In this blog post I will say a few words about what not to do when drafting claims. First a metaphor. Suppose the invention is the one in Harry Nilsson’s song “Coconut“. The first draft of the proposed patent claim, prepared by your new associate, is:
1. A method for treating a bellyache, the method carried out with respect to a lime and a coconut, the method comprising the steps of:
- putting the lime in the coconut, and
- drinking it all up.
The way you establish that someone is infringing this claim is by checking to see whether they put the lime in the coconut and then whether they drank it all up.
Now suppose your associate interviews the inventor. The inventor is very proud of cleverly having figured out that the way that this cures your bellyache is through panchromatic resonance and other highly ambient domains. Any claim that fails to show off this cleverness is a bad claim, says the inventor. So in response to the inventor, your associate revises the claim like this:
1. A method for treating a bellyache, the method carried out with respect to a lime and a coconut, the method comprising the steps of:
- putting the lime in the coconut,
- permitting the lime and coconut to react together by means of panchromatic resonance and other highly ambient domains, and
- drinking it all up.
The way you establish in court that someone is infringing this claim is by checking to see whether they put the lime in the coconut and then whether they drank it all up, except that in addition you have to bring in an expert witness with a PhD and a suit and a nice haircut … who explains that when the infringer does it, the infringer does in fact make use of panchromatic resonance and other highly ambient domains.
Meanwhile the infringer brings in their own competing expert witness who also has a PhD and a suit and a nice haircut. Who explains that it is not at all clear that panchromatic resonance is taking place in the mixture of lime and coconut and that in fact it might be some other kind of resonance, and that indeed there is a substantial minority of investigators in this field who feel the actual mechanism involves framulation rather than panchromatic resonance. And that the domains are only slightly ambient, not highly ambient.
The jury listens to the two experts, and rules in favor of the infringer. Why? Because the infringer’s expert has a British accent. (Just kidding, but I have seen trials where as far as I could tell the reason the winning side prevailed was exactly the British accent of the expert.)
So the main point here is … I would never want to put into the patent claim a statement about what is going on deep down inside our precious little molecules … unless there is no other choice about it.
Maybe we talk about it in the specification. But not in the claim.
Extra credit if you recognize the cultural reference in this claim, the panchromatic resonance and other highly ambient domains.
Returning to our claim drafting exercise.
My suggestion is that in the claim we need objectively observable things. Only that. Nothing that characterizes the things that we can’t see, like how our little molecules are vibrating this way and not that way.
Would not a claim reading:
“A method for treating a bellyache comprising: orally administering a composition comprising one lime in one coconut to a subject in need thereof” be preferable to avoid any question of induced infringement as well as avoiding a claim reciting the mechanism of action?
First of all thank you for coming up with a much more concise way to describe the “what not to do”. That is, “avoiding a recitation of the mechanism of action”. I will try to remember that phrase. And yes, I think there are good reasons to include your claim among the claims in such a patent application.
“Panchromatic resonance…” from “Evelyn, a Modified Dog”
by F. Zappa
Precisely!
Your example is useful one that I hope you won’t mind if I adapt for my patent drafting class. It reminds me of Hanson, U.S. Patent No. 6,457,474 “Method of Treating Chest Pain,” which discloses lime sans coconut for treating angina. There are lots of good claim drafting lessons in this patent as well.
I am delighted if this example reaches your classroom. You might play a fair-use snippet of the actual song to get the students into the mood as you introduce the fact pattern.