Having Fun With Patents
by Eugene R. Quinn, Jr.
, Associate Director, NYS Science & Technology Law Center
Animal ToyUS Patent No. 6,360,693
Issued March 26, 2002
Intellectual property is often described as a bundle of rights, which adequately describes the rights conveyed by any one single form of intellectual property. Conceptually, however, one must think of intellectual property as a web, not a strand. Not only is there significant overlap between patents, copyrights, trademarks and trade secrets, but within each piece of intellectual property there is frequently an infinite number of discrete components that can be protected. Each individual strand of discrete protection may not be particularly strong, but when the strands are woven together to form a web the resulting protection can be incredibly formidable.
Take this patent as an example, which, for many reasons, is one of my favorite patents to discuss. The first thing to observe here is that on March 26, 2002, the United States Patent Office issued a patent on a what can only be described as a stick. In support of this conclusion, one need only look at the picture. This is not a case where clever claim drafting and placement allowed a crafty patent attorney to get away with claiming something fundamental and overly broad. Rather, this is a case where the picture and everything in the application is directed to a stick and the examiner seems to have missed that fact.
In the patent examiner’s defense, defining the scope of an invention is not done by the drawings; defining the scope is the role of the patent claims. Claim #1, the broadest claim in this patent, says that this "animal toy" has a solid main section, at least one protrusion and is adapted for floating in the water. While not every stick would infringe (meaning be similar enough to the invention as to prevent the patent from being issued or upheld) claim 1 of this patent, we would venture that there are many which would.
Of course claim 1 (of 20 separate claims), and most of the rest of the claims in this patent, are invalid and should never have been issued. The lesson here, however, is not that the Patent Office occasionally makes a mistake (true though that may be). The lesson, at least in the first instance, is that obtaining a patent has become increasingly easy. The fact that a patent can be obtained or has been obtained does not mean that a valuable asset has been obtained, and this “invention” is a wonderfully vibrant example of that. There must always be consideration given to whether the protection that is or could be obtained is worthwhile to obtain in light of the intended use.
Another, perhaps more important lesson is that not all patents are created equally. This particular patent has some 20 claims, 15 of which refer back to Claim #1, the broadest independent claim. These 15 dependent claims each add one element to the above-described stick. For example, claim 2 further defines the stick as being made of rubber, Claim 6 goes on to add flavoring to the basic stick of claim 1, Claim 9 requires the stick to be flexible, Claim 12 requires the stick to be florescent and claim 13 requires it to have camouflage coating. What is notably missing is any claim that adds to the basic stick and aforementioned “limitations” of the claim. When we say “limitations”, we mean the defining factors or components of each claim. In other words, if each of the aforementioned limitations were within a single claim, it is quite possible that the patent obtained would indeed cover a unique animal toy. When all the specific limitations of the patent come together, they form a unique “animal toy”, but individually they do little more than provide an amusing basis for learning about patents.
In order to obtain complete protection for an invention it is necessary to identify the number of possible limitations that together make up the most narrow embodiment of the invention. After determining the number of limitations, one must subtract the number of limitations required to overcome the prior art (by “overcome the prior art” we mean to make this invention patentably unique when compared to previously existing versions of the invention). The resulting number represents the number of different ways the subject invention can be configured to overcome the prior art. It also must adequately, completely and descriptively define the most narrow embodiment of the overall invention. In order to determine the number of possible configurations that fall within the range from patentability to full protection the product of the number of choices is acquired, which provides the total number of possible permutations. For example, consider a classical mathematical probabilities question: How many different ways can 5 cards be arranged? The mathematical equation to solve this problem is:
5! (Read: 5 factorial) = 1 X 2 X 3 X 4 X 5 = 120
This expression factors in all possible permutations, some of which would be considered identical for patentability purposes. For example, A+B+C would be the same, generally speaking, as A+C+B. In order to determine the number of unique combinations the formula then becomes:
n! / 1 (n – 1) = 5! / (5 – 1) = 5! / 4 = 120 / 4 = 30
The “1” in the above equation is present because it is only necessary for 1 of the 5 additional limitations must be present. Similarly, if your invention as completely and most narrowly described adds 5 things over and above the prior art, 30 claims would be necessary to cover all combinations of the invention. Adding a single additional limitation (i.e., 6 limitations) would lead to 720 permutations and 144 unique combinations, which means 144 claims would be necessary for all combinations to be covered. As limitations are added the number of combinations rapidly increases, which is why individual inventors and small businesses rarely, if ever, obtain the fullest protection available.
The importance of covering all combinations can be seen by referencing the Animal toy patent. Claim 1 is certainly invalid, and each of claims 2 through 16 add only a single limitation. One must ask, does the addition of a single limitation to what is a stick mean that that combination is patentable? The answer is likely not, so each of claims 1 through 16 are likely invalid. In one fell swoop, 16 permutations have been eliminated as invalid, and that means all of the combination claims are gone. The reason to cover all permutations is to guard against the loss of all protection due to the failure to find prior art that is later found to invalidate the permutations that have been selected for protection.
The truth of the matter is that in terms of patent applications, you get what you pay for. Many times applicants place restrictions, normally financial restrictions, on patent attorneys. This limits the amount of time a patent attorney can spend drafting the all-important initial filing, and limits the number of claims that can be filed. In short, claims cost money, and good claims that can be upheld will cost good money. Do not expect that as a small businessperson or inventor you will have or be able to justify the cost of patenting every possible permutation of your invention, it is usually not possible. However, also do not expect that patenting an invention “on the cheap” will result is a satisfactory patent that encompasses the important components of your invention. Taking the time to understand all the possible permutations of your invention and then consulting an attorney to discuss which claims can and should be included in the filing is a preventative measure that should be undertaken.