Comments on: How to read a patent in 60 seconds http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/ quite possibly the only entrepreneur blog Wed, 22 Feb 2012 09:15:00 +0000 hourly 1 http://wordpress.org/?v=3.3.1 By: Adam Philipp http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-408 Adam Philipp Fri, 28 Jan 2011 09:03:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-408 What Jeff was pointing out is that the broader claims might fail more easily, but you could still end up infringing the narrower dependent claims. So a corollary might be, treat a dependent claims like and independent claim if you know its parent independent claim is invalid (e.g., not new, obvious, or the like). What Jeff was pointing out is that the broader claims might fail more easily, but you could still end up infringing the narrower dependent claims.

So a corollary might be, treat a dependent claims like and independent claim if you know its parent independent claim is invalid (e.g., not new, obvious, or the like).

]]> By: StevenP http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-309 StevenP Tue, 28 Sep 2010 04:13:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-309 Not sure I concur with this. "Usually" it is not possible to reproduce the invention? Really? I've drafted and reviewed innumerable patents, and I don't see this as being true at all. First, if you are referring to the issue that practicing a claimed invention may infringe another patent, that is an entirely different issue. (Reminder: patents do NOT give an owner/licensee the right to practice an invention, but only to EXCLUDE others from practicing it.) Second, if you are further suggesting that an undisclosed trade secret would be necessary to practice the claimed invention, then the written description is inadequate and the patent should not issue for lack of enablement. If the trade secret is needed to make the invention work in the best way, then the patentee failed to disclose the best mode and again the patent should not issue. (This may also raise inequitable conduct issues that could render the patent unenforceable.) [I'm sure others may likely add to this or correct a few things in my statements above!] Not sure I concur with this. “Usually” it is not possible to reproduce the invention? Really? I’ve drafted and reviewed innumerable patents, and I don’t see this as being true at all.

First, if you are referring to the issue that practicing a claimed invention may infringe another patent, that is an entirely different issue. (Reminder: patents do NOT give an owner/licensee the right to practice an invention, but only to EXCLUDE others from practicing it.)

Second, if you are further suggesting that an undisclosed trade secret would be necessary to practice the claimed invention, then the written description is inadequate and the patent should not issue for lack of enablement. If the trade secret is needed to make the invention work in the best way, then the patentee failed to disclose the best mode and again the patent should not issue. (This may also raise inequitable conduct issues that could render the patent unenforceable.)

[I'm sure others may likely add to this or correct a few things in my statements above!]

]]> By: StevenP http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-308 StevenP Tue, 28 Sep 2010 04:13:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-308 Not sure I concur with this. "Usually" it is not possible to reproduce the invention? Really? I've drafted and reviewed innumerable patents, and I don't see this as being true at all. First, if you are referring to the issue that practicing a claimed invention may infringe another patent, that is an entirely different issue. (Reminder: patents do NOT give an owner/licensee the right to practice an invention, but only to EXCLUDE others from practicing it.) Second, if you are further suggesting that an undisclosed trade secret would be necessary to practice the claimed invention, then the written description is inadequate and the patent should not issue for lack of enablement. If the trade secret is needed to make the invention work in the best way, then the patentee failed to disclose the best mode and again the patent should not issue. (This may also raise inequitable conduct issues that could render the patent unenforceable.) [I'm sure others may likely add to this or correct a few things in my statements above!] Not sure I concur with this. “Usually” it is not possible to reproduce the invention? Really? I’ve drafted and reviewed innumerable patents, and I don’t see this as being true at all.

First, if you are referring to the issue that practicing a claimed invention may infringe another patent, that is an entirely different issue. (Reminder: patents do NOT give an owner/licensee the right to practice an invention, but only to EXCLUDE others from practicing it.)

Second, if you are further suggesting that an undisclosed trade secret would be necessary to practice the claimed invention, then the written description is inadequate and the patent should not issue for lack of enablement. If the trade secret is needed to make the invention work in the best way, then the patentee failed to disclose the best mode and again the patent should not issue. (This may also raise inequitable conduct issues that could render the patent unenforceable.)

[I'm sure others may likely add to this or correct a few things in my statements above!]

]]> By: Dan Shapiro http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-303 Dan Shapiro Tue, 21 Sep 2010 07:25:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-303 Agreed, and hopefully I made it clear that this is a shortcut that is useful but by no means exhaustive. Agreed, and hopefully I made it clear that this is a shortcut that is useful but by no means exhaustive.

]]> By: Dan Shapiro http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-304 Dan Shapiro Tue, 21 Sep 2010 07:25:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-304 I like patents.google.com. I like patents.google.com.

]]> By: Dan Shapiro http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-302 Dan Shapiro Tue, 21 Sep 2010 07:24:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-302 Congratulations on entering practice! To your second paragraph: I realize that's a common tactic in applications. But if the patent has been granted, and the primary claim is "as broad as possible", I believe that you're bound by the primary claim, no? Congratulations on entering practice! To your second paragraph: I realize that’s a common tactic in applications. But if the patent has been granted, and the primary claim is “as broad as possible”, I believe that you’re bound by the primary claim, no?

]]> By: SJ http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-301 SJ Mon, 20 Sep 2010 21:04:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-301 If an invention relies on other patents from other inventors, isn't that an example of the society deriving a benefit from patent law? Without patents, those other inventors would have had no reason to disclose their inventions. In my limited experience, patents are focused on the ingenious minutiae of an invention; you can make a new toilet seat mechanism but you're only going to get a patent on the tiny spring-loaded piece at the center of the device that makes it all work because only that part meets the criteria for a patent (novel, inventive step forward, unobvious... there are others) Also, my experience is Canadian so make of it what you will! If an invention relies on other patents from other inventors, isn’t that an example of the society deriving a benefit from patent law? Without patents, those other inventors would have had no reason to disclose their inventions.

In my limited experience, patents are focused on the ingenious minutiae of an invention; you can make a new toilet seat mechanism but you’re only going to get a patent on the tiny spring-loaded piece at the center of the device that makes it all work because only that part meets the criteria for a patent (novel, inventive step forward, unobvious… there are others)

Also, my experience is Canadian so make of it what you will!

]]> By: Anonymous http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-295 Anonymous Fri, 17 Sep 2010 03:35:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-295 I hope people don't take this too seriously. The words in the claims are often defined by the specification. For example the words computer, network, and message can mean entirely different things based on what was stated in the specification. Likewise, some of the words in the claims are entirely made-up, which requires one to read the specification. Don't go firing your patent attorney yet!! : ) I hope people don’t take this too seriously. The words in the claims are often defined by the specification. For example the words computer, network, and message can mean entirely different things based on what was stated in the specification. Likewise, some of the words in the claims are entirely made-up, which requires one to read the specification. Don’t go firing your patent attorney yet!! : )

]]> By: links for 2010-09-16 « AB's reflections http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-293 links for 2010-09-16 « AB's reflections Thu, 16 Sep 2010 20:05:04 +0000 http://www.danshapiro.com/blog/?p=220#comment-293 [...] Dan Shapiro » How to read a patent in 60 seconds The independent claims section is the key (legally enforceable) apparently, while the rest of the document is mostly gloss. (tags: patent tips howto reading) [...] [...] Dan Shapiro » How to read a patent in 60 seconds The independent claims section is the key (legally enforceable) apparently, while the rest of the document is mostly gloss. (tags: patent tips howto reading) [...]

]]> By: Bartmans http://www.danshapiro.com/blog/2010/09/how-to-read-a-patent-in-60-second/comment-page-1/#comment-292 Bartmans Thu, 16 Sep 2010 15:45:00 +0000 http://www.danshapiro.com/blog/?p=220#comment-292 Nice reading, but it only applies to granted patents. If you are reading a patent application (which there are by definition more of) you should also remember that such an application does not convey any - or only very limited - rights. Thus, why bother reading patent applications at all (unless you are interested in the technology)? Argument behind this: one of the most made mistakes is that patent applications are seen as granted patents by the public. In general the patent as garnted will have a (much) smaller scope than the application. Nice reading, but it only applies to granted patents. If you are reading a patent application (which there are by definition more of) you should also remember that such an application does not convey any – or only very limited – rights. Thus, why bother reading patent applications at all (unless you are interested in the technology)?

Argument behind this: one of the most made mistakes is that patent applications are seen as granted patents by the public. In general the patent as garnted will have a (much) smaller scope than the application.

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