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> A rookie mistake is reading the TEXT of a patent. A pro looks only at the claims. The text is only there to "support" the claims That's how I have always loo
by robomartin 5y ago
> A rookie mistake is reading the TEXT of a patent. A pro looks only at the claims. The text is only there to "support" the claims
That's how I have always looked at patents...until I ran into an attorney who insisted that you have to read both and that the text is just as important. The context was in reviewing patents for prior art. This confused the hell out of me because very often the text is where you see someone throw the kitchen sink at the patent. In other words, you often run into things in the text that are not really being claimed.
Not sure who's right any more. Color me confused.
Is the difference between the two cases one where, in the first case, one is using all of the patent (text and claims) as a source of prior art (the text being like a magazine article where someone discusses a bunch of ideas) vs. the second case, where one is looking for infringement of an existing patent based on what is claimed?
- AlbertCory 5y agoBingo. You've got it. I was talking about SparkFun trying to determine if he's infringing. When we look at a patent that way, we care mainly what the claim says. On the other hand, every word of everything ever published can be used as prior art. So if SparkFun was trying to invalidate the patent, they would look for anything published anywhere, including patents but also journals, books, etc. Your comment about the kitchen sink is also true -- when you're trying to get the patent through the PTO, you may want to add claims later, and you cannot change the spec. So you put everything in the spec you might want to claim later.
- robomartin 5y agoDoes someone offer a comprehensive "Patent it yourself" course? This would be very useful, not necessarily to actually write patents but rather to truly understand the subject. It could save entrepreneurs time and money and, yes, some could actually use the knowledge to write their own patents. Patents are very expensive. The small entrepreneur often has to choose between protecting IP and having cash to run the business. Spending $15K to $25K on a patent is out of the question for most small businesses. In that context, the idea of writing multiple patents is nothing less than fantasy. Such a course, if well done, could easily be worth a few thousand dollars. It would also help equalize the disparity of IP "power" between large corporations and the little guy. When someone has the financials to write hundreds of patents per year, while the other side can barely (financially) approach one every five years, that creates a serious asymmetry that is hard to resolve.
- qohen 5y agoNolo Press, which is known for putting out do-it-yourself legal books, has a book for writing one's own patents [0]. At the link, there's a sample chapter. They also have a number of pages on their website related to this topic, which might be worth reading first[1]. [0] https://store.nolo.com/products/patent-it-yourself-pat.html https://store.nolo.com/products/patent-it-yourself-pat.html [1] https://www.nolo.com/legal-encyclopedia/patent-law https://www.nolo.com/legal-encyclopedia/patent-law
- mlyle 5y agoThe text is the authority on what the phrases in the claims mean. So, you can be surprised when the text sets out a much broader meaning of a term than is used in common parlance.
- AlbertCory 5y agoAh, if only you'd seen some of the claim construction briefs and opinions I've seen. The text is not the ONLY authority, and if it contradicts common practice then the lawyers can argue about it. For example, in chemical cases, you cannot have your own definition of "methylated." There are standard definitions of terms. Regrettably, in software not so much.