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Patents and Their Claims

  • Moscow, Russia
  • comments


If you, like me, are not a patent attorney and don’t understand patent law, but your boss asks you to turn your recently written piece of code into a patent, read on. The boss most probably won’t ask you to write the entire patent. Instead, he will ask you to prepare a quick summary of the invention (usually, a few slides) and then a hired lawyer will turn it into a full-scale patent application. If you understand the purpose of patents, the mechanics of patent offices, and the format of a patent claim, you will do just fine.

And Justice for All (1979) by Norman Jewison
And Justice for All (1979) by Norman Jewison

What are patents for? Initially invented as a tool to encourage innocent inventors, they are currently used mostly as a weapon either to bully larger organizations or to defend them against bullying. It all started in Italy in 1474, when a three-year “grant” was given to Filippo Brunelleschi for “some machine or kind of ship,” for a period of three years. Since then, over 3.5 million patents have been issued by different patent offices around the globe to respected inventors.

What is a patent office? It’s a security organization funded by a government: USPTO in the United States, EPO in the European Union, CNIPA in China, Rospatent in Russia, IPOS in Singapore, and a few dozen in other countries. Also, there is WIPO in Geneva (Switzerland) that coordinates the work of all other POs, so far. They protect you if you pay them (no surprise it all started in Italy!)

Let’s say you invent a new file compression algorithm and you don’t want anyone to use it without your permission. First, you pay $320 to USPTO and submit an application. Then, in a few months, they assign your application a number and call it “pending.” Then, you wait for about 3.5 years until they reply back with a decision: either you get a patent, you get nothing, or they ask you to refine the application (most common case). You make the changes, resubmit, they criticize, you resubmit, … and eventually they issue a patent.

Now what? Your company publishes a press release, informs all investors, you make a Facebook post so that your mom can be proud of you, and in a few days everybody forgets about it. Because nobody cares. Until the litigation day comes: your company finds out that another company is also compressing files using the same algorithm. Or, the other way around: they find out that the algorithm you invented is actually the algorithm they have been quietly using for years. You both meet in a patent court. The USPTO will be there too, since you paid them earlier.

If your opponent does not have a patent, the judge will ask them to prove that their compression algorithm was publicly available prior to your application. If they provide such proof, your patent will be infringed—you will lose it, your $320 won’t be refunded, and you will pay everything you made over the last few years to the opponent.

If your opponent does have a patent, you will have to prove that your patent is older and broader. USPTO attorneys most probably won’t try to help you, since they won’t be on your side, but simply a mediator between both of you (Apple vs. Samsung litigation is a good example of such a patent war). If you win, their patent will be infringed and you will get all the profit they managed to collect over the last years. Big win!

What is patent breadth? First, let’s discuss what is its length. You may be surprised, but patents have pretty short lifetimes. If you don’t extend a patent, it will expire in just three years. If you do want to extend it, you must pay USPTO again and much more than you paid the first time: $2,000 in 3 years, $3,760 in 7 years, $7,700 in 11 years. Not cheap, huh?

Now, the breadth. Consider three patent claims:

  • “An apparatus consisting of a file reader; a file writer; and a compressor.”
  • “A file compressing method comprising a reader of JPEG files; a probability distribution calculator; a discrete transformer; a bla-bla-bla optimizer; an intermediate storage; a writer of JPEG files.”
  • “A Lempel–Ziv based data compression method comprising: converting input stream into ψ-tokens; reducing redundancy via Prishvin Ω(x) factorials; serializing through Turgenev 𝛾-extremums.”

The first claim is much broader: it probably covers all possible file compressing software tools ever created. Such a broad patent claim won’t even be accepted by USPTO if you file it. They will do a quick search of prior art (other patents previously issued) and reject you on the basis of a lack of novelty. The second claim is narrower, but still pretty broad, since the architecture of other existing compressors may be very similar to the described one. The third claim is the most narrow and the most specific (although, have absolutely no sense, it is made up).

How to write a good patent claim? There is no such thing as an objectively good claim, since it depends on the situation in the market. If the territory of innovation is not yet developed and you are a pioneer, a broader and shorter (by the length in years, not the number of words) patent is better. If you are making a small improvement to a well-developed prior art, better make the patent narrower and longer.

A patent claim is the key element of a patent application. While the rest of the document may be written by a patent attorney, I strongly suggest you write the claim. At least its first version. There is a more or less strict structure of a claim: preamble, transitional phrase, and body:

Preamble Transitional Phrase Body
An apparatusconsisting ofa file reader; a file writer; and a compressor.
A file compressing methodcomprisinga reader of JPEG files; a probability distribution calculator; a discrete transformer; a bla-bla-bla optimizer; an intermediate storage; a writer of JPEG files.
A Lempel–Ziv based data compression methodcomprisingconverting input stream into ψ-tokens, reducing redundancy via Prishvin Ω(x) factorials, serializing through Turgenev 𝛾-extremums.

The preamble must position your invention among all other devices and methods in the prior art. The “an apparatus” preamble is very broad: it could mean any device in the world, even not only from the computing domain. The “a file compressing method” preamble is much narrower, while “a Lempel–Ziv based data compression method” is the most narrow one, with almost no ambiguity for the interpretation.

The body of a patent claim must iterate the elements that constitute the invention. The fewer elements you include in this list, the broader the patent will be. The broader the patent, the easier to infringe. Well, unless you invent something revolutionary new. On the other hand, the more elements, the narrower the patent, the weaker it is as a weapon. It will be very hard to use a narrow patent in a patent litigation.

The claim must also be non-obvious, meaning that your invention has to be an adequate distance beyond or above the state of the art. Say, a new file format is invented for graphic images and you submit a patent application for a ZIP compressor that can also compress files in this new format. If there is no novelty in the compression algorithm itself, such a patent would be considered obvious since it’s not far away from prior art: existing ZIP compressors can deal with this file format, even though they don’t know about it yet.

How do you decide? It is your responsibility as a patent author to decide how broad and how long your patent must be. Then, a patent attorney will help you turn your patent claim into a patent application (charging a few thousand dollars along the way), and then, hopefully, the litigation day will come and you will win a lot of money. Most probably this will never happen and the patent will remain a nice badge on your CV and your company’s website.

By the way, it is important to remember that if you want to get similar protection in another country, you will have to pay their patent office separately. Just like you pay every time a different mafia boss for protection when you want to work in the territories they control.

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