How to bypass patent claims [With Tuto]


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Last updated : Aug 21, 2022
Written by : Alan Hartigan
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How to bypass patent claims









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How to bypass patent claims


Comment by Harvey Costales

hello and thank you for joining us for another exciting episode of inventors quick tips today we are talking about the basics of patent claims patent claims are a very important part of the patent to a large extent they give the patent its value so here we are going to describe some of the basics about how claims work even if you don't write your own claims as an inventor you have an interest in getting a better understanding of how claims work so you can ensure that your patent applications are covering the important aspects of your invention so what are patent claims anyway think of a patent as a deed to some real estate just as the deed will recite the geographical coordinates of the land parcel the patent claims will state precisely what the invention is that is what exactly is it that someone else is not allowed to do without getting your permission first when someone makes uses or sells the invention you have claimed in a patent without permission it is called infringement when examining a patent for infringement it is the claims that will be checked against the infringing activity this is important to note in your patent application you can write and describe anything you want in the written description or specification as it's called of the patent application and you can and should describe all the details and all the cool features of your invention however when it comes time to determining infringement that is determining of someone else's using making selling your invention without permission it is the claims that are looked at to determine this now a regular patent application has claims at least one claimed provisional patent applications do not require any claims but many patent professionals include a a few claims in provisional applications so here we are going to discuss a set of very trivial sample claims these are not real claims and the purpose is simply to show how claim coverage works with multiple claims so in our example claim one we claim a car with a roof made out of vinyl that means while we are not claiming that we invented the car or even that we invented the concept of a roof on a car we are claiming that we have invented the concept of a vinyl roof on a car and that gives advantages in styling flexibility because the vinyl can be fabricated in different colors and textures for a unique look now we add a second claim claim to which recites that the roof is black claim one is referred to as an independent claim it stands on its own and does not refer to any other claims claim 2 is a dependent claim it depends from claim 1 in this case claim 2 is a further limiting claim it basically says take everything you have and claim 1 but further restrict it to a particular color of roof in this case black note that normally claiming objects of a particular color is not done and keep in mind that this is just an example to show you how claim 2 is more restrictive than claim 1 so now thinking about claim coverage if someone else had a car with a green vinyl roof that would be covered under claim 1 which pertains to all vinyl roofs no matter what color they may be but it would not be covered by claim to which only pertains to black vinyl roofs and now let's say someone had a car with a black metal roof what happens then while claim 2 recites a black roof it depends from claim 1 which means that claim 2 has all the limitations of claim 1 and claim 2 together so claim one says the roof must be vinyl claim two for the recites that the roof must be black so the car with the black metal roof is not covered by any of the two claims shown here since each of these claims must have a vinyl roof furthermore in addition to further limiting and invention a dependent claim can include additional structure that is not present in the independent claim here claim 3 includes a rain guard attached to the roof so that rain guard which is a thin rail that goes along the roof edge to keep water from dripping into slightly opened windows is the additional structure since claim 3 comes from claim 1 which says the roof is vinyl but doesn't specify the color then claim 3 is drawn to a car with a vinyl roof of any color and including the rain guard now to make an even more limiting claim we could have claimed 3 depend from claim 2 which depends from claim 1 now our claim 3 has the limitation to claim one roof is vinyl the limitations of claim to the roof is black along with limitations of claim 3 itself the rain guard is also included so dependent claims further limit or narrow the scope that is they cover something more specific than the top level independent claim now you might be wondering why have dependent claims at all after all if I invented a car with a vinyl roof why not just have one claim to a car with a vinyl roof and then be done with it that is a good question and there are various answers but the basics are that typically not every claim in our patent application survives some claims are removed during the course of the patent examination in our case if the Patent Office found out that someone else had a car with an orange vinyl roof before we filed our application then we would lose our claim one the broader more general acclaim is the easier it is to disqualify that claim the more specific claims like claim 3 of the example are harder to disqualify but the trade-off is they cover something that's more specific so in general it is considered good to have a range of claims going from broad to specific the United States allows up to 20 claims which includes three independent claims for the basic filing price more claims can be added for additional cost if it's necessary but in most case 20 claims does the trick so in summary I'm going to give you a couple of key points here that will help you in reading claims and are things to keep in mind when proofreading your own patent applications even if you are using the services of a professional to write your patent application you still want to be in a position to review the claims and know some things to look for the claims should not be introducing new terms that it that did not appear in the written description any term that has been used in a claim should have been explained in the text and in most cases also shown in at least one drawing so in our example when we have the claim with the rain guard we should be mentioning that rain guard in the written description and have at least one drawing showing the rain guard now we also want to give some thought to what is verifiable or discoverable that is how will we know if someone is making using or selling our invention let's take another example let's suppose I invented a hand-operated pencil sharpener with a special organ ama candle to crank it I could go to Walmart look on the shelf and instantly see that someone was selling my invention because I could just look at the handle its external and its visible so it's easily verifiable and discoverable now let's say that my claims are to a specific gear arrangement internal to the pencil sharpener it gets a little harder to verify I probably have to buy one of the pencil sharpeners and t


Thanks for your comment Harvey Costales, have a nice day.
- Alan Hartigan, Staff Member


Comment by vromelijkH

hello and welcome to another edition of inventors quick tips today we are going to be holding a claim writing workshop where we go over the basic thought process often used in coming up with claims so first let's go over some basic claim facts the claims legally define the invention you can say whatever you want to in the written description but when it comes to determining if someone is using your invention without your permission which is called infringing what is it that the other party would have to do to answer that question the first place one looks is the claims of the patent in question so if we need to know what a claim term is or what a claim really means we may look to the specification or written description to determine what a claim means there are certain grammatical and formatting rules for claims for example every claim is numbered and every claim ends in a period to name just a few of the rules it is one thing to write a claim that follows all the rules it is another thing to write an effective claim we could devote multiple videos to claim writing but for this particular video we are going to focus on the thought process for writing an effective claim a main goal of claim writing is to get a broad claim that is allowable allowable means that the patent office will approve it to be in an issued patent and broad means the opposite of specific if the claim is too specific it may be allowed but easy for a competitor to get around by simply changing minor details so once again the goal is broad and allowable if you need more information on how claims work i have a video that covers some of the basics and i will put a link to that video in the description after you pass your test to become a patent professional it is common to take some workshops on claim writing and often in these workshops they'll start off with an example invention and it might be something like this congratulations you've invented the go-kart and so the students will be asked to try and write a claim for the go-kart and they'll let you get started and you'll start writing something like a vehicle comprising multiple wheels a motor a steering mechanism and a braking mechanism now please note that this claim and all the examples in this video that follow are not intended to be a real claim we are taking some shortcuts and making some simplifications to illustrate the thought process while keeping the technical details from getting too complex so just keep that in mind so with that said things are coming along with our claim and then the workshop instructor will reveal that it's a trick question why because claims do not exist in a vacuum they are written in consideration of prior art what's prior art it's the legal term meaning stuff that existed before your invention and the instructor will say to write an effective claim we should consider what the prior art is and make sure that our claims don't read on the prior art we know of now there is a high chance that there could be prior art that we don't know about but we have to work with what we know and now the instructor will tell you about a piece of prior art here is our prior art let's see about it the prior art has multiple wheels the prior art has a motor the prior art has breaks so my initial claim is clearly too broad everything i listed in my claim can be found in the prior art train but when i look at my go-kart clearly it is not identical to the train there must be some other differences for the purposes of this exercise let's focus on two differences one is with my invention the engine is a gasoline-powered engine and the prior art has a steam engine so we can change to a gasoline-powered motor and what else this prior art train follows the tracks but there is no steering mechanism with my invention the go-kart can be steered wherever the prior art train has to follow a track that's been laid down so let's make another edit to the claim now i have a steering mechanism too so i have some differences now between the prior art i know about and my invention it's at this point the instructor will say guess what we just became aware of another piece of prior art you may need to edit your claim in light of this prior art we just learned about so let's see it and here is our new prior art it's a motorcycle let's see what we have multiple wheels gasoline-powered motor steering mechanism with the handlebars through to the forks so this prior art again has everything that our claim currently has what's another way to think of this well my steering mechanism is different why i've got two wheels up front and the prior art motorcycle has only one and to have two steerable wheels up front that seems like a non-trivial difference compared to motorcycle steering which is relatively simple as in the case of the go cart we need to have both front wheel steer in a coordinated manner so let's make a claim edit so with my claim edits we now state that we have four wheels and we control the steering of the front wheels by simultaneously operating them with the steering mechanism so it looks like we have gotten past the prior art we know about but patent claims are not just about the past they are also about the future let's use our time machine to see a future device so here is our future device it has the similar steering mechanism but we have some things in our claim that this device doesn't have let's keep looking the future vehicle has three wheels not four as in our claim the future vehicle has an electric motor not a gasoline-powered motor as an hour claim recall that we added the gasoline-powered limitation to try to differentiate from our prior arch steam train but now that we've explored further we see the real departure from the prior arch seems to be the steering mechanism not the motor type so let's make a few edits to try to help make our claim more future resistant first we'll get rid of the gasoline-powered limitation it's not helping us that much since we have the motorcycle that already has that feature second we'll get rid of the limitation of specifically having four wheels and we will restore the word multiple but we will keep the limitation of wherein two of the wheels our front wheels continuing to differentiate from the motorcycle prior art in terms of steering and now here is the final claim from our workshop so in doing this we have considered the prior art devices the training and the motorcycle and we've considered our future device now you might be thinking i don't have a crystal ball i can't know what the future device is going to look like and that's certainly true that nobody can know with certainty what the future devices will look like however a good patent professional usually will try to think about what limitations are really necessary and which ones aren't and by thinking in that way they may help make their claims more future resistant just take the example of the wheels we initially started with four wheels but then when we really thought about it we realized you know maybe it doesn't need to have four wheels but we do need to have front wheels together that steer so that pa


Thanks vromelijkH your participation is very much appreciated
- Alan Hartigan


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How to bypass patent claims