1.2.1 Specification, figures, and claims
A patent, such as the one shown in Figure 1on pages 6 to 12, has a cover sheet (Figure 1.1) and, after that, three major parts: the figures (Fig. 1.2a through c), the specification (Figure 1.3a and 1.3b up to column 4, line 2), and the claims (Figure 1.3b,column 4, line 3 to line 50).
The specification and the claims are written in words, and every patent must have both. The figures are pictures that show how the invention is put together and how it works. All patents except chemical composition patents must have figures. Chemical composition patents generally have formulae.
Each figure must be numbered, and anything on a figure — whether it is a whole area, a specific piece, a feature on a specific piece, or a hole or void — must be individually numbered if it is discussed in the specification. For example, in Figure 1.2a andFigure 1.2b,the recess designated with numeral 26 appears in the patent drawings and is discussed in column 3 at various places, such as lines 3 to 8 (Figure 1.3b).
The specification is the place for all the ‘‘talk.’’ It must include an explanation of the figures. It must give the educated reader sufficient information to make and use the invention. This is called the enablement requirement. The concept in patent law of the educated reader is known as theperson of ordinary skill in the art. The specification must also state the inventor’s preferred way to make and use the claimedinvention (but need not state preferences as to things that are notclaimed). This is thebest mode requirement. All the terms in boldface are discussed in greater detail else- where in this book.
The claims are the words that define your invention legally. Patent lawyers like to say they define the ‘‘metes and bounds’’ of the invention, just as real estate on a deed is defined by its ‘‘metes and bounds.’’ Whenever you consider a patent, whether to make sure it is valid or to see if someone infringes it or should be offered a license, you must look to the claims.
‘‘Construing the claims’’ (deciding what the words means) is often difficult mental work; drafting good claims can be even harder.
1.2.2 Patent as instrument of legal rights v. patent as ‘‘prior art’’
To understand the differences between a patent as a declaration of legal rights, on the one hand, and a patent as ‘‘prior art,’’ on the other, you will need to understand the phraseread onand be comfortable with the use of a claim chart.
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If we are interested in whether or not your claims are valid, we must compare them to the prior art. But the prior art undoubtedly includes other people’s patents. What part ofthosepatents is most important if you want to know ifyourpatent isvalid? What part ofthosepatents is most important if you want to know if you can practiceyourinvention withoutinfringingthose patents? The answers to those questions are different. Your patent is valid if your claims do notread onthe prior art. You will not infringe those other patents iftheirclaims do notread onthe object you make, use, sell, offer for sale, or import, or, if the patent is on a process or method, the processes or methods you use.
1.2.2.1 ‘‘Read on’’
The grammatical subject of ‘‘read on’’ is always a claim. The grammatical object of ‘‘read on’’ is either
. an accused device, if the question is whether or not the claim is infringed, or
. the prior art, if the question is whether or not the claim isinvalid.
Thus we may say that claim 5 of the patentreads onthe competitor’s model 23-BQ (so model 23-BQ infringes that claim). Or claim 5 may read onthe competitor’s old model 15-LJ, which was sold 50 years ago throughout the U.S., in which case claim 5 is invalid.
In order for a patent owner to prevail against an accused infringer, the claim in question must be both valid and infringed. (In addition, the patent as a whole must be free of inequitable conduct, discussed in Chapter). Thus the infringement inquiry focuses on theclaimof the patent in question.
But when a patent is relevant not for the owner’s rights but as prior art to someone else’s patent or patent application, then we care about what it teaches. We care much less about what it claims. (Generally the claims do not teach anything that is not taught elsewhere in the patent; if they do, then they may be invalid.) The primary reason you look at the claims of a prior art patent is to make sure you will not be infringing it, or to see a way to design around it. Butinfringementof a prior art patent by practicing your patent is a different inquiry frominvalidationof your patent by that prior art patent.
1.2.2.2 Claim charts
A claim chart is a two-column table in which you compare the language of a patent claim to whatever it is you care about — a possibly infringing device or process, or the prior art. In the left hand column you put the claim, broken down into its conceptual pieces*to suit the inquiry of the claim chart maker:
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Chapter one: Anatomy of a patent 17
* Patent lawyers may speak of the ‘‘elements’’ of the claim. That can be confusing. Sometimes ‘‘element’’ may refer to a labeled clause, when the claim is written in outline form (1 – A – (i), etc.).
Such a claim might have elements 1 through 5, and element 4 might have sub-elements A and B, etc. But it may be that for the purposes of a claim chart, elements 1 through 3 can be lumped together because everyone would agree that they are found in whatever the claim is being compared to. Element 5, however, may need to be broken down into its individual words. I use the colloquial
‘‘pieces’’ to emphasize that the division of the claim is ad hoc.
For example, in the printed patent some parts of the claim may be indented and/or labeled with letters and numbers. (InFigure 1.3b,claim 1 is format- ted with indentation, at column 4, lines 4 to 17.) If some items are not controversial, the claim chart maker may put them together into a single row of the chart. Alternatively, a three-word phrase in the claim may be the essence of the conflict, and each word’s scope is contested. In that case, each of the three words might occupy its own row. There are no rules; logic and intelligence dictate how you make the chart.
Whether you are considering infringement or validity, look for a 1:1 correspondence between the parts of the claim and whatever it is being compared to. If there is a 1:1 correspondence between the claim and the accused device, the claim is infringed. If there is a 1:1 correspondence between the claim and the prior art, the claim is invalid.
Consider the Lint Roller Assembly Patent’s claim 1 (Figure 1.3b, column 4, lines 4 to 17). Compare it to lint roller assemblies you may have used long before the patent was applied for. The application date is listed onFigure 1.1, on the right side of the patent cover sheet. This patent application was first filed on June 24, 1998. You would probably guess that every lint roller since lint rollers were first made would have ‘‘a tubular and cylindrical lint roller’’ (the first indented phrase) and a roller support that has a smaller diameter than the roller itself (the third indented phrase). But the second indented phrase, which specifies that the housing is made from two ‘‘sub- stantially identical parts,’’ is different. The words in that part of the claim would have to be considered very carefully, whether the question was infringement or invalidity.
1.2.2.3 A useful table about specification and claims
Table 1.2 reinforces what you should know already. Let us say you have just obtained a patent. Let us call it the New patent. Your competitor has a patent that is older than yours, the Old patent. You may be concerned about whether your New patent is valid over the Old patent, and you may be concerned about whether, in practicing your own invention (now covered by the New patent), you need a license under the Old patent.
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Wait, you may say: if the Patent Examiner granted me the New patent when she knew all about the Old patent and maybe even initially rejected my claims in light of it, doesn’t that mean I could not possibly infringe the Old? The answer is a resounding no. If you find this puzzling, you are in excellent company with some of my best law students, chief executive officers (CEOs), federal judges, etc. But I hope that you will not be puzzled after you have had a chance to studyTable 1.2,and to think about patents, their specifications — where they teach— and their claims — where they wall off the owner’s area of exclusivity.
The reason that the answer isnois that validity is a different inquiry from infringement. Validity of the New patent depends on the New patent’s claims. Infringement of the Old patent depends on the Old patent’s claims.
1.3 The application for a patent: what kind of patent?