The following article appears in the journal JOM, 52 (10) (2000), p. 64. JOM is a publication of The Minerals, Metals & Materials Society

Loss of Patent Rights—Inventions That Are Disclosed But Not Claimed

The majority of patent applications filed with the United States Patent and Trademark Office (USPTO) are prosecuted to issuance. That is, an issued patent results from a filed patent application most of the time. There are times, however, when an originally filed patent application is abandoned, either intentionally or unintentionally. In addition, even though a patent issues on an application, patent rights are lost to inventions that are disclosed in the patent but not claimed. This article will explore the consequences of the latter situation.

When dealing with patents, it is important to understand that the claims define the scope of the invention. The claims of a patent are found at the end of the patent document as separately numbered paragraphs in a single sentence format. The first claim of an issued patent is always numbered “1,” with each claim thereafter following in ascending numerical sequence. Most patents contain about 10 to 20 claims, although some patents contain one claim and others have hundreds of claims.

Think of patent claims in the same way that you would think of a recitation of property lines in a deed for land. The property lines define the property that the owner has the right to stop others from trespassing upon. Similarly, the claims define the invention that the owner of a patent may stop others from infringing upon.

The claims of the patent must be “supported” by the written description in the patent specification. If the invention is capable of being illustrated by a drawing (such as a mechanical invention), drawings must also be included in the written specification. It is generally accepted that the claims can claim a broader invention than the specific embodiments covered in the written description. This statement is especially true in mechanical cases (the so-called “predictable arts”). For example, a claim to a “fastener” can be made even if the written description discloses only a specific type of fastener, such as a nail.

A problem arises when the written description of the invention covers a broad invention but the claims are recited in a narrow fashion. Turning around that example, if the broad term “fastener” was used in the written description of the invention, and the claims only recited a “nail,” an argument could be made that the patentee surrendered all other types of fasteners, such as screws, staples, and glue by using the narrow term “nail” in the claims. Many times, however, the claim A problem arises when the written description of the invention covers a broad invention but the claims are recited in a narrow fashion. Turning around that example, if the broad term “fastener” was used in the written description of the invention, and the claims only recited a “nail,” an argument could be made that the patentee surrendered all other types of fasteners, such as screws, staples, and glue by using the narrow term “nail” in the claims. Many times, however, the claim

The claims should be broad enough to cover the invention, but not so broad as to cover the prior art. If the prior art allows the claims to be broader than claimed, and the claims fail to do this, the unfortunate result is that the inventor can be left with claims more narrow than deserved.

Another way that valuable property can be lost is if an invention is disclosed but not claimed. A simple but exaggerated example will illustrate the point. A patent application contains a description of both a jet engine and hula hoop. However, the claims are directed solely toward the jet engine. No claims are directed toward the hula hoop. Upon issuance of that patent, the inventive hula hoop will become “public domain” because it is clearly disclosed, but not claimed in the patent. This is a fairly ridiculous and obvious example, but it is surprising how many times a patentable embodiment of an invention is disclosed but not claimed.

Is there anything that can correct these deficiencies? There is some hope in what is called a “broadening reissue” application. The broadening reissue application allows you to go back to the USPTO once the patent is issued and essentially “admit” that an error was made and that the inventor did not get all of the inventions (or the breadth of the invention) that he or she was entitled to. The error must have been made without any deceptive intent. The broadening reissue application, however, must be filed within two years after the patent issues. After that, it is too late. Also, even if you are successful in obtaining a reissue patent for the inventions that you should have claimed earlier, those third parties who did not infringe the original claims, but who would now infringe the broadened reissued claims, would receive what are known as “prior user rights”. That is, they can keep on making the originally non-infringing invention even after the broadened reissue patent issues with claims that would now be infringed.

The moral is that it is important, at the beginning, to make claims to all patentable inventions disclosed, and that those claims should be broad enough to cover the invention completely without running into the prior art. The best way to assist your patent attorney in reaching that goal is to carefully read the patent disclosure claims he or she drafts, and put yourself in the position of a competitor or third party that would desire to “get around” those claims. By thinking of these ways of “getting around” the claims, you can aid your patent attorney in creating claims of the proper scope.

David V. Radack is Vice-Chair of the Intellectual Property Department of Eckert Seamans Cherin & Mellott, LLC.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.COM.