What are Patents for?

The most common use of a patent is to secure exclusive rights to manufacture an original product. They provide the best available means of protection since they can potentially give very broad cover, and a product does not have to be an exact copy in order to contravene a patent.

Originally, "letters patent" was a favour granted by the monarch, but with the emergence of engineering the system soon became used to confer an exclusive right, for a limited period, over a new and useful "manner of manufacture". Early engineering patents simply described the whole product which it was desired to protect, but it was soon realised that some way of highlighting the original aspects was required. "Patent engineers" who specialised in writing patents therefore started to add a statement at the end of the document explaining what they wanted to protect, and the "Claims" eventually became the most important part of the whole patent document.

It is not uncommon for patent agents (or patent attorneys as they are now known) to spend more time drafting the Claim than any other part of the document. Drafting a good Claim can only come with practice and experience. Firstly, the patent attorney must understand what his client has produced and decide what is likely to be new about it. Usually, this will involve listening to the client and questioning him/her about what the product does that other products don’t, why it’s a better solution, whether there are any alternative ways of achieving the same result, etc. It is also useful to know about any similar products that do the same thing, and this is often assessed by carrying out an initial search for similar products described in patent literature or elsewhere.

Because of the vast quantity of technical material that is published every year an initial search usually only gives a snapshot of the current state of the art. However, as the patent examination process progresses the originality of the product should become increasingly clear.

The final wording or the Claims has to be agreed with the Patent Office Examiners. The patent attorney has to steer a difficult course as he/she is usually being pulled is different directions:

• The client generally wants to get a patent which will enable him to keep competitors as far away as possible. Indeed, all of the training and instincts of the patent attorney tell him that he must strive to make the patent as all-encompassing as possible.
• The requirement for a patent to be valid means, on the other hand, that the wording of the claim must not be so broad that it covers something that already exists (even on paper). If the wording is so vague that it reads on to the prior art the patent will be hopelessly invalid and everybody will just ignore it. Often, new items of prior art will come to light during examination which requires the wording of the claim to be "tightened up". This might just involve explaining a broad term in greater detail, but sometimes the thing you view as the "invention" has to change completely.
• Patent Examiners generally have an overriding statutory duty to ensure clarity for the general public so that everyone can understand what they are free to do without threat of legal proceedings. This duty manifests itself in several forms. Commonly, Examiners do not like claims containing too many vague terms which do not convey physical structure ("means for opening a valve" for example) but patent attorneys generally fight to keep the wording as broad as possible. Another manifestation of this requirement often arises where it becomes necessary to claim a different combination of elements from that originally envisaged. Objections that a newly claimed combination "discloses new matter" are quite common and can be very difficult to overcome.

As a result, patent drafting and examination often ends up being a lengthy and expensive process. However, the outcome is generally a useful patent that provides strong and legally enforceable protection against someone using the inventors idea. The "scope" of the protection will always depend on a number of factors, the main one being how original the patented item really is. In reality very few patents cover truly earth shattering and highly original ideas, and most patents should realistically be viewed as protecting a particular solution to a problem. However, the patent cannot legally stop people from using an old solution which was already in the public domain, and in many cases a patent cannot extend to different solutions to the same problem, e.g. using technology that simply did not exist at the time the patent was filed.

It is, of course, open to inventors to take out additional patents on new modifications or improvements, or on different ways of solving the same problem, and this is often done.

Many people have criticised the patent system over the years but nobody has come up with an effective alternative. "Cheaper patents" sound great, but somewhere along the line there must some way for inventors to make it clear what they want to protect and for the general public to know with reasonable certainty what they are free to do. Despite its shortcomings the present system usually does a reasonable job.

© Craske & Co., 2008

Last updated: 27 December 2010