David,
Patents are written in ways that will make the claims as broad as possible, but
as narrow as necessary to get them allowed by the examiner and held valid in any
possible opposition or lawsuit. This requires that they be specific enough in
their descriptions to allow anyone of ordinary skill to practice the invention
without having unnecessary limitations.
Two statements from US patent case law are important to the wording of a claim.
1: The claims are to be read in light of the specification. 2: The patentee is
his own lexicographer. The patentee needs to include definitions or clear
description of words and phrases in the patent disclosure and those definitions
are the ones that apply to the claims.
There are lots of cases that have been decided against patentees because the
wording of the claims is too narrow. If you say an item is 1-2 mm wide, the
courts probably won't find infringement by a product that has the same item with
a 0.9 or 2.1 mm width. So you say "about 1-2 mm). Similarly, you can't talk
about a tube with an undefined length and diameter, because that would include
nanotubes and the Chunnel. So, somewhere in the patent there ought to be a
paragraph that (pre)defines the size of the tube you'd expect someone to use in
your invention. That size is probably not part of the novel aspect of the
invention, so you don't mention the size in the claim. You just refer back to
the specification to show that there really is a definition for a suitable
length and width.
Clearer?
Edlyn Simmons
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From: David Turner <novalis@novalis.org> on 11/21/2002 12:32 AM GMT
David Turner To: Edlyn Simmons-ES/PGI
<novalis@novalis.org> Cc: 310004148548-0001@t-online.de, Piug
List <PIUG-L@derwent.co.uk>
Subject: Re: What does "predetermined" mean?
11/20/2002 07:32 PM
First, thanks to Edlyn Simmons and Michel Marchau for their answers.
If "predetermined" isn't a meaningful limitation, why do claims writers
include it?
I've noticed it in a lot of patents, in all sorts of fields.
On Mon, 2002-11-18 at 00:43, simmons.es@pg.com wrote:
> David Turner's question was pretty general: "In a patent, what does
> predetermined mean?" The answer is also general. It means whatever the
patent
> says it means.
>
> General rule in the US is that a word in a patent has its normal dictionary
> meaning (i.e., predetermined means decided in advance) unless the patentee has
> defined it in the patent specification. If you read the disclosure it should
> have a definition, because the dictionary definition is not a meaningful
> limitation.
>
> Edlyn Simmons
>
>
>
> From: MMarchau@t-online.de (Michel Marchau) on 11/17/2002 08:47 PM GMT
>
> MMarchau@t-online.de (Michel To: "David Turner"
> Marchau) <novalis@novalis.org>, "Piug List"
> <PIUG-L@derwent.co.uk>
> Cc: (bcc: Edlyn Simmons-ES/PGI)
> 11/17/2002 03:47 PM Subject: Re: What does "predetermined"
mean?
> Please respond to
> 310004148548-0001@t-online.de
>
>
>
>
>
>
> Hallo Dave!
> Your chocolate candy question is interesting but difficult to answer on the
> basis of the few elements you gave. Because in infringement cases it is not
the
> strict wording of the claim which matters, but the meaning of the whole claim
> (in the light of the description and the drawings).
> Further, the features of the possibly infringing product are to be compared
with
> the features of the claim. In this case the telescopic tube is perhaps in its
> use, set at "predetermined" lenghts so that the function of the apparatus is
> than very close, if not identical, to the claimed apparatus.
> Or perhaps this apparatus can be considered as an improvement of the claimed
> apparatus and "who improves, infringes".
> Then there are the equivalences: in how far can the "telescoping tube" be
> considered as equivalent to the tube of predetermined length?
> The fact that the user is instructed to supply a tube seems to me, from an
> infringment point of view, identical to the situation that a tube is provided
in
> the apparatus.
> So far my immediate reactions to your question. I know it is not complete and
> surely does not give satisfaction, but I hope it is of a certain help. Good
> luck!
> Michel Marchau
> European Patent Attorney
>
> "David Turner" <novalis@novalis.org> schrieb:
> > In patent claims, what does the word predetermined mean?
> >
> > Imagine a patent with the following claim:
> >
> > 1. An apparatus for measuring and dividing chocolate candy comprising:
> > * a tube of predetermined length and diameter
> > * a saprophytic multiband hydrostatic gib foil
> > * ...
> >
> > Would an otherwise identical apparatus with a telescoping tube (that is,
> > one with variable length) infringe the patent?
> >
> > What if the new apparatus didn't include any tube, but instructed the
> > user to supply a tube of between one and seven centimeters in length and
> > one centimeter in diameter?
> >
> > If my question is inappropriate for this list, I hope someone will
> > direct me to a more appropriate list or other resource.
> >
> > This is the second time I'm sending this mail, because the first time
> > gave a permanent error. Hope it's not a duplicate.
> >
> > --
> > -Dave Turner Stalk Me: 617 441 0668
> > "Once a man has tasted freedom he will never be content to
> > be a slave." - Walt Disney
> >
> >
> >
>
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-- -Dave Turner Stalk Me: 617 441 0668 "Once a man has tasted freedom he will never be content to be a slave." - Walt Disney
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