The Patent Process
Let us assume that you are an inventor. You invent a car. At the time of your invention there were no cars on the road. All that was available were carts and horses. You have invented a vehicle with an internal combustion engine. Let us say, for illustration purposes, you invent a “corvette”.
You will go to an attorney, like myself for instance, and explain your invention. It will be suggested that you file a patent application, so as to secure patent rights on your invention. Patent rights enable you to exclude all others from making, using, or advertising your invention, for a period of 20 years from the date of filing.
Your attorney will draft a patent application. The patent application has three parts, a textual part, or specification, describing your invention in great detail. The second part of the application is the component of the application referred to as “the drawings”, in which you may produce exploded views of your vehicle, or corvette. The drawings for your invention will show the detailed construction of your device so as to allow one “skilled in the art to make and use your invention”. The last part of the application is, in fact, the most important part. The “claims” is the part where you lay out the borders and boundaries of the scope of your invention and the right to exclude or allow others to make and sell the invention. This will become more clear in just a little bit.
In drafting the patent specification, your vehicle will be described so as to allow one “skilled in the art” to make and use your invention. You will describe the vehicle in great detail, such as the compression ratio of the engine, the gear ratio, the transmission structure, and so forth. As you can see, a patent application for your corvette would be a very lengthy document.
Next you would provide a set of drawings. There would be exploded views of the engine, transmission, front end, rear end, cross sections of the brake pads, and so forth. You would show the frame and the body components. Once again, you would see that the drawings would be quite numerous, so as to show all the details of your car.
Last of all your attorney would draft the claims. The claim, or claims, must describe those elements which you consider to be essential to build your device. By essential is meant that they are necessary parts. This will be more clear when the topic of infringement is discussed, below. While there are usually several claims, let us say, for the sake of illustration, that you will draft only one claim. Taking all of your device into consideration, your attorney would draft the claim to read: “I claim, a vehicle, having a frame, and at least one wheel”.
The claim must list the essential elements necessary to practice your invention. As you can see, you need to have a frame, and at least one wheel. It is not necessary, and not desired, to have every element of your device described. In infringement, the way a court decides if a device infringes, or not, is whether all the elements of any one claim are present. If your claim is ” I claim, a vehicle, having a frame, an ashtray, and at least one wheel”, then in order to infringe your claim the “alleged infringing device” must have a frame and an ashtray, and at least one wheel. If the infringer eliminates the ashtray, then he, or she, would not infringe your claim. It is imperative to list as elements only those thing or components which are necessary to practice or make your invention. You can add other elements, which are not necessary, but you are opening the door for an infringer to easily avoid your claims protection.
As a matter of practice, however, it is common to have a number of claims, some broad, and some narrow. Think of the shape of a Christmas tree. The bottom, or broad claim, is followed by the upper, or narrower claim, until the top, or last claim is added. The top, or last claim, is usually the most narrow, and offers the least protection. For practical and technical reasons, it is good to have such a claim, to act as a “well” for components. While this may not be clear to you, please read on, and take it on faith, for now.
Getting back to the illustration, let us say that you have filed your application made up of your description of your automobile (the specification), the drawings, and your one claim. The patent office would then examine the application. The Patent Examiner would issue an “office action” in which he, or she, would comment on the acceptability of your claim. In this case, the Examiner would reject your claim as being anticipated by the patent held by Smith, for a wheelbarrow, and a patent held by Jones, for a bicycle, and a patent held by Edwards, for a unicycle. By “anticipated” I mean that the claim describes an already exiting device (remember, your claim describes a frame and at least one wheel). Prior art refers to “patents” as well as other “publications” such as web pages, books (both old and modern), or any other form of transmission of information. As you can see, all of the devices cited have a frame, and at least one wheel.
Your attorney would be notified of the claim rejection by way of a mailed “office action” sent to him by the Patent Office Examiner, and you then would have an opportunity to amend, or change, the claim language to meet and “avoid” the cited prior art. Your attorney would have to amend the claim to include something that was disclosed in the specification, and not present in any of the cited prior art. Your attorney would add to the claim so that it would then read, “I claim, a vehicle having a frame, at least one wheel, and a variable speed transmission”. The term variable speed was included because the bicycle had a chain and two sprockets, which is a form of a transmission. A variable speed transmission is different from a straight, or fixed, transmission.
Let us then say that the amended application was sent back to the Examiner, and the Examiner allowed the application to proceed forward to issue. The patent was granted, and you would be happy, Of course, all the car manufacturer’s would then be paying you a royalty for the use of your technology. A license granted by you to the various manufactures would then allow each licensed manufacturer to make and use your device without fear of being sued by your for infringement of your patent.