Michael Van Loy is here to share his expertise with us on Patents.
Mike is a Member in the Intellectual Property Section of the law firm of Mintz Levin and specializes in drafting and advising clients on patents and IP issues in a wide range of technical fields and life science areas. He also represents investors in early stage companies with assessing the strength and value of these companies’ IP portfolios. Check out what he has to say about the importance of getting the claims right in a Patent below:
https://vimeo.com/168157213%20
The Importance of Getting the Claims Right in a Patent
Mike explains:
“The claims are the part of the patent that actually dictate what is covered by the patent. They’re a textual outline of the boundaries of the intellectual property space that is protected. You can think of intellectual property in terms of ranch land. Rancher number one has a fence around what he owns. In patent speak, his claims would describe in words what the boundaries are that he’s protecting. In order for you to get that patent, those words that you use to describe your little fenced off area have to be specific enough so that you are able to show that your little area that you’re trying to claim has not already been done. You have to show that none of that area is covered by something that’s been done before. We call that prior art. Prior art means other things that were in the public domain prior to the filing of your patent. Ideally you’d like to write your claim very broadly and cover lots and lots of stuff. If you have a very broad patent, and you have a lot of potential infringers, then it’s a very powerful patent.”
Mike continues:
“On the flip side, you have all this space that you’re trying to hold. It only takes someone finding one other thing that’s inside of that original space to say, ‘That patent is not valid.’ There’s a little bit of a tension there. People say, ‘I have a nice, strong patent. It’s very broad.’ You may have a lot of infringers, but you also have some risk that it’s not valid. The other side of that is that it’s very narrow. That means that it has a lot of detail in the claims. The claims go on for a long time. It may not have as many infringers, but it’s going to be much harder for someone to show that something in the space that I’m protecting was covered before. Sometimes I get inventors who say, ‘This claim isn’t very long. It doesn’t cover anything.’ The breadth of a claim is inversely proportional to how long it is. The more words there are in it, the more details there are and the more you’ve cut into what space you have. For someone to not infringe a claim, they just have to show that they don’t do one of the things that’s required by the claim. The claim requires someone to do operations A, B, C and D. They say, ‘I do A, B and C, but I don’t do D.’ They don’t infringe. Again, if you want to say that that claim is invalid, then you would have to find something in the prior art that makes each of those elements A, B, C and D shown to have been done before and that they were either known or obvious. It was a trivial modification of what was done before.”
I hope you enjoyed how Mike walks through this process and found it instructive!
This is Patrick Henry, CEO of QuestFusion, with The Real Deal…What Matters.