Expert: Rene Hasekamp - 11/7/2005

Question
Dear Rene Hasekamp,
I have an invention that's purely mechanical but I don't think it is safe enough just by making claims to its' technical features because its' nature of operation involves some critical law of physics. I wonder how I can generally state claims that directly or at least indirectly protect these laws, although scientific laws can't be patented. I mean the physical aspects are variable (size, height, weight, etc) but the law of physics involved must be unchanged in order for the invention to be operational. I am not sure if it is necessary to include the physical aspects in the claims because I believe it is more important if I just stress on the laws involved. The physical aspects will have to be developed around the laws. I don't think it will be as easy as "... programmed in a way that it will move like ..." as Aibo's does. How should I state the claims, generally?

Say, if my invention produces light and there's already a patented invention that function the same (give light) but the difference is that my invention is mechanical-based and the other is electrical-based, do I still have to include the other invention as a prior art, considering both inventions function differently?

Finally, I heard that there're cases where some American companies are able to patent what already existed. For example, some pharmaceutical companies discovered new herbs and patented them while others salvaged technologies from the fall of the Soviet and patented them as well. Are these true and how can they escape the rules that no discovery is patentable and that salvaged inventions are not novel? And I also heard that the inventor of a paper clip (or whatever invention it was) actually sent in an application that's few hundred of pages thick. Is that really necessary? Correct me if I am wrong.

By the way, when you wrote "The claims (and the description) have to be clear to an "average expert" in the field of the invention, not to a layperson.", I wonder how clear should they be to the average expert and the reverse to a layperson.

Thanks.

Answer
Hello,

Your questions are becoming more and more difficult to answer, because it is not clear what they are about. But on the other hand you should not disclose your invention to me.

This is what I can say:

Scientific laws cannot be patented. Not directly, not indirectly. That is clear to you too, I believe. However, inventions involving laws of physics can be described, in my opinion, solely at the hand of the technical features, because the laws of physics are unchangeable. It should be possible to state what laws are involved and to state how your invention uses them.
You suggest that too, and it would give a full and clear disclosure of your invention.
For the answer to the question how you should state your claims exactly for your particular invention, I strongly advise you to consult a patent attorney before you file your invention. If you make mistakes in drafting your claims initially, these mistakes can - in most cases - not be repaired afterwards!

The example of producing light seems easy to comment on: If an existing patent produces light by using some electrical device, that device can - and will - be described in the claims.
And if your device produces light mechanically, the mechanical devices should - and can - be describes accurately in the claims.
The electrical device to produce light will not be harmful for the novelty or inventive step of your mechanical device to produce light.
You can include the electical device in the statement of the prior art, and I would do so. But that is an aspect you could add later too, if the examiner requires it.
On the other hand I believe that US patent law (with which I am not completely famiiar) requires you to state the nearest prior art. Therefore I would mention as much near prior art as I knew in te US.

Every patent law forbids patenting of inventions that are not novel. Novelty is the very first requirement. Herbs cannot be patented, but maybe a novel composition made out of them could! That would be novel. However, if the Chinese used these herbs for ages to make tea from, and the patent would not give more, than the patent should not have been granted and in my opinion would not be valid. It could be  nullified.
Novelty should be taken quite strictly, however. If to the herb tea new secondary compounds would be added, it still would be novel. Inventive step would then be the next horde to take.

Soviet patents and publications (in Russian language) also belong to the state of the art and would make it impossible to patent this matter again. If it happened, these patents would be not valid.

It is not necessary to enter an application of many pages for a simple invention. An average patent is probably 5-10 pages long, ranging from one to more than hundred pages. The patent law requires a full, but concise description.

Claims should be so clear that the avarage expert can apply the invention. That is the requirement. In many cases the layman will not understand - and does not have to understand - a syllable oof the patent.

Regards,
Rene Hasekamp