Expert: George H. Morgan, P.E., Patent Agent - 10/31/2010

Question
I'm writing a application for a patent on a woodworking device. Think I have it under control except for the claims section.
Here is my question:
A unique feature of my invention is its simplicity. It gets the job done with fewer components than the prior art.  In my claims, can I claim that my invention is less complex, has fewer parts, is cheaper to build?

Thanks much
Bill

Answer
No. That is a benefit of your invention, not a claim in itself.

The best I have seen, over my career, for explaining claims is "Landis on Mechanics of Patent Claim Drafting". I have a fourth edition published by PLI Press, 810 Seventh Avenue, New Yark, New York 10019
(800) 260-4754, www.pli.edu, with release No. 3 (my copy) of Dec. 1999. I also have my 1974 edition of "Mechanics on Patent Claim Drafting by John L. Landis, & somewhere an earlier copy which was perused, studying for the patent registration exam back in 1973, which I recall as an eight hour exam, which one third of the aspirants passed, some of which were taking it for the second or third time.

As you have a mechanical invention, I would suggest getting a copy through an interlibrary loan, or trying to buy one on the internet. The basics of mechanical claims are well covered by all the editions I have owned or seen. The later editions delve deeper in some of the more esoteric types of inventions...i.e. chemical, computer, software, or whatever, as I recall. So, if you find an older edition, much cheaper than the latest, that would probably be of great assistance to you.

Finally, I trust you have pursued "Patent It Yourself" by David Pressman, Nolo Press, Berkely, California. You can get it through your local free public library. Or, Edward R. Hamilton, Bookseller, out in New England (Conneticut or somewhere up there in damyankee land)has a stock of 13th editions for something like $7.50 each, plus $3.50 shipping. I have it, plus the 14th, and lots of editions in between. In it, he includes the "pro se inventors petition" which basically asks the examiner to help on the claims if he sees patentable matter not properly claimed. The USPTO is the most inventor friendly patent office in the world. I have seen numerous instances where the examiners did just that. A new copy is around $40, but the 13th edition should suffice for your purposes.  I have bought lots of the different editions, over the past 17 or so years.
It is a great cook book on the nuts and bolts of the patent application process.

If you are filing a provisional first, which I highly recommend, you don't need claims. Pressman, for example, recommends against including them in the provisional, and I concur with him on that.

Two critical points to keep in mind. The Supreme Court has issued two rulings over the past 5/10 years that have substantially raised the bar on patent applications.

The first one, known as "Kessler" (as I recall) says that if you have to modify a claim to get acceptance, during the process, you lose rights under the "doctrine of equivalents". This means  you need to get those claims as dead right as you can, the first go-around. That means a good patent search is essential, to be sure you have all the prior art nailed, and  your claims clearly distinguish your invention from the prior art.

The second one, raised the bar, substantially, on "obviousness". In the past, if the examiner cited elements of your invention as found in a disparate number of issued patents, you could argue that the various other patents did not teach to the same end, as decided by a district court ruling. The Supreme Court, in their wisdom, through that out, saying that it was not necessary for the other inventions (or published applications, for that matter) to teach to the same ends.  Suddenly, that made it much tougher to get an application approved. It also cast doubts on the validity of many isssued patents, perhaps as many as one half to three quarters.

So, if all this is new to you, and you haven't gone the provisional route, as of yet, I suggest you file the provisional first, then study up before filing the formal a year later. Also, get out and start selling your invention to raise the funds to get expert help.

On one of my own inventions, some 12 or so years ago, I had eight reviewers, most of them either patent agents, or patent attorneys, including a top notch, world class hydraulics guru doing my drawings, to get every jot and tittle correct, and my son who has a PhD in Mechanical Engineering and was studying for his patent registration.

It came back allowed, with two examiner corrections (from my Pro Se inventor's petition), which comprised correction the spelling of hydraulics in one of my claims, plus a "what" to a "which". The next four sailed right through, with only one office action. And that one, the examiner allowed the seven claims a colleague had come up with (a genius on claims) but said I had to rewrite my seven into one claim for it to be allowed. I thanked the examiner, but said I was happy with the claims he approved. Then, just as I was feeling on top of the world with my last invention, I ran into the obviousness bar, as there were two inventions out there, which each had elements of my invention, so we are studying how to answer that one. I suspect the examiner is correct, and we are taking most of the 90 days allowed to try to figure out a response.

I am not trying to muddy up the waters for you, but I can feel your pain in trying to get your first application right as I have been there & done that! My first eight or twelve patent inventions were while I was an employee and my employer owned them, and I was not involved in the prosecution. A number of them were patented in numerous foreign countries, and I have no idea how many foreign patents are out there with my name on them. I didn't ask and they didn't tell me. It could well be another 24/50 as over $600 million of product went out the door with the patent numbers of my inventions on them. I still have the $1 bill from those efforts.

Another tip:  Scamming inventors is a hundreds of million dollars a year racket in the U.S. along. My web site, http://www.evansville.neb/biz/patagent has an "Inventors Resources" page with a link to the Ronald J. Riley "Caution" Page that lists many of them. The web site also has a good book review page of helpful texts for inventors, creative people, and parents inflicted with creative children  you might find of interest.

Some of the more suspicious, even notorious, invention promotion firms include Davison, Invention Submission Corporation, InventHelp (which is owned by Invention Submission Corporation), Absolutely New Idea, and Millenium, to name a few. As it says in New Testament, when a devil cast out by Jesus, "his name was Legion...as there were so many of them".

Best wishes on your project. I realize this was a long answer, perhaps more than you wanted, but they always say, "Don't ask a question unless you want to hear the answer!"

George H. Morgan
Professional Engineer (since 1958)
Registered Patent Agent (& still active) since 1973