How Effective are Your Patent Claims

{Don Debelak’s new book, Turning Your Invention into Cash is now available on Amazon for $3.49. Go to Amazon.com and enter inventions Don Debelak to purchase. From the author of Entrepreneur Magazine’s Bringing Your Product to Market.}

Patents are effective for the patent holder if they provide meaningful protection, which means they can be a deterrent to competition. Much is made about the difficulties in suing copycats, but not much is written about how weak some patent claims are. I feel inventors need to have some understanding of their patent claims as they are often not nearly as strong as people feel they are, and they need to understand those strengths to decide if a patent is even worth investing in. My goal for this post is to give you insight into the written word of the patent claim so you can better analyze the information you receive from your patent attorney or agent.

When Mr. Coffee came out, the first drip coffee maker, it had four or five patents. Yet despite those patents there were quickly four or five competitors on the market.  How is this possible?  Well for the most part it revolves around the concept of the doctrine of equivalents.  This principal states that a patent is being infringed upon if a patentee can show that that there are no substantial differences between the potentially infringing device and the patented device. But there is a catch, the doctrine of equivalents through court rulings has been determined not to be for the invention itself, but for the elements of the invention. The elements are the various parts of the invention, for example the for a knife, the elements might be the handle, the type of blade and the serrated edge  Now, understanding  the application of doctrine of equivalents and its application to elements is difficult, and lawsuits involving them have an uncertain outcome and can be expensive to defend or prosecute. But to help you understand the wording of a patent claim I’ll take a look at Patent number 4,969,580.  I’ve listed the patents major claim below with my comments in italics and what I feel are the major elements in bold type.

What is claimed is:

1. A hanger support apparatus for use in a shower with a bottle having a neck (neck is a vague element term which is good in a patent) at one end thereof, and one end having an end wall (end wall is also a vague element term) that that extends laterally at the side wide of such bottle (so far this is just a hanging device for a shampoo bottle), comprising a frame said hanger said frame being elongated on along a longitudinal axis and having a hook (hook is much more specific and specific terms are warning signs in a patent claim. Anything other than a hook would not infringe on the patent as a hook is an element in this patent) means for supporting the frame on end thereof and a support plate,  (a support plate up to this point is a vague element term, so far so good) said support plate extending generally at right angles to the longitudinal axis of the frame (this language in the claim for the support plate element is very specific and it leaves plenty of opportunities for others to design around the patent by simply not having a horizontal support plate) the means for retaining the bottle on said frame comprising a strap (the term strap itself is not specific into the type of strap, it could be any type of strap, but calling out a strap rather than a more generic term like holding device is specific and limiting) that surrounds the frame with a method of adjustably securing said strap comprising a loop at one end (this now defines the strap very specifically and should be a warning flag for inventors as now competitors only need a strap that is not just like the one described) said strap having an aperture there through that is selected dimension measure in direction along the length of such strap and the opposite end portion if said strap having a plurality of individual raised ribs …. (this patent describes the strap in such detail that I believe designing around this patent will relatively easy.)

This is a patent for a product that holds a shampoo bottle.  Now go into your closet and pull out a hanger.  Push the sides together so you have a hanger hook on top and the rest of the hanger hanging straight down.  Put your hand on the bottom of the hanger and bend it straight up.  Now you have a shampoo bottle holder.

Some general guidelines for looking at a patent claim are: 1) long patent claims are generally not desirable as the patent claim tends to be more and more specific as they get longer; 2) vague terms such as holding device are much better than more specific terms such as strap; and 3) the more clearly you define each element the easier your patent will be to design around.

The question is then, why won’t patent attorneys or agents avoid limiting statements in a patent.  Your attorney would be happy to do that.  The problem is that the patent office tries to limit the scope of patents and forces you and your attorney to be more specific in your claims.  This is especially true in product areas where there has been a long list of patents, the patent office will try to approve only patents that have a great deal of specificity in them.  If you put in a patent claim that is too broad in the patent offices eyes, the patent office won’t approve it and then you either have to drop it or have your attorney narrow the claims, all of which costs money.

You should consult with your patent attorney or agent about what parts of your patent could be designed around.. But I do want to point out that inventors need to recognize warning signs in a patent that you should watch for.  Calling out very specific designs of key elements is a warning sign that a patent might not be worth much.