Having Fun With Patents
by Eugene R. Quinn, Jr.
, Associate Director, NYS Science & Technology Law Center
Grappling dummy and production thereof [ PDF
] [ HTML
US Patent No. 6,139,328 - Issued October 31, 2000
This is a patent that I use when teaching patent prosecution at Syracuse University College of Law. This invention is a grappling dummy, which is useful for exercise or practice for athletes training for competitive martial art or wrestling. The patent explains that an inventive aspect of the invention is that the weight of the grappling dummy is diminutive relative to its stature. On its face it is hard to immediately reach the conclusion that this "invention" is not or should not be patentable. The claims have a large number of elements and great specificity, even in the broadest claim. Perhaps this patent illustrates that you can get a patent on virtually anything if you add enough qualifiers.
Given that the number of patent applications rises every year, the patent examiners are tremendously over worked, which unfortunately means that in many if not most technical areas the quality of issued patents is on the decline. Therefore, increasingly the question is not whether you will be able to obtain a patent, a patent most certaily will be able to be obtained. In fact, by some estimates well over 90% of all patent applications ripen into some form of an issued United States patent. The question is whether the invention in question should be patented. In order to answer this question one must honestly and critically analyze the available substitutes and determine whether the present invention offers enough of a competitive advantage to make it worthwhile to spend the time, money and energy necessary to engage a patent attorney and navigate the patent process.
In the situation where the only patent that can be obtained includes claims with great specificity, such as this one, obtaining a patent is likely not going to provide the type of strong protection that one would normally associate with a patent. True, the inventor of this patent will enjoy exclusive rights with respect to that which is claimed. The question, however, is whether the exclusive rights are so narrowly defined such that competitors could engineer around the patent. If your patent covers a successful product there will be market entrants who will seek to engineer around, and if your patent allows that to happen then the return on your investment does not provide the expected yield.