interpreting a patent?
Henry E Schaffer
narrowly it should be interpreted.
Are the claims to be interpreted narrowly - i.e. that the claims made
cover only the invention described, or broadly, i.e. that anything
resembling the invention described in any way is covered?
--
--henry schaffer
h...@ncsu.edu
Anne Avellone
Henry E Schaffer <h...@unity.ncsu.edu> wrote in article
<9snf1i$7r0$1...@uni00nw.unity.ncsu.edu>...
The answer is YES!
While being, perhaps, a bit flip, my response it meant to be instructive as
well. Exactly how broadly or narrowly to interpret claims is what keeps
judges busy and litigators rich.
Your query is complicated by the phrase "cover only the invention
described". Do you mean described in the disclosure (and figures) or
described in the claims. Two different animals. The claims are what defines
what is covered by the patent, but they are to be interpreted in light of
the disclosure.
An example:
Suppose the state of the art in outer wear is a cloak, which is bad in the
wind, because it keeps blowing open.
Albert invents and discloses the button and claims "an improved cloak
wherein said improvement comprises a row of round fasteners down the front
to hold the left and right sides together in the wind". Assume he gets his
patent to issue and it is still in force.
Bob later invents the metal snapper which can be more quickly closed and
opened than buttons. He claims "an improved cloak fastener wherein said
improvement comprises a row of round fasteners each of said fastener
further comprisinga pair of mating metalic snaps instead of buttons and
button holes". He also claims using his "snaps on shirts". Assume he gets
his patent to issue and it is still in force.
Charlie produces cloaks with buttons. He must license Albert's invention.
Don produces cloaks with snaps. He must license both Albert and Bob's
inventions because Albert's "round fasteners" ALSO describe snaps.
Ed produces a shirt with buttons. He doesn't license anybody. Bob sues Ed
saying that HE invented fasteners on shirts and the doctrine of equivalents
says if he owns snaps on shirts, he also owns buttons on shirts because
buttons and snaps are equivalent. Albert sues Ed saying that HE invented
buttons on cloaks and the doctrine of equivalents says if he owns buttons
as fasteners, he also owns buttons on shirts because cloaks and shirts are
equivalent.
Who wins? Does Ed have to license Albert? Bob? both? neither?
Arguments can be made for all four cases and have to do with just the issue
you bring up.
A lot depends on not just the claims: but, the sugestions made in
disclosures of the two patents; the state of the art and knowledge of those
skilled in the appropriate arts at the time the patents were written; the
strengths of the argumants made by the lawyers on each side; how compelling
are the expert witnesses called to testify; the intelligence and bias of
the judge hearing the case; etc.
To make the situation worse (although the court's stated intention was just
the opposite, I believe) is a recent decision that says if your claims are
narrowed for patentability reasons during prosecution you cannot utilize
the doctrine of equivalents to broaden the scope of what they cover.
[NOTE: This is a vague paraphrasing of the Fusco decision. And I have read
many conflicting interpretations about it.]
So, supposedly, with the doctrine of equivalents out of the way, readers of
a patent will know more exactly (narrowly) what is covered. However, this
just compecates things to my mind, because you do not know which claims (or
claimed features) have been changed during prosecution. So you do not know
if the narrow or the broad interpretation is to apply. Thus, the judges
just made the situation more complicated.
Anyway, if you get the idea that your simple question has a complex and,
possibly, unanswerable answer, and must be evaluated on a case-by-case
basis, with consideration of the claims AND the prosecution history, then I
have done what I set out to do.
If this is a real commercial situation for you and not just academic
curiosity, get yourself a good patent agent/lawyer to evaluate the
situation for you. And then get yourself a second opinion.
David M. Geshwind
Registered Patent Agent
NOTE: The above is not meant as, nor should it be relied upon, as legal
advice or a professional opinion.
Isaac
>
>Henry E Schaffer <h...@unity.ncsu.edu> wrote in article
><9snf1i$7r0$1...@uni00nw.unity.ncsu.edu>...
>> I'm reading a (software) patent, and wondering about how broadly or
>> narrowly it should be interpreted.
>>
>> Are the claims to be interpreted narrowly - i.e. that the claims made
>> cover only the invention described, or broadly, i.e. that anything
>> resembling the invention described in any way is covered?
>> --
>> --henry schaffer
>> h...@ncsu.edu
>>
If you are reading the patent in order to determine whether you are
infringing, the way to interpret the patent is to read your patent
attorney's opinion. This isn't just the usual ask a lawyer
advice. Only a lawyer's opinion that you aren't infringing has any
legal effect if you need to later establish that your infringement of
a patent that you knew about was not willful.
>To make the situation worse (although the court's stated intention was just
>the opposite, I believe) is a recent decision that says if your claims are
>narrowed for patentability reasons during prosecution you cannot utilize
>the doctrine of equivalents to broaden the scope of what they cover.
>
>[NOTE: This is a vague paraphrasing of the Fusco decision. And I have read
>many conflicting interpretations about it.]
I think a better statement might be that if a claim element is narrowed
for patentability reason, then the DOE cannot be applied with respect
to that claim element or limitation. DOE could still be applied to
other parts of the claim. I think that limiting the doctrine of
equivalents in exchange for more predictability was exactly the court's
stated intention.
Of course that might just introduce added concepts to explain.
I'm pretty sure you meant Festo rather than Fusco.
>Anyway, if you get the idea that your simple question has a complex and,
>possibly, unanswerable answer, and must be evaluated on a case-by-case
>basis, with consideration of the claims AND the prosecution history, then I
>have done what I set out to do.
Right on.
Isaac
Michael F. Brown
> described". Do you mean described in the disclosure (and figures) or
> described in the claims. Two different animals. The claims are what defines
> what is covered by the patent, but they are to be interpreted in light of
... and the prosecution history, too. That is, suppose in the example
given, the Examiner rejected Albert's buttons-on-cloak application in
view of a patent on round magnetic fasteners used for trouser flies (the
Magutton(r), available at all fine magnetic clothing stores). Albert's
attorney overcame the rejection by writing that "the present invention
is patentable over the Magutton(r), because the round fasteners of the
present invention are inserted through mating slits in the facing
material, which is not shown in the prior art." In that case, although
the claim LOOKS like it applies to snaps, it doesn't, because Albert
specifically gave up coverage of anything but round fasteners which go
through slits.
The rules of patent interpretation are complex and ever-changing, and I
strongly recommend you have a patent attorney give you an infringement
opinion if there is any question in your mind that you might actually be
infringing a patent. Not only would this set your mind at ease, but if
your attorney says you're not infringing and you later get sued, you can
point at his opinion to show that your infringement was not willful.
--
Michael F. Brown
Registered Patent Attorney No. 29,619
http://www.bpmlegal.com/
http://www.pandora.clarityconnect.com/bpmlegal/ (mirror site)