Patent Application
20100205125
A method of identifying permutations of features of an invention which can be used to structure a reasonable number of (e.g. 20) patent application claims including claims of broad scope, claims of narrow scope, and a uniform range of claims of intermediate scope is disclosed.
A typical patent application includes one or more claims defining a desired scope of protection for an invention. Broad claims are desirable because they provide greater protection than narrow claims. Narrow claims are also desirable because they may more readily patentably distinguish prior art than broad claims, so a Patent Office Examiner may be more willing to allow a narrow claim than a broad claim. Patent applications often include claims of broad, narrow, and intermediate scope.
For example, if the wheel invention were unknown, an application to patent that invention might include a broad claim such as hypothetical claim 1 shown in Table 1. Suppose the wheel inventor had also conceived and reduced to practice features such as a rubber tire for the wheel, a capability to inflate the tire, a capability to replace the tire with another tire, a tread pattern for the tire, and a tread pattern incorporating specific geometric shapes. To protect different combinations of such features, the same patent application might include dependent claims such as hypothetical claims 2-29 shown in Table 1.
Hypothetical claim 1 is the broadest claim in Table 1, in the sense that any disc having a central axle would infringe that claim, regardless of what other features the accused infringing structure might have. Hypothetical claim 2 is narrower than hypothetical claim 1, because in addition to having a disc and a central axle, the disc of the accused infringing structure would also have to be circumferentially surrounded by a tire in order to literally infringe hypothetical claim 2. Hypothetical claim 3 is narrower than hypothetical claim 2, because in addition to having a disc circumferentially surrounded by a tire and a central axle, the tire of the accused infringing structure would also have to be made of rubber in order to literally infringe hypothetical claim 3.
Hypothetical claims 23-28 are the narrowest claims in Table 1, in the sense that in order to literally infringe any of those claims, in addition to having a disc circumferentially surrounded by a tire and a central axle, the tire of the accused infringing structure would also require treads arranged in a geometrically repeating pattern including shapes that are sections of ellipses having eccentricity values between 2.5 and 2.7.
Although it may be rare to encounter an invention having a range of potentially patentable features comparable to the foregoing hypothetical, patent applications commonly include a range of claims of broad, intermediate and narrow scope. Patent applications also commonly include claims of different types, such as method claims, product-by-process claims, and others. A patent application which includes different claim types may also include claims of broad, intermediate and narrow scope for each different claim type (i.e. broad, intermediate and narrow method claims; broad, intermediate and narrow product-by-process claims; etc.).
Patent applications sometimes include dozens of claims of differing scope in order to protect different combinations of features of an invention, or to provide a possible basis for distinguishing prior art which may not be discovered until after the patent application is filed in the Patent Office or after the patent is granted. However it can be undesirable to include dozens of claims in a patent application for various reasons.
One reason is that some Patent Offices charge patent application filing fees which increase depending on the number of claims included in the application. For example, the Fiscal Year 2009 Fee Schedule of the United States Patent & Trademark Office (USPTO) stipulates an additional filing fee of $26 per claim for each claim in excess of 20 claims. If the applicant does not qualify as a small entity then the additional filing fee is $52 per claim for each claim in excess of 20 claims. A United States patent application including the hypothetical set of claims shown in Table 1 would require payment of an additional $234 filing fee (or $468 if the applicant did not qualify as a small entity) if filed while the Fiscal Year 2009 Fee Schedule was in effect.
As another example, the European Patent Office (EPO) charges an additional filing fee of 200 Euros per claim for each claim in excess of 15 claims. Consequently, a European patent application including the hypothetical set of claims shown in Table 1 would require payment of an additional 2,800 Euro filing fee if filed while the EPO's 1 Apr. 2009 Fee Schedule was in effect. In addition to charging 200 Euros per claim as aforesaid for each of the 16th through 50th claims in a European patent application, the EPO charges a further 500 Euros per claim for each claim in excess of 50 claims.
Other countries, including Argentina, Australia, Brazil, China, India, Japan, Pakistan, the Philippines, Russia, Singapore, South Korea, Taiwan and the African Intellectual Property Organization (currently consisting of Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo) also charge fees which may increase depending on the number of claims in the application. In some cases, the amount by which the fee increases is directly related to the number of claims in the patent application. In other cases, the amount by which the fee increases may only be indirectly related to the number of claims in the application. For example, the amount by which the fee increases may depend on the number of pages in the patent application. If a patent application has a large number of claims, then the number of pages in the patent application may exceed a page limit beyond which additional fees must be paid to the Patent Office in which the application is filed.
It can also be undesirable to include dozens of claims in a patent application in view of proposals to require fulfillment of additional non-fee requirements if the patent application includes more than a specified number of claims. For example, the USPTO proposed various requirements (which were eventually withdrawn) in a notice titled “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications” (see 72 Fed. Reg. 46,716-843, Aug. 21, 2007). One such proposed requirement would have required an applicant who filed a patent application containing 25 or more claims to provide an “examination support document” (ESD) containing information about the claims to assist USPTO Examiners in determining the patentability of the claimed invention. Some patent practitioners considered this to be a burden having potentially significant undesirable consequences. Although the USPTO's proposed requirements have been rescinded (see the USPTO's 8 Oct. 2009 Press Release 09-21 “USPTO Rescinds Controversial Patent Regulations Package Proposed by Previous Administration”) it is conceivable that comparable requirements could arise in future, either with respect to the United States or elsewhere.
It can also be undesirable to include dozens of claims in a patent application since the Patent Office is burdened with the task of reviewing each claim to assess its merits, which consumes significant resources, including time spent by Patent Office Examiners in assessing each claim to determine whether it defines patentable subject matter.
The challenge is to include in a patent application a reasonable number of (i.e. 20 or fewer) claims of varying scope so as to:
The foregoing examples of the related art and limitations related thereto are intended to be illustrative and not exclusive. Other limitations of the related art will become apparent to those of skill in the art upon a reading of the specification and a study of the drawings.
Exemplary embodiments are illustrated in referenced figures of the drawings. It is intended that the embodiments and figures disclosed herein are to be considered illustrative rather than restrictive.
Throughout the following description specific details are set forth in order to provide a more thorough understanding to persons skilled in the art. However, well known elements may not have been shown or described in detail to avoid unnecessarily obscuring the disclosure. Accordingly, the description and drawings are to be regarded in an illustrative, rather than a restrictive, sense.
To facilitate the drafting of a set of claims for inclusion in a patent application, it is useful to briefly summarize features characterizing the invention which is to be patented. For example, the aforementioned wheel invention might be hypothetically characterized by 14 features as shown in Table 2. It is assumed that these features have previously been evaluated in relation to known prior art and that these features are believed to be potentially patentable, either individually or in combination with another one or more of the Table 2 features.
For example, a patent application might present feature 1 via an independent claim (i.e. claim 1) such as “A disc having a central axle.” The same patent application might present features 1 and 2 via a dependent claim such as “A disc as defined in claim 1, circumferentially surrounded by a replaceable tire.” The same patent application might present features 1, 2 and 3 via yet another dependent claim such as “A disc as defined in claim 1, circumferentially surrounded by a replaceable rubber tire.” And so on.
Since there are 14 features, there are 214=16,384 possible permutations of those features (i.e. each feature may be either present or absent in each permutation). This implies 16,384 possible claims, but many of the initial permutations are illogical and should be excluded because certain features cannot be claimed unless other features are also claimed. For example, feature 14 “tread has elliptical sections shape” cannot be presented in a claim which does not also present or depend from a claim which presents feature 12 “tire has tread” since there cannot be a tread shape without a tread to apply the shape to. Similarly, feature 12 cannot be presented in a claim which does not also present one or more of features 2, 3 or 8 since there cannot be a tread without a tire. Some other initial permutations are impractical or illogical and should be excluded because certain features should not be claimed if a conflicting feature is claimed. For example, feature 4 should not be presented in a claim which presents feature 7, and vice versa, since a practical tire would not be made of both latex rubber and neoprene rubber. As explained below, exclusion of impractical or illogical ones of the initial permutations reduces the number of permutations of Table 2 features from 16,384 to 246 candidate permutations. This implies 246 possible claims, which is still too many claims. Only about 20 claims are desired.
As an example, computer software can be used to generate a worksheet, table, list or other computer-manipulable representation of all possible permutations of a selected number of features.
The rightmost column in
The uppermost row in
Each initial permutation (i.e. each
The leftmost 13 columns in FIG. 1's row 2 contain the binary digit zero and the rightmost column 1 of row 2 contains the binary digit one. The row 2 permutation “00000000000001” corresponds to a claim containing only Table 2's “wheel” feature number 1, which is a logical broad claim and is therefore included as explained below.
Every column in FIG. 1's row 3 contains the binary digit zero except column 2 which contains the binary digit one. The row 3 permutation “00000000000010” thus corresponds to a claim containing only Table 2's “wheel has replaceable tire” feature number 2. The row 3 permutation is illogical and is therefore excluded as explained below, since feature 2 cannot be presented in a claim which does not also present feature 1 “wheel” because there cannot be a replaceable tire in the context of the Table 2 hypothetical invention without a wheel to support the tire.
The
All 14 columns in FIG. 1's row 16384 contain the binary digit one, yielding the permutation “11111111111111” which corresponds to a claim containing all of the 14 features listed in Table 2. The row 16384 permutation is both illogical and impractical, and is therefore excluded as explained below. For example, feature 4 should not be presented in a claim which presents feature 7, and vice versa, since a practical tire would not be made of both latex rubber and neoprene rubber.
Skilled persons will understand that computer software can be configured to generate a worksheet, table, list or other computer-manipulable representation of initial permutations like that of
Computer software can also be used to exclude illogical or impractical permutations of features, and to thereby identify permutations which are logical, practical candidates for structuring patent application claims. For example,
For example, the
4”. The “
” symbol means “not”. The “7 req
4” constraint result column corresponds to the constraint that any claim which includes Table 2's “rubber is neoprene rubber” feature 7 must exclude Table 2's “rubber is latex rubber” feature 4. This is because, as previously mentioned, feature 4 should not be presented in a claim which presents feature 7, and vice versa, since a practical tire would not be made of both latex rubber and neoprene rubber.
In
The aforementioned “1 req” constraint can be implemented via a constraint formula such as 1−x where x is the binary digit value of feature 1 in the
In the
The aforementioned “2 req 1” constraint can be implemented via a constraint formula such as z·(1−y) where y and z are respectively the binary digit values of features 1 and 2 in the
In the
The
The aforementioned “7 req 4” constraint can be implemented via a constraint formula such as z·y where y and z are respectively the binary digit values of features 4 and 7 in the
4” constraint because that permutation includes both of features 4 and 7 which is impractical as previously explained. This facilitates exclusion of the
In the 4” constraint because that permutation includes feature 7 but does not include feature 4. This facilitates inclusion of the
In
Computer software can be developed or configured to apply constraint formulae as aforesaid to generate constraint result values for each initial permutation of features, sum the constraint result values for each initial permutation, and suppress initial permutations having non-zero summation values to yield a worksheet like that of
A simple, brute force, approach at this stage would be to attempt to identify all possible groups of 20 of the 246 candidate permutations which satisfy all 15 constraints. The groups could then be examined to identify a “best” group which includes permutations corresponding to claims of broad scope, claims of narrow scope, and claims of intermediate scope. However, the number of such groups is 246!/(20!·226!)≈1.22437699×1029 so it is impractical to determine all of the possible groups. It would also be impractical to attempt to identify a “best” group from amongst such a large number of groups.
Another approach at this stage is to randomly select 20 permutations from the 246 candidate permutations which satisfy all 15 constraints. Since every one of the 246 of the permutations which satisfy all 15 constraints is a candidate for structuring a potential patent application claim, any randomly selected number of those 246 permutations will be suitable candidates for structuring potential patent application claims. However, random selection may not yield permutations which are suitable candidates for structuring a series of claims including some claims having broad scope, some claims having narrow scope, and some claims having intermediate scope, as is desirable. This problem could be addressed by determining the “quality” of the randomly selected permutations in accordance with some predefined quality factor or factors, comparing the so-determined quality with a similarly determined quality of another group of randomly selected permutations, and retaining only the randomly selected permutations having the better quality group. This procedure could be iteratively repeated for other groups of randomly selected permutations until a group having a quality satisfying a predefined threshold is identified. Alternatively, the iterative procedure could be repeated until the quality obtained after a predefined number of iterations fails to improve by more than a predefined amount.
Another approach is to numerically rank the features of the invention and use the rank values to bias the selection of a reasonable number of (e.g. about 20) permutations from the set of permutations which satisfy all of the applicable constraints. Two or more rank types can be used, as shown in Table 2, which depicts the allocation to each feature of a numerically expressed specificity rank S, and a numerically expressed importance rank I. S may for example have an integer value of 1, 2, 3, 4 or 5; with S=1 corresponding to a very general (i.e. broad) feature, S=5 corresponding to a very specific (i.e. narrow) feature, and S=2, 3 or 4 corresponding to features of respectively intermediate specificity. I may also have an integer value of 1, 2, 3, 4 or 5; with I=1 corresponding to a feature of very low importance, I=5 corresponding to a feature of very high importance, and I=2, 3 or 4 corresponding to features of respectively intermediate importance. “Importance” may have any one of a variety of meanings, such as commercial importance, capability of distinguishing a prior art reference, etc.
In general, each integer unit of increase in an invention feature's specificity rank S may correspond to a factor of ten increase in specificity. For example, a specificity rank of S=3 could be assigned to an invention feature which is considered to be about ten times narrower than an invention feature having a specificity rank of S=2. Similarly, each integer unit of increase in an invention feature's importance rank I may correspond to a factor of ten increase in importance. For example, an importance rank of I=4 could be assigned to an invention feature which is considered to be about ten times more important than an invention feature having an importance rank of I=3. An invention feature's importance rank, I, may represent the extent to which that feature corresponds to something of business value. An invention feature which is considered to have significant business value may be assigned a higher importance rank, I, than an invention feature which is considered to have only slight business value.
Table 2 shows predefined specificity and importance rank values S, I for each one of the 14 hypothetical features of the wheel invention shown in Table 2. For example, the specificity rank value S=1 is allocated to Table 2's “wheel” feature number 1 to reflect the very general (i.e. broad) nature of that feature relative to the other features. By contrast, the specificity rank value S=5 is allocated to Table 2's “tread has herringbone shape” feature number 13 and to Table 2's “tread has elliptical sections shape” feature number 14 to reflect the very specific (i.e. narrow) nature of those features relative to the other features. Intermediate specificity rank values S=2, S=3 or S=4 are allocated to the other Table 2 features to reflect their relative specificity.
The importance rank value I=5 is allocated to Table 2's “wheel” feature number 1 to reflect the very high importance of that feature relative to the other features. By contrast, the importance rank value I=1 is allocated to Table 2's “rubber is neoprene rubber” feature number 7 to reflect the very low importance of that feature (i.e. neoprene rubber is expensive and is impractical for use in tires). Intermediate importance rank values I=2, I=3 or I=4 are allocated to the other Table 2 features to reflect their relative importance.
Specificity ranks are additive. Thus, if a permutation contains two invention features, each having a specificity rank S=2, then the total specificity ST for the permutation is 2+2=4. This total specificity ST reflects the fact that each invention feature restricts claim scope, such that a claim containing two invention features is narrower than a claim containing one or the other, but not both of those two features.
Importance ranks are also additive. Thus, if a permutation contains three invention features, having importance ranks of I=2, I=3 and I=3 respectively, then the total importance IT for the permutation is 2+3+3=8. As explained below, this total importance IT assists in the inclusion of invention features of equal importance in approximately equal amounts, and assists in the inclusion of invention features of greater importance more often than invention features of lesser importance.
The specificity and importance rank values of the features included in each permutation are accordingly summed to derive a total specificity ST and a total importance IT for each one of the 246 permutations which satisfy all 15 of the aforementioned constraints. For example, the
As another example, the
As a further example, the
Computer software can be used to determine the total specificity ST and total importance IT of each one of the 246 permutations which satisfy all 15 of the aforementioned constraints. For example, a permutation's total specificity ST can be calculated by multiplying the binary digit value (i.e. 0 or 1) of each feature in that permutation by the feature's specificity rank value S and summing the results. Similarly, a permutation's total importance IT can be calculated by multiplying the binary digit value (i.e. 0 or 1) of each feature in that permutation by the feature's importance rank value I and summing the results.
For example, the
The permutations shown in
The permutations shown in
One separation technique is to select permutations having overall specificity rank values SR which differ by an equal or approximately equal amount. For example one could select the 20
An alternative separation technique is to select permutations based upon the square roots of their overall specificity rank SR values. This increases the weighting of permutations having low total specificity ST relative to permutations having higher total specificity ST, yielding a more uniform distribution of the permutations throughout the entire range of total specificity ST values. For example, each permutation can be allocated to a specificity group SG in accordance with the equation:
where SR is the permutation's overall specificity rank value, L is the desired number of claims (e.g. L=20) and PT is the number of candidate permutations which satisfy the applicable constraints (e.g. PT=246). Equation (1) yields an integer result having a minimum value of 1 and a maximum value equal to L.
After the permutations are allocated to specificity groups as shown in
For example, as seen in
The
The
The
Table 3 contains some claims of broad scope (e.g. claims 1-3), some claims of narrow scope (e.g. claims 17-20), and some claims of uniformly ranging intermediate scope (e.g. claims 4-16).
Note that the Table 2 invention feature number 7 “rubber is neoprene rubber” is not included in any of the invention feature permutations shown in
The importance rank I of a particular invention feature can be increased (or decreased) if it is desired to force the inclusion (or exclusion) of that particular feature in a set of claims for any reason. One may also adjust the importance rank values to ensure that every invention feature will appear at least once in at least one claim, although the capability to make such adjustments and retain permutations corresponding to claims of broad, narrow and intermediate scope will depend on the number of desired claims and on the number of invention features. The specificity rank values, the importance rank values, and the desired number of claims L, can also be adjusted to produce different claim sets which a patent practitioner may compare and evaluate as an aid to preparation or prosecution of a patent application.
One may also allocate more than one importance rank value to each invention feature, in order to bias the selection of invention feature permutations in accordance with different types of importance characteristics such as commercial importance, importance in terms of the ability of an invention feature to distinguish a prior art reference, importance in terms of cost, importance in terms of implementation difficulty, etc. This facilitates focusing on different aspects of commercial importance which may be related to the perceived profit potential of different invention feature permutations.
In general, and as shown in
A set of all possible permutations of the N invention features is then constructed (
Each invention feature is then considered in relation to all of the other invention features to determine whether the feature under consideration does or does not require one or more of the other features in order to satisfy patent claim formalities requirements. A set of constraint formulae is then defined to reflect interdependent invention feature permutations which should be included, and to also reflect permutations which are impractical or illogical and should be excluded (
The constraint formulae are then applied to the 2N unique permutations to identify permutations which are impractical or illogical. All such impractical or illogical permutations are excluded, leaving only those invention feature permutations which are logical, practical candidates for structuring patent application claims (
A number, L, of the candidate permutations is selected (
One claim is then constructed for each one of the L selected candidate permutations, such that each constructed claim incorporates the invention features of a corresponding one of the L selected candidate permutations (
In another embodiment, as illustrated in
Q1 and Q2 are then compared (
If the
If both of the
Each invention feature is assigned a numerically expressed specificity rank S (
A set of all possible (i.e. 2N) permutations of the N invention features is constructed (
Constraint formulae are defined, as previously explained, to reflect interdependent invention feature permutations which should be included, and to also reflect permutations which are impractical or illogical and should be excluded (
The specificity rank values of the invention features included in each candidate permutation are then summed to derive a total specificity ST for each candidate permutation (
The candidate permutations are then sorted in order of increasing total specificity ST, and permutations having the same total specificity ST are further sorted in ascending permutation number order. Each sorted candidate permutation is allocated a sequential overall specificity rank SR value (
The candidate permutations are then separated into L specificity groups, based on the permutations' overall specificity rank SR values (
Within each specificity group, the candidate permutation having the highest total importance within that group is selected as the best candidate permutation for that group (
While a number of exemplary aspects and embodiments have been discussed above, various modifications are possible. For example, computer software can be used to generate a textual representation of each candidate permutation, to provide a guide for structuring patent application claims corresponding to the candidate permutations. Each permutation can be represented textually by concatenating or hierarchically concatenating the corresponding Table 2 invention features. As an example, the
As another example, computer software can be used to generate a textual representation of a pseudo-claim structure corresponding to a set of candidate permutations, to provide another convenient guide for structuring patent application claims corresponding to the candidate permutations. For example, as previously explained, the row 2 permutation “00000000000001” corresponds to a claim containing only Table 2's “wheel” feature number 1. Similarly, the row 8 permutation “00000000000111” corresponds to a claim containing Table 2's “wheel” feature number 1 and also containing Table 2's “wheel has replaceable tire” feature number 2 and also containing Table 2's “tire is made of rubber” feature number 3. The row 2 permutation thus corresponds to an independent claim containing only Table 2's “wheel” feature number 1, and the row 8 permutation corresponds to a claim which depends from that independent claim and which also includes the limitations “wheel has replaceable tire” and “tire is made of rubber”. The row 16 permutation “00000000001111” corresponds to a claim containing Table 2's “wheel”, “wheel has replaceable tire”, “tire is made of rubber” and “rubber is latex rubber” feature numbers 1 through 4. The row 16 permutation thus corresponds to a claim which depends from the dependent claim corresponding to the row 8 permutation and which also includes the limitation “rubber is latex rubber”.
Skilled persons will understand that computer software can be configured or developed to identify such dependent relationships within a set of candidate permutations and to output a textual representation of a pseudo-claim structure embodying such relationships, for example as shown in Table 4. In Table 4 the column heading Pi indicates the permutation number as shown in
A patent practitioner can readily utilize the Table 4 pseudo-claim structure to draft a set of patent application claims, for example as shown in Table 3.
A computerizable technique for identifying dependent relationships within a set of invention feature permutations like those depicted in
The next
The next
The next
The next
The remaining
Those of skill in the art will recognize further modifications, permutations, additions and sub-combinations of the foregoing exemplary aspects and embodiments are possible. For example, as of February 2010 Canada does not levy claims-based fees, so a Canadian patent application may contain a large number of claims. If it is desired to file a corresponding foreign patent application claiming priority on the Canadian application, it may be desirable to reduce the number of claims in the foreign application to reduce claims-based fees in any country which levies such fees. Similarly, as of February 2010 the World Intellectual Property Organization does not levy claims-based fees in respect of international patent applications filed pursuant to the Patent Cooperation Treaty, so a PCT application may contain a large number of claims. If it is desired to pursue national or regional phase entry of a PCT application in any country or region which levies claims-based fees, it may be desirable to reduce the number of claims in national or regional counterparts of the PCT application to reduce claims-based fees in such countries or regions.
It is therefore intended that the following appended claims and claims hereafter introduced are to be interpreted to include all such modifications, permutations, additions and sub-combinations as are within their true spirit and scope.
This application claims the benefit of U.S. provisional patent application Ser. No. 61/150,901 filed 9 Feb. 2009.
| Number | Date | Country | |
|---|---|---|---|
| 61150901 | Feb 2009 | US |
