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 The Inventor's Mentor

June 2013

Walls around Walls, Castles and Claims

Patent law is designed for the common good of society to stimulate scientific and engineering progress by disseminating information. The law awards inventors the ownership of their invention and provides them with legal protection:  the right to exclude others from making, using, selling, offering for sale, or importing their invention. After 20 years the information becomes public domain and anyone can use the invention without paying royalties to the inventor. In exchange, for this legal protection, inventors are expected to give as much detail as possible about how to build and practice their invention. How much detail is required? To be on the safe side, as much as possible. The inventor should disclose in good faith everything he knows on how to build or practice the “best mode” of his invention.


A patent application must be “enabling.” That is, it must contain enough details to enable someone versed in the technology of the invention to build it. Describing a product by what it does, and not by its structure is not enabling. A description of a time machine as “a machine that travels through time” is called “functional language” and will definitely be rejected during the examination process for lack of enablement. To be enabling, the description must include a detailed description of the crucial elements of the time machine including the flux capacitor and how it is connected to the Plutonium source. Control and display elements such as dials and knobs are well known by persons versed in the art and therefore can be glossed over.


Lack of enablement is often the weakest aspect of a patent application and this weakness usually reveals itself during the examination process. Often the examiner finds prior art that eliminates the patentability of the best mode, i.e., your preferred version of your invention. It is therefore important to include as many other modes and variations of the invention as possible as fallback options.


Walls around Walls

Claims should be written with a defensive purpose, like a castle with walls around walls. The first claim is the widest but is also the least defensible. For example, the first claim could recite a time machine equipped with a flux capacitor and a fissile energy source (thereby encompassing many energy sources such as Dilithium, Plutonium, Uranium and Thorium)  The subsequent claims which depend on the first claim, restrict its scope by being more specific. Their greater narrowness makes them easier to defend during the examination process. For example the second claim could specify that the fissile energy source comprises Dilithium, the third claim that it comprises Plutonium, and the fourth  Uranium.

During prosecution the examiner may uncover an episode from Star Trek in which the Enterprise is powered by Dilithium as it travels through time. Since Dilithium is a fissile material, the examiner would reject claim 1 and 2 as being anticipated by Montgomery Scott, the designer of the ship’s engine. He may also uncover prior art from Back to the Future. The examiner would then reject claim three as being anticipated by Dr. Emmett "Doc" Brown who utilizes Plutonium to power his flux capacitor. The first three claims would fall but the fourth, about Uranium, would remain standing.



Once an application is filed, it is cast in concrete. Nothing can be added or subtracted. It is therefore important to include as many variations as possible in the specification. In the example above, the dependent claim which mentions Uranium, could be present at the time of filing or could be added during prosecution but only if the use of Uranium is already mentioned in the specification.


Variations of value that you do not include may be lost as they may be filed by someone else. Therefore including as many variations as possible in the application is good policy. The description for each configuration needs to be fully enabling, providing your patent attorney or patent agent with the information needed to successfully respond to the examiner’s rejection and to conduct a successful prosecution. Your claims will then provide you with a wide coverage and dissuade anyone from filing an application resembling your own invention.


If your invention is indeed a time machine, be careful. Mentioning Plutonium in your application may get you the attention of Back to the Future unsavory Libyan agents, or more realistically, Homeland Security. Nuclear bombs are definitely not patentable. Furthermore, time travel may be considered to have important military application and a secrecy order may be slapped over your invention by the government.


But again, if you had a time machine, why share it with anyone?


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        This newsletter should not be construed as legal advice.                                     ©2013 by George Levy