Patents are written in a very peculiar style. What is the purpose of this “patentese” jargon? Is it really necessary?
The scope of the patent (what you can stop others from doing) is determined by a specific part of the patent called the claims – a series of numbered paragraphs usually found at the end of a patent document.
Our core job as patent attorneys is to secure the best possible scope of protection for our clients – so that the core invention can be properly covered without allowing for trivial workarounds to avoid infringement of the patent, and so that the patent is “future proof” against later developments. So, this generally means drafting the patent claims to be as broad as possible while still making sure that the invention is new and non-obvious compared to the “prior art”, i.e. subject matter that is already known.
Let’s consider a hypothetical example to illustrate the point. Suppose that, until now, the garden spade has not been invented. You have just conceived of it. Up until now, gardeners have used pitchforks to break up the soil but have had to transport the soil (such as to their wheelbarrow) using their bare hands. You believe that your invention will be very popular, and you wish to commercialise it, so you decide to file a patent for the invention.
How should the spade be claimed in the patent? Firstly, what should it be called? After all, the term “spade” does not yet exist. How about an “earth moving tool”? Not bad, except should it be limited to the moving of just “earth”? What if a competitor markets and sells a similar tool for moving, say, sand or gravel? Would they be infringing? The words should be carefully chosen such that they are as generic as possible. I may settle on a “digging device”.
If there were no other types of “digging devices” in the world then we could conceivably stop there. I have seen and prepared patent claims that are just a few words in length because the invention concerned is so unique.
However, in this case, a pitchfork is also a “digging device”. So, we need to add at least one more essential feature to differentiate the invention from pitchforks. What is the fundamental difference between the two types of tools? Well, a pitchfork has multiple prongs instead of a single blade. But I can conceive of some hybrid of the two which has prongs at the leading edge of the blade of the spade. It’s not what you have invented, but it would be prudent to cover as many alternatives as possible.
I would say the main difference between the two tools is that a pitchfork will break up the soil but most of the soil will then flow between the prongs when you try to move it. It cannot effectively support the soil while it is being transported. In light of this, I might end up with the following patent claim.
A digging device comprising: a blade member which is advanceable into a material located at a first location; and a platform member for supporting a portion of the material during transportation of the portion of material to a second location.
Note that I don’t make it essential that the blade and the platform are the same thing. I regard this as not being essential to the “core” invention because the hybrid tool I conceived has a number of pitchfork blades which could be regarded as separate from the spade platform. Though, the hybrid tool would certainly be covered in the patent as a “preferred embodiment”.
The word “material” is chosen to cover a wide range of options, such as aggregate, earth or mud. In the main body of the patent specification I will discuss the kinds of materials that can be moved with the new device.
Why did I choose to use the word “member”? Would it not be better just to define a “blade” and a “platform”? Well, people have particular conceptions about what a certain word means which could restrict the meaning of the word in their minds. A sword or razor has a blade. A train station or an oil rig has a platform. But does a spade have these? Here, the use of the term “member” can result in a broader interpretation and encompass articles or components that carry out functions of a blade or a platform amongst other functions and so should be interpreted in a broader sense than when used in everyday language.
Finally, in our work we often plunge into hidden recesses of the dictionary. The word “advanceable” is very unusual but is found in the dictionary. I wanted to use a term that was more generic than describing the blade as “cutting” or “piercing” the material. I considered the term “dissect” but felt that the connotations were not quite right. So I chose the term “advanceable into” even though it is more obscure. Because it is a more obscure term, I will take care to discuss its meaning in natural language in the main body of the patent text (the Description). In fact, in extreme cases it is even possible to invent a brand new word to use in a patent claim and then define it in the patent description.
So, in conclusion, the use of “patentese” jargon is done for a purpose and means that the patent has the best commercial value through optimising its scope.
When we draft patents, we always take time to make sure that we explain the language being used and that our clients are comfortable with what is and is not covered by the patent, so that they can explain it to their board, to investors and competitors.
But in the meantime, we hope this gives you something to think about if you are out and about in your garden over the coming weeks!