Archive for February 2, 2009

Drafting Claims of Various Scopes – A Good Strategy!

Greetings inventors, investors, patent drafters and anyone interested in patents! This is Rabbi, Dr. Yosef Freedland, surgeon, and patent attorney; leader of the medical device team Appelfeld Zer Fisher writing to you from the beautiful border of Ramat Gan, along the border of the holy city of Bene Brak; so named because of the many pot holes in the streets. LOL

Before getting into snails, I would like to relate a story about an investor:

Sitting next to each other on a long flight are a young investment banker and an elderly investor, who made money long ago on investments and retired. The young investment banker is thinking that the elderly investor isn’t all that smart and she could easily pull one over on him, possibly as an introduction to derivative mortgage investments that were very popular some time ago when the story took place.

So the young investment banker asks if the elderly investor would like to play a fun game.

The elderly investor is tired and just wants to take a nap, so he politely declines and tries to catch a few winks.

The young investment banker persists, and says, “The game is a lot of fun. I ask you a question, and if you don’t know the answer, you pay me only $5; you ask me one, and if I don’t know the answer, I will pay you $500.”

This catches the elderly investor’s attention and to keep the young investment banker quiet, he agrees to play the game.

The young investment banker asks the first question. ‘What’s the distance from The Earth to the Moon?’ The elderly investor doesn’t say a word, reaches in his pocket pulls out a five-dollar bill, and hands it to the young investment banker.

Now, it’s the elderly investor’s turn.

He asks the young investment banker, “What goes up a hill with three legs, and comes down with four?”

The young investment banker uses her laptop and searches all references she could find on the Net. She sends e-mails to all the smart friends she knows, all to no avail. After one hour of searching she finally gives up. She wakes up the elderly investor and hands him $500.

The elderly investor pockets the $500 and goes right back to sleep.

The young investment banker is going nuts not knowing the answer. She wakes the elderly investor up and asks, ‘Well, so what goes up a hill with three legs and comes down with four?’

The elderly investor shrugs, reaches in his pocket, hands the young investment banker $5 and goes back to sleep.

OK, so much for investment bankers.

So what you’ve been doing is to provide backup positions that allow you to patent your invention. Initially you write broad claims and then you add on claims that provide more and more limitations. In this manner if there are inventions out there that you don’t know about and they are used to challenge your ultrasound probe for finding foreign bodies in a human being, you can combine claims to create a shell that protects your invention.

The reason I use the example of the snail is because the snail carries around its shell and the shell is part of the snail. Similarly a claim set first defines the slug and includes extra claims that can be used to define a protective shell that is part and parcel of our slug, i.e., your broadest claim.

Problem: it turns out that the fish probe actually reflects ultrasound off bones inside the fish, rather than off the fish scales. So in actuality the ultrasound passes through a living body and is reflected from a hard object inside a living body. So in addition to citing the fish probe the examiner disqualifies use of your invention to locate objects in a body.

Solution: you add dependent claims that can be used to distinguish your invention from a fish probe used in lakes. One way to do this may be to describe how your probe includes an array of transducers that are arranged in a way that causes resulting beams that cross. In distinct contrast to fisherman probe uses an array of transducers that produce beams that spread out through the lake.

Another way to go is to include claims that define the invention as having transducers that register the reflected beams following a short period of time. In distinct contrast to fisherman’s probe, it has transducers that register beams following a long period of time.

February 2, 2009 at 12:19 am Leave a comment


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