Appeals, Claim Construction, Federal Circuit, General Counsel, Information technology (IT), Infringement, invention, Litigation, Patent Prosecution, Patents, Technology, Validity
How long should a patent claim be?
By : beemlaw May 19, 2016 1 Comment
House counsel for a large software company has written an open letter to me titled Pursuit of Extremely Short Patent Claims. He has thrown down the gauntlet in a public forum. Here's what he said to me, followed by my response.
Dear Patent Attorney
"Please stop filing extremely short, overly broad patent claims."
Indeed, if I should happen to think that "my claims are reasonably short and broad," as counsel anticipates, that proves beyond any doubt that his letter is directed to me personally.
Counsel goes on to tell me that software patent claims should be at least "300 characters" or "60 to 75 words" long.
Claims should be 60 to 75 words long?
Counsel explains to me that issued claims are seldom shorter than 60 to 75 words. Also, shorter claims are seldom allowed without further prosecution (which is another way of saying the same thing).
Quality, on the other hand, as recognized by the Patent Office, can be measured in inches, with longer claims representing higher quality, or so I'm told. Size matters.
Shorter claims mean rejections, and that translates into higher fees and costs for the applicant, maybe as much as a million dollars extra per year for a large company.
Shorter claims cost more to get allowed
If that isn't enough, house counsel concludes his letter by accusing me of being lazy and not investing enough time in taking invention disclosures.
That's what house counsel for a big software company says in his well-documented letter to me.
Here is my reply.
Dear House Counsel
Dear House Counsel,
It's true that long claims are more likely to be allowed, and more quickly, too.
An example will illustrate. Some time ago, house counsel for another company came to me with a large portfolio of issued patents. They loved their patent agent, they told me, because he always obtained speedy issuance of their patents. The only thing is, they realized, every independent claim was a full column long, making it trivial for a competitor to design around. Could the patents be reissued with broader claims? Yes, some of them, but counsel paled at the cost.
Rule of thumb
As I've stated previously, under the "rule of thumb," a claim longer than your thumb might be easy to design around. See More Words, Less Patent Clarity.
Abraham Lincoln, who had some considerable success as a lawyer in my home state, was asked how long a person's legs should be. "Long enough to reach the ground," he answered. For more on how to apply Lincoln's approach to patent cases, see my article, The Abraham Lincoln School of Patent Litigation: Plain English, Simple Exhibits & Uncommon Humor.
A person's legs should be long enough to reach the ground
How long should a patent claim be? Here's a pretty good claim:
"Normally solid polypropylene, consisting essentially of recurring polypropylene units, having a substantial crystalline polypropylene content."
That's 15 words. It's the sole claim of U.S. Patent 4,376,851, which I helped defend in U.S. Steel v. Phillips in the U.S. Court of Appeals for the Federal Circuit. It was a pretty important invention, recognized by the American Chemical Society as a National Historic Chemical Landmark. The patent was wrested from the winners of the Nobel Prize.
15 words suffice to cover a Nobel Prize winning invention
Essentially, it's a claim to crystalline polypropylene, the only useful form of the basic plastic invented in 1951. The claim covered the invention. It distinguished over the art. It survived 30 years of intense patent prosecution, interferences, litigation and appeals. It dominated the industry. It was worth fighting for.
Take time to write and prosecute a shorter claim
I agree with you, house counsel, that time should be invested in meeting with the inventors to obtain a good understanding of the invention. But that does not lead to the conclusion that every feature should be listed in claim 1. On the contrary, a long picture claim is an indication, as Winston Churchill said, that the writer didn't take the time to write a shorter one.
A claim should be just long enough to cover the invention
That's how long a patent claim should be: Just long enough to cover the invention without reading on the prior art. A claim should be commensurate with the scope of the invention.
Tags:Advocacy, Alice, America Invents Act, Appeals, Attorney, Claim Construction, Federal Circuit, Intellectual Property, Inventions, IP, Lawyer, Litigation, Patent, Patent System, Technology, USPTO
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Nitin 'fLanker' Balodi says:
Hello Mr. Beem,
You have mentioned that shorter claims mean rejection. But isn't it that a shorter claim which is narrow also has less chances of facing a rejection?
-Nitin