If you’ve ever taken even a cursory glance at a patent, you’re certainly aware that you most definitely won’t find riveting reading hidden within the depths of the patent claims. As an example, consider this selection from the abstract for Patent #7,479,949:
The one or more heuristics comprise: a heuristic for determining that the one or more finger contacts correspond to a one-dimensional vertical screen scrolling command, a heuristic for determining that the one or more finger contacts correspond to a two-dimensional screen translation command, and a heuristic for determining that the one or more finger contacts correspond to a command to transition from displaying a respective item in a set of items to displaying a next item in the set of items.
Chances are that your attention likely wandered right off the edge of your phone or computer screen a couple of lines in. So you may be surprised to learn that this is part of the opening one of many Apple Computer’s many infamous multitouch patents, which have been the subject of innumerable lawsuits, and an even larger number of billable hours for some very happy patent lawyers.
Drafting a patent application which will stand up to a patent examiner’s unforgiving gaze requires the legal assistance of an experienced patent lawyer, like Michael O’Brien of O’Brien Patent Solutions. If you would like help in properly protecting your intellectual property, contact O’Brien Patent Solutions today by calling (916) 760-8265, or sending us a message using our contact form.
Returning to the topic at hand, the language used patents like the example above tends to be very dense and difficult to parse. There’s a very good reason for that.
Patent applications require extreme precision of language. Thus, they must use language that has stood the test of time (and lawsuits).
When you consider how much time was spent 20 years ago litigating the exact meaning of the word ‘is,’ you may begin to understand why patent claims live and die based on the definition of a word.
Words and their exact definitions are the life blood of patents. Much as ancient territories of land were described in land claims using a breathtakingly detailed system of ‘metes and bounds,’ patent claims are carefully constructed using exact combinations of words whose meanings are very well understood by patent examiners.
Since the passing of the Patent Act of 1790, judges have deliberated over the exact meanings of words and phrases such as “comprising,” “consisting of,” and “said.”
The takeaway of this is that if you don’t understand how to draft a patent application, and more importantly the ‘language’ spoken by patent examiners, lawyers, and judges, then you most certainly need the assistance of a patent lawyer.
An experienced patent lawyer typically views a casually written patent application full of casual language and colloquialisms with the same level of anxiety as a nuclear scientist coming upon two lab techs playing catch with a large hunk of plutonium. It’s a catastrophe waiting to happen.
Patents are formal affairs. You don’t go to a gala wearing a t-shirt and cargo shorts. You need to be on point, with the exacting, formalized word choice that patent examiners demand, and which will stand up in court if the validity of your patent is challenged by a competitor.
Patent attorneys are skilled at using terms that allow for broad interpretations, and thus broad patent applications. But the use of colloquialisms can significantly narrow a patent’s protections.
Experienced patent lawyers are experts at choosing terms that will be interpreted as broadly as possible, thus catching a wider net that will catch as many infringers as possible. The goal is to describe an invention as a specific structure that isn’t limited to a specific application. This gives you wiggle room, and allow for patent protection that extends to applications that you had never even occurred to you at the time you created your invention and started drafting your application.
On the other hand, inventors will often lead off their description with an opening like, “My invention is a means for…” This is a disaster, as it provides an open door to would-be infringers. This is because the phrase triggers 35 U.S.C. §112 (f), so that your claim is limited to the combination of means and function outlined in the application. If you patent your invention for a niche application and it ends up being used in a different context, the limited nature of your patent may mean that you have no means of extracting a licensing fee from those who have appropriated your invention for other purposes.
Worse yet, if you use a word that isn’t recognized as part of the standard vocabulary, your claim(s) may be narrowed even further or eliminated altogether. As we discussed in a previous blog, patent courts have a term for colloquialisms used in patent applications that are not part of the recognized structure for phrasing patent claims: ‘nonce.’ Some examples of nonce words include “mechanism,” “element,” and “device.” When a patent examiner (or judge) sees a nonce word like one of these, they interpret it as a fancy verbal construct that is tantamount to that dreaded “a means for” phrase, and thus narrow the patent claim to exactly what is described.
It was in just the past couple of years, in Williamson v. Citrix Online, that the Federal Circuit overruled a lower court’s ruling and found that the word “module” was a nonce word, which thus limited Williamson’s patent to a narrow “means plus function” interpretation that allowed Citrix to avoid paying licensing fees. This case set a very strong precedent that when a patent application fails to carefully characterize the structure of their patent without using nonce words, their patent automatically shifts to a narrow “means plus function” interpretation, which significantly hurts their ability to collect damages from infringers.
In short: Word choice can make or break your patent. If you don’t speak the language of the patent world, then it’s wise to get the help of a patent attorney who knows the jargon.
If you would like help creating a patent application which will give you the greatest possible legal protection for your invention, O’Brien Patent Solutions can help. Contact us today by calling (916) 760-8265, or email us using our contact form.