently waste enormous examination resources on millions of claims per year no applicant would even pay to have issued.

  49. “101 would be more difficult to meet”

    In other words 101 would all of a sudden have it’s proper scope and effect.

    To this, anon replies: no thank you sir.

    “”or any new and useful improvement thereof” would require permission from the (prior) patent holders for this “model” system to work, as opposed to the availability of constructive reduction to practice.”

    We could make an exception if it matters that much to you. I wonder why this wasn’t a big issue in the previous patent system where they did have to plunk down a working model?

  50. Patents = increased innovation + more jobs + wealth creation. If it wasn’t for patents, we wouldn’t have so many different and technologically innovative fork designs – Amazing. I just get goosebumps thinking about it. If it were not for patents, no forks would exist – we would be eating food with our hands and feet.

  51. As I understand it, in jurisdictions that use central claiming like the EPO the central claim is given a penumbra of scope, analogous to the US’s doctrine of equivalents.

    Another aspect of EPO practice is you can’t reword the claims to add wording not already in the spec. In the hypothetical, if you always called it a fork in the spec, you can’t, post-filing, amend that to silverware or utensil.

    These idiosyncracies of a first to filing jurisdiction were not adopted in AIA… thank goodness, but it means the holy grail of harmonization remains a chimera.

  52. Haven’t read the 78 page Paper yet but one thing that leaves me keen to do so is the statement in its Abstract that dependent claims are a vestige of how patent law used to operate. Wow!

    Outside the USA, under First to File law, careful attention to dependent claim drafting is of ever-increasing importance for anyone who wants to get for the client a proper scope of protection that is commensurate with its patentable contribution to the useful arts.

  53. I wonder how our system would be different if a patentee had to plunk-down a working model

    101 would be more difficult to meet: “or any new and useful improvement thereof” would require permission from the (prior) patent holders for this “model” system to work, as opposed to the availability of constructive reduction to practice.

    No thank you.

  54. Like a synecdoche eh Dennis. Reciting the part as a way to define the whole. I refer to my road vehicle as my “wheels” and my herd as “30 head” of cattle. Classic example in European patent law is “helical spring” to identify the rotatory hair-plucking member in the depilatory instruments of Remington and others. It turned out that a bendy slitty rubber rod works just as well.

    Of course the 1973 European Patent Convention piloted a course between the former German (and Asian) “central” claiming and the former English (and British Empire) “peripheral” claiming. Some would say that 1973 step set a benchmark for claim construction, that serves ever better, for the entire planet. But few when in the USA would dare to suggest that.

  55. I think the devil is in the “non-transformative” term, which is just another way to ask where the claims are too broad.

    And, just plunking down something then would create the same problems as claims in that a copier could make lots of cosmetic changes and then say they are not infringing and the patentee would then have to define what parts of the object are important and why the infringer infringes. All this post-copying.

    I don’t think there is a free lunch.

Comments are closed.