Every Word Hurts You: Patent Claims

Every Word in the Description Hurts You, and the Claims Hurt You, Too.

The length of the claims really matters.  The length of the specification is important – but only up to a point.

There was an old joke in the Patent Office that when a claim is longer than your hand, it must be allowable.  The examiner would place their hand on the claims page of the application.  If the first claim was longer than the height of the four fingers, it was allowable.

Every word in the claim is narrowing, so the shorter the claims, the better.  Similarly, every word in the specification represents trade secrets that you are giving away to the public.

Some patents have very long claims.  Long claims will go on for line after line, sometimes being an entire column of a patent document. 

Long claims are worthless.

They are worthless because there must be some way to design around claims that are so restrictive.  If a competitor can change one little piece of the claims, they can essentially do the same invention but never have to pay a license fee.

Any time I see very long claims, I am almost 100% confident that I can figure out how to build a product that does not infringe.

If you look at a patent’s claims and they are “long,” they are probably weak.

On the other hand, very “broad” claims are very short.  These claims have a different weakness because they can be invalidated by a bigger set of prior art.  There is more surface area for attack.

There are some patent attorneys who play the game of padding claims with words that add “structure” to the invention that would have been there anyway.  I am not a big fan of being clever by hiding the ball from the examiner. Long claims are long claims, and every word in the claim is one more way to design around the patent.

The Balanced Approach

My view is that patents should be focused, well-researched, and tailored for a specific business purpose.  As new inventions occur, we will have more customer data to support the patent’s value, and we will pursue those inventions if they make business sense.

The first patent should have enough options so that you ensure you get a patent, but not some exhaustive list that will harm you.  With the battery separator company example, the list was comprehensive – and very damaging.

My technique is to research, research, and research before deciding to write a patent.  I have this luxury because I finance the patents, and this type of research is incredibly expensive otherwise.

I typically spend five hours writing claims for every one hour of actually writing the patent application. 

Truthfully, once I have written the claims, searched them several times, analyzed them as many different ways as I can, writing the patent application is very quick.

As a company grows, they begin solving technical and business problems.  The technical problems are solved when there are no off-the-shelf solutions, and you have to invest in the engineering.  The business problems are solved when you uncover a new layer of customer understanding.  Both these investments and insights are examples of potential patents.

The engineering or technical problems are problems that a competitor will have to face when they compete with you.  If you can nail down the best way (or ways) to solve these problems in a patent, you can control the marketplace when competitors arrive.

The customer insights are even more hard-fought than the engineering solutions, but are often overlooked as potential patents.  A business starts out with a premise that customers have a need, so you offer a solution.  As time progresses, you find out that the customers use the solution in a different way than you thought.  Or you might discover that your solution was only half of what they really needed, and there is a bigger need somewhere else.

The customer discovery and response cycle is the essence of business. Your patents should reflect this.

Getting a patent on the solutions to the customer’s problem is insurance that you have a moat around that discovery, at least for the time it takes for the market to further evolve.

Most – virtually all – patents are written because an inventor wants some kind of credit for their accomplishments. This happens in big companies, but also in tiny startups. It is staggeringly rare that a company has a deliberate, intentional strategy to focus their patents on the business aspects of patents: who is going to infringe, how are they going to infringe, and does that give us a competitive advantage if we have a patent in this space.

Why don’t more people focus on the most important aspects of IP?