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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello and welcome to the Patent Pending Made Simple podcast. I'm your host Samar Shah, and with me is Jamie Brophy. Jamie, how are you? Hey, Samar. I am doing good. How are you doing? I am doing all right. We are wrapping up the Samar vacations here. My kids are going back to school, so I'm getting back into a normal schedule again.
Yep, same here. Mine are kind of trickling back. I've got one. One back and two start next week, so Yep. The end of Samar. It's always very bittersweet. Yeah. I'm looking forward to having my office packed. The children taken over your office over the Samar? Yes. Yeah, I don't mind it. I like for them to play around me anyways.
I like having them around. Yeah. So, but they slowly will drag in all their toys into my office over the course of the Samar and then we'll clean it all out and hopefully I'll have a clean office after that. Yay. Well, mine are a little older than yours, so mine don't take over my office, but they take over my internet.
Everything is so slow. So I have that to look forward to. Yeah. Well today we have a interesting topic, which I think is very illegal in nature, right? Um, this is the one when we start talking about it, a lot of inventors just kind of glaze over. So this is gonna be a tricky one, but I think we're gonna do it better than I have ever heard anyone talk about this topic and, um, hopeful and very confident that we're gonna make this interesting, even though it's a kind of a dense topic or can be sometimes.
Absolutely, and of course we're gonna do it better. So today we're gonna be talking about the claims section of the application, which it does get kind of complicated, but it's really, I would say, the most important part of the application. So it's an important topic, particularly if you're writing your own patent application.
You wanna pay a lot of attention to those claims. So we're gonna talk about what the claims are and go through some examples. So. I think this is gonna be a really, really helpful topic. That's right. Yeah. You know, every time I think about this topic and presenting it, I am reminded of my law school days.
My law school patent law professor was this guy named Chisholm, and he's also considered the godfather of patent law. Okay. He's written lots of textbooks and treatises on patent law and actually taught at my law school and when he was, he's since retired, but when he was teaching there. My law school was considered the number one program in the country for patent law.
And it was because of him, because he was such a kind of a renowned scholar in this space. But I remember the first day of class and he was like, well, we're gonna be spending 60% of our classroom time talking about claims. And every time I think about this, and when I write a patent application as well, I spend over 60% of my time writing claims.
So I have that kind of voice and that face in the back of my head every time I think about this. So hopefully we'll spend 60% of our time talking about claims here as well. Yeah, yeah, absolutely. Yeah, that's a good point, Jamie. And just to set the stage, would you agree with that? You would, you spend 50 to 60% of your time writing claims in a pan application?
I would agree with that. Usually when I'm writing a patent application, I start with the claims, so I'll get a good set of claims and then I'll kind of edit it, revise it, and then I'll start on the rest of the application. And while I'm writing the rest of the application, a lot of times I revise the claims during that process as well.
So yeah, I definitely spend the bulk of my time on the claims. Yeah. You know, this was a healthy debate at my law firm that I previously worked at is what do attorneys write first? Do they write the specification or do they write the claims? And a sure sign that somebody was a very junior associate was that they would write the specification first.
Then write the claims. 'cause all the senior attorneys and partners would all say claims first and then the spec. So there is some of that tension here, but to me it's an iterative process. Right. I also write claims first, and then I write the spec to support the claims. But it usually is, they inform each other, I would say.
Yeah. Yeah, definitely. So I don't know if that is something that we should talk about here before. I know we're kind of early here, but what about inventors who are writing their own patent application? What would you recommend to them? Should they think about claims first? Should they write, think about the specification or the invention first.
What would you tell them? That's a little tricky, and I think it kind of depends on the invention. You know, sometimes you need to kind of. Write about it and flesh out your ideas before you have a good idea of what you want the claims to say. So yeah, that's, that's a little tricky. And like I said, I think it depends on the invention, it depends on what you know about the prior art.
If you have a good idea of what is the most unique or novel aspect of your invention and what to focus on in the claims. So I think there's a lot, it depends on a lot of different factors, but what, what would you say Samar. Yeah, I think that's the right answer. I think it really depends on how much clarity you have on your point of novelty.
I don't know if that's a commonly used term or if like we made it up, but I kind of think of the point of novelty as like the one thing that is unlikely to be in the prior art that's in your invention. If you have a really good focus and clarity on what that one thing is, it's easy to build a claim around that thing.
But if you don't, or if your point of novelty relies on. A combination of several things working together in a specific way, then it's a lot more muddy at that point, right? So sometimes writing is a tool for thinking, right? So you could start writing your spec and you get more clarity from the process of writing, and then you can go back to the claims and then you should go back to writing the spec.
I think it really depends on that. How much clarity and how easy is it to articulate your point of novelty? 'cause if it's not easy to articulate it or if it's not easy to convey it. Or if it's complicated, then you may need to write first and get clarity that way. Yeah, definitely. And I do that sometimes, you know, sometimes I don't start with the claims.
Sometimes I start with the detailed description of the invention and then I'll write the claims and then I'll kind of adjust the language that I used in the specification to kind of more match the claim language. But yeah, I mean, I think I would agree with. Everything you just said, it depends on how clear you are on what your point of novelty is.
Yeah, and I know we haven't even talked about what claims are, but I think a lot of our listeners are very interested in the mechanics of drafting. So I'm just gonna take a few more minutes here and then we'll. Circle back into theory, but I also like to think of claims each claim as having one point of novelty, right?
So like one thing that makes your invention novel and non-obvious as we kind of take down notes in my like. Legal pad, right? When clients are talking, I will ask clients to list all the aspects of their inventions, right? All the features and technical aspects and components, and then I will usually just circle one or two things that I think are very novel and non-obvious.
That really is a combination of two things. One, it is important from a business perspective, right? It is a competitive differentiator, so it makes your customers choose your product. Over a competitor's product. Right. And also it is unlikely to be in the prior art because it's novel. It's new into this product space.
So I'll try to identify one or two things that at the intersection of the Venn diagram of commercially important legally protectable. And those one or two features are the ones that I'll build my first claim around. So that's the point of novelty. That's the. Mechanics of finding a point of novelty, and then I'll just add enough detail about the product to help me create a claim that's gonna be allowable.
And then I'll, for each additional point of novelty, I'll write additional claims. It's usually my process for doing this. I don't know if that's helpful or too abstract. Yeah, no, I think that's helpful. I'll also add when you're trying to figure that out, you know, like some are what you were just talking about, those features that you would circle on your list.
Sometimes if there's an aspect of your invention that you spent a lot of time trial and error or experimenting or figuring out the best way to do a certain thing, sometimes whatever you spent that time on is a good clue as to what your point of novelty is. For example, if you've got two pieces that have to be connected in a certain way, if you tried a bunch of different ways.
Of how to connect those two pieces, and you landed on what you think the best one is, that might be the point of novelty of your invention. So I think that's another good thing to think about when you're making that list of features and trying to determine which ones would contribute to your point of novelty.
Yeah, yeah. I think, and this is also the hardest thing to do for an inventor because you're so close to this invention. A lot of times when I ask clients, Hey, what's your point of novelty? Or What is the most important thing about your invention? They kind of look at me and they say, well, everything, you know, like, right.
It's all important. Without it, you can make a product. So I don't often ask that question in the early stages of the conversation, but this is one of those things where an outside opinion is super helpful. 'cause when I ask them the question, when I ask an inventor this question, they often say everything or they can't answer it very well, right?
They say, well, it's like six things. And I'm like, no, no, that's not the point of not to eat. Right? Like, uh. But when they, when I tell them to describe the invention and I kind of write it down on my notepad, it's like clear as day to me within five, 10 minutes that this is the point of novelty. There's one thing that drives everything else, but an inventor often can't see it.
They're too close. Right. And the thing that you mentioned, Jamie, is like the thing that they spend a lot of time tinkering on or solving can also just be a red herring, right? Because inventors just become. Kind of get enamored with the elegance of their invention, right? Like let's say there's this one thing that they spend a lot of time crafting and perfecting, but that's not the reason why their customers are choosing their product, right?
So it can lead you astray just as many times as it can drive you in the right direction. So that's why if you're ever gonna get a second gloss or an opinion on anything in your pen application. The point of novelty is probably the one. Yeah. Yeah, definitely. I think I would agree with that. I think it would, it helps to kind of talk to somebody else about it.
Hopefully a patent professional that can help you identify some of those things. Yep. I agree. Okay. Now that we've spent some time talking about drafting, I'm, I think we'll circle back to this if we need to, but maybe we can talk about what. Is a patent claim. Jamie, should we spend a few minutes here? Yeah, yeah.
Let's take a couple steps back and talk about what, what a claim is and kind of what a claim does. I think that would be really helpful. So if you look at a patent document, you'll see basically, you know, three main sections of the patent document. There's the specification, that's the written portion, there's the drawings, and then at the end there's these numbered statements, and those are called the claims.
And the claims are kind of in a nutshell. Where you set forth, what are the meets and bounds of what you're claiming your invention to be. So it's basically a list of features that your invention has to have, and then the point of the rest of the specification is to support those claims. Help to maybe provide some definitions to like some of the terms you're using in the claims, stuff like that.
But yeah, in a nutshell, the claims kind of set forth what the scope of your legal protection. Is that too in the weeds Samar or do you have anything to add to that? Definitely not. 'cause I'm gonna go further into the weeds here. I knew I could count on you. Yeah. As my patent law professor used to say, the claims are the meets and bounds of your intellectual property.
Or if you had a physical piece of property, you would have a deed or a survey that would demark the boundaries of your physical property. A claim is exactly that, but for a piece of intellectual property, right. It is the map or the boundary line of your invention. So if you think about it, it is everything, right?
'cause without that boundary line you don't, because it is an intellectual property or intangible piece of property, you have nothing, right? So that's the whole thing, as they say. So that's the most important part of your invention. Whatever is in that claim is yours. And whatever is not in the claims is not yours, right?
Is one way to think about it. So this is the most important, the most critical part, and it's the legal boundary of your. Intangible piece of property, right? So when there's a competing product on the market, the way that you determine whether they're infringing on your patent is to look at your, what your claims say, and determine if they are practicing everything that is listed in your claims.
So as far as infringement goes. Infringement is dependent on what the claims say. So that's another reason why the claims are such an important part of the document. That's right, yeah. Yeah, it is. When you try to figure out if somebody's infringing on your patent, everyone pulls up their claim and they go through it step by step, and these various steps are called elements within the claim.
So you would say, okay, step one, does this have element A? Right? Does this have element B? Does this have Element C? And if they, if it. Another product has all of those elements as what you have claimed, then they infringe, and if they don't, then they don't infringe. So that's the other piece of claim drafting strategy that a lot of clients don't initially understand.
'cause sometimes they're like, well. There are seven things that are important. Why can't we just put all seven things in the claim? And you can. But now you have given somebody an opportunity to get around your patent because if somebody does your claim minus one, so let's say you have seven steps in your claim or seven things in your claim, but if they do only six of them, then they have avoided infringement.
Okay? So now you've given somebody, you've six opportunities to avoid your patent, and that's a. Pretty narrow claim and potentially dangerous. But if you only have one element in your claim, let's say, then you have given somebody zero opportunities to get around your patent, right? Like if you crafted this one thing carefully, then everyone will have to infringe your patent to build a competitive product.
And that's why we're so focused on finding that one thing, even though it's tempting to sometimes say it, it's all the things, right? And that should make your patent and your boundary line stronger, right? But it doesn't. In fact, it makes it. Weaker. So the boundary analogy breaks down at some point because it's not a fence where the more pickets that you have, the stronger the fence.
It's kind of the opposite. I like to think of it as a choke point, right? There's lots of different ways to copy you, but if you can close this one choke point or one pathway then, and you have staved off competition on that one pathway. So that's kind of an inversion of the boundary line analogy, but that's another way to think about it.
Yeah, I think that's a, I think sometimes people get confused because their invention has this feature, but it's not listed in the claims, and so we kind of have to explain, well, if it's not listed in your independent claim, that means if somebody has it there, they could be infringing, and if they don't have it, they could be infringing.
So your claim doesn't require that element. So a potential infringer may or may not have it. You know, it basically keeps your claim broad enough that you can capture more, probably capture more infringers, if that makes sense. Yeah. To kind of finish that analogy, if somebody does your claim minus one, they have avoided infringement.
But if they do your claim plus one or plus seven other things, they still infringe. Right. So I think inventors, when they come to us, I think the reason they say everything is important is because they don't want anything to get missed. Right? Like they're paying very expensive attorneys a lot of money to write these things usually.
They don't want something to get missed. They're like to ensure that everything gets, makes it its way into the document. They're like, everything is important. Write up everything, which every attorney should and will do usually. But the claim drafting process is the opposite or the inversion of that. You wanna focus on one thing and that build you gives you stronger claims.
Right. Because then it's makes it harder to go minus one and avoid infringement. Yeah. Yeah, definitely. And I think another thing worth mentioning Samar is that claims are generally directed at either an apparatus, a device, a composition of matter, or a method, either a method of making or a method of using.
Generally we're talking about apparatus claims, particularly when it comes to independent inventors. I know you work a lot with like software type inventions, so those are probably more like method claims, but mm-hmm. You know, when it comes to apparatus or device claims, another thing to focus on is. That you want to, in the claims, you wanna list what the apparatus or device is and not necessarily what it does.
So you kind of wanna focus on the physical features of that apparatus or device. And those are the physical features that basically allow it to do what it does. Put functional language in the claim. If you say. Apparatus has this feature a, that that's configured to do this certain function. The examiner will frequently just kind of ignore that functional language that you put in there.
So you really wanna focus on the physical aspects of the device or apparatus in your claims. Yeah, that's a great point. Yeah. I have something similar on the software side where sometimes inventors or startup founders will say, Hey, well this is what my software does, right? It gives you this. Analytic or it allows you to do this, this, and this.
And I'm like, well, that's great, but that can't be our claim, right? You can't claim what the software does. You have to claim how it works to give you what it gives you, right? So we usually have to dig a couple of layers deep into the software to get to patentable subject matter. But like if you have a.
Software that tracks your sleep. For example, you can't write a claim that says track sleep, right? And gives you a chart at the, in the every morning that's not patent eligible. But you have to say, how does it do it? Right? It obtains sensor data from your watch, or it obtains like audio data from a microphone.
It processes that data in this way, it stores it. It runs an AI model across it, and it removes noise from the signal in this manner using this algorithm, and then it outputs a waveform right sleep chart. Now you're in patentable subject matter territory, but you've gotta focus on how things happen and not just what is happening.
Yeah. Yeah. Great point. So I think we've kind of pretty much covered what a claim is, unless you have anything to add. Samar, should we move on to claim structure? Yeah, let's do that. Yeah. So yeah, there's a couple different kinds of claims. There's the independent claim, which if you're looking at a patent document, that's usually the first claim is an independent claim.
And then there are claims listed below that depend from that independent claim. So the idea behind the dependent claims is you'll have a claim one that's your independent claim, and then claim two will say everything that's in Claim One plus this other thing, or everything that's in Claim One. And then this certain feature of Claim one also has this other aspect.
So the dependent claims. Include all of the elements that are in the independent claim. Do you have anything to add to that Samar about the independent claims versus the dependent claims? No, I think that covers it. Yeah. That is a question we get sometimes from clients who are like, what? What does a dependent claim mean?
Does it mean it's a not as good of a claim? And the answer is no. It's just as good of a claim. It just. Is a shorthand, right? Some of our patent rules are old, for lack of a better term. Patents used to get printed and it would be very expensive to print, you know, the same thing over and over and over and over again, and it's hard to review to see what's new.
So that's why we have these rules, I think, so that you can more easily scan the thing and figure out, okay, what is each. Subsequent claim, what's the additional thing that it claims instead of rereading the same thing 20 different times? Yeah, and I think another thing that gets confusing about the dependent claims, sometimes I'll be going over claims with a client and they'll see a dependent claim and they'll say, well no, my invention doesn't have to have that feature.
Say we have a dependent claim that says An A is permanently attached to Element B or something like that. And the client will say, well, they don't have to be permanently attached. They could be removable. And then I would. Let them know that, well, your independent claim covers the situation where it's either removable or permanently attached, because this isn't a dependent claim.
So your independent claim is automatically, you know, broader than that. And it covers both situations. So I think that's another thing people get confused about with the dependent claims. Yeah. I guess the other thing that's confusing about it is like, if you're deep. Independent claim is deemed not patentable or allowable.
Does that mean all your dependent claims are also not patentable or allowable? And the answer is no. Right? If your independent claim is broad and your dependent claims by definition are narrower, then it's very possible that the independent claim gets rejected, but the dependent claim is allowed. So that's one way to think about this.
Conversely, if you flip it around and you talk about infringement right now, these are. Other products after you get your patent, if they don't infringe your independent claim, could they infringe your dependent claim? And the answer there is no as well, right? Because it's the broadest claim that may be adding to confusion, right?
When you can think about validity or patentability versus infringement, the answer is kind of flip. Relative to each other. Yeah, it does get a little confusing. So another question that I get sometimes Samar is like, what's the point of having all these claims? So do you wanna answer that and then you know, I'll add to your answer.
Yeah. I think the point is to have a large enough surface area, right? From a claim perspective. So we have, if you just had one claim in a patent, that's one fence post that you have. But if you have 20 claims in a patent, then you have 20 fence posts, if you will. That you can link up together and build a strong moat around your invention.
So that's one way to think about it. It increases your surface area of coverage around your patent because there might be lots of different ways of potentially infringing your patent. Let's say you closed off one pathway and claim one, and then you can try to close off another pathway and claim four.
And then if you keep doing that over and over, pretty soon you have decent patent protection around this thing. So that's one way to think about it. Jimmy. There's a few others, but I don't know if I did a good job on this analogy here. Yeah, I think so. Another way I like to think about the claims is they serve kind of two different purposes depending on whether you're talking about prosecuting your patent application or whether you're talking about infringement after your patent issues, during the prosecution of your patent application.
That's just, you know, the examining process that your patent application will go through at the patent office. It's useful to have those dependent claims because sometimes the examiner, as you already mentioned, Samar, the examiner will find a dependent claim allowable. They'll reject the independent claim, but they'll find a dependent claim allowable.
So it's nice to have a variety of dependent claims. If the examiner happens to find one of them allowable, and so that claim is valuable to you or provides sufficient protection for your invention, then can get a patent on that claim, possibly pursue some broader claims in a. Continuation application. So I think the, all of the different claims are a useful tool for that reason during the prosecution of the application.
And then when we're talking about infringement, it's useful. This is kind of what you were talking about Samar. It's useful to have all of those claims. There's a chance if your patent ends up in court, the. Opposite side will try to invalidate your patent. So there's a chance that they could invalidate some of the claims, but they might not be able to invalidate all of them.
So it's useful again, to have all of those claims in your Yeah, no, I think that's a great point. And I think maybe we should expand on that a little bit and talk about broad versus narrow claims, because this is something that comes up sometimes too, where the clients are always like, I wanna get really broad claims, you know?
Nobody wants narrow claims like that. Doesn't sound good. Right, but, but what would you say to that? I mean, I think broad claims are certainly good and they have their place, but there are trade-offs associated with each approach. Yeah, absolutely. And I think this kind of speaks to why we spend so much time on the claims.
The claims are kind of a balancing act between getting sufficiently broad protection for our clients. But also keeping the prior art in mind and making sure that we're not writing claims that the examiner can easily reject based on the prior art. So we have to keep in mind the, those features that are taught in the prior, but at the same time try to get broad claims for our clients.
So it is a balancing act, and if you write claims that are too broad, then you'll probably have to go through a lot of rounds of rejecting, amending the claims. Rejecting, amending the claims. Gets expensive. On the other hand, if you write claims that are too narrow, that means that you were probably entitled to some broader protection.
So sometimes we submit patent application, we file patent applications, and we get a first action allowance. We don't get any rejections. And when that happens, great news for our client 'cause they don't have to spend any money on the prosecution of the application. But it makes me nervous 'cause I'm like, oh.
We probably could have gotten some broader claims, so you kind of wanna strike that balancing act. There are pros and cons to having claims that are too broad versus claims that are too narrow. Sometimes it's dependent on your budget as well. Like I mentioned before, if your claims are really broad, you're gonna go through a lot of rounds of rejections, and that does get expensive.
Yeah, and I think that's where a good patent attorney or patent agent earns their fees, right? It's on the claims. 'cause I think everyone will roughly write the patent application the same way, right? They pass the patent bar, they have some competence, but the claims are kind of the most strategic part of your patent application and it requires you to.
Think about the future. Right. And in some ways, and this is a pet peeve of mine, 'cause I, I read a lot of patent, we both do as part of our practice patents that our competitors, like clients', competitors have written and filed and prior that get cited against us. And sometimes I look at the claims and I'm like, well.
This attorney just understood the claims as a monolith, right? 'cause like every claim element is narrow, or every claim element is broad. And to me that's a mistake, right? 'cause you have to think about everything that you said, Jamie, but you have to think about it on a. Claim element by claim element basis, right?
So I think a good strategic viewpoint on the claims is to say, okay, well what is my point of novelty and how is that point of novelty going to change over the course of the next 5, 10, 15 years? And then can I abstract that point of novelty out sufficiently to cover all of those changes over the next 10, 15 years?
Or is there plenty of prior art that I would have to narrow the scope of that point of novelty? There's a trade off there, right? Because you can reduce your initial upfront costs on the patent application, or you can fight the patent office and get a broader coverage that may make the patent more valuable 15 years later, right?
So those are some trade off decisions that you have to make. And the other way to think about this is like, and this is why the point of novelty analysis is so critical. Is because I spend a lot of time on that one clay element, and then everything else, I abstract that out, right? Because it's just not important.
It's not driving the differentiation that I need from a novelty perspective, right? From the perspective of getting a patent. And if the other stuff is too narrow, then I have only limited my client's invention, right? So if I am going to narrow things, I wanna narrow it. Around where the prior art is, and I wanna do it on a claim element by claim, element by basis.
So even within a claim, you do the same analysis four or five times, right? If it has four or five elements. So it really takes a lot of foresight and strategy to think about what is gonna change, what is gonna remain universal in your competitive products and the competitive landscape. And then. You have to make a call, make a judgment call, right?
And every judgment call has some trade-off decisions around it. And finding the right set of trade-offs that are acceptable to you, both from a longevity perspective of your patent, but also from a expense perspective, is I think that's where really good attorneys earn their fees. Yeah. Yeah, exactly. And I think kind of, you know, another way to put what you were just talking about Samar is to look at each element in your claims and put yourself in the shoes of a potential infringer.
And think to yourself, well, if I was gonna infringe on this, or if I was gonna make a product like this, what could I change in these claims so that it's still a viable product, but it's not gonna infringe these claims. And if there are changes you can make, then that's an indication that you might wanna make that claim element a little broader or remove it from the claim altogether.
So you know, that is also part of the analysis that goes into writing the claims. I agree. Yeah, it is a very tricky and complicated topic. To say the least, Jimmy. So this is pretty, uh, abstract topic and we have already spent close to 40 minutes on this. We were planning on walking the listeners through a claim, but I wonder if we are better off doing that in a part two episode where we can spend time with a claim that we have drafted that has some, some good and some bad associated with it.
And then we'll talk the listeners through what we think about it and how we. Would deconstruct or redo the claim. But I also don't wanna overwhelm our listener because I think we talked about a lot of really good practical stuff here. So what do you say? Should we save the claim drafting exercise for a part two episode?
Yes. I love that idea. So part two, TBD, everybody. Yeah, I like that idea. Um, 'cause we did, you know, we talked more about like the idea behind claims and kind of talked about claim we could do another 40 minutes on claims probably. But I think this was a good primer on what the claims are, what the point of them is, what they should look like.
So yeah, we'll get into a more detailed example in our next episode. I love that idea. Okay, very good. We finally have a cliffhanger after what, several years of doing this podcast. Very exciting. That's right. They said it couldn't be done about a podcast. Well, this is great Samar. I think we gave a lot of great information and I think when we go through our example claim, I think it'll be even more clear some of the stuff we talked about today.
So yeah, I think this was a great episode and I look forward to next time going through a claim example with you. Yeah, I look forward to it. For those of you who are about to start writing claims for your patent application, I think this is gonna be one that you'll enjoy quite a bit, so hopefully it'll continue to be interesting.
Yeah, definitely. All right, Samar, I'll talk to you next time. Awesome. Thanks Jamie. Thanks. The Patent Strategy Podcast is recorded for informational purposes only and should not be considered legal, business, or professional advice. We are not responsible for any loss, damages, or liability that may arise from the use of this podcast.
The podcast is not intended to replace professional legal advice and should not be treated as such. The views expressed in this podcast may not be those of the host for the management.