0/
Statement
Claimj !Jmportant !In
patent Application
By P. FRANK SONNEK
In my preceding articles, I have dealt
with certain phases of the employer and
employee relationship and pointed out sit-
uations that may arise and measures that
may be taken to promote interest of em-
ployees in their organization and in the
product which they are helping to produce.
While the subject of employer and em-
ployee is an important one, in its relation
to the development of a real, live progres-
sive organization, it might not be amiss at
this stage, to turn to a discussion of certain
conditions that I have found frequently con-
tribute to mistmderstandings as to the value
of patents and the scope of protection that
a patent may afford the patentee or organ-
ization operating thereunder.
Take Mr. Average Manufactur~r, who
may be a coin-machine manufacturer. We
find, usually, that his knowledge i~ not con-
fined to that field of activity alone. He can
talk intelligently on politics, knows some-
thing about real property and plant equip-
ment; can discuss the common ailments to
which the human body is subject and may
even prescribe for them. He is more or less
familiar with business practice and so-
called business law, but on the subject of
patents and inventions, of which he should,
at least, have an elementary understanding,
because of the important place it should
have in the business of his organization, he
is rarely informed, usually glossing over his
lack of knowledge with a statement that "it
is too tec1mical."
True, the subject of patents and inven-
tions is a technical one, that is why we
have patent attorneys, but, nevertheless,
every manufacturer, and in fact, everyone
interested in inventions, should be informed
on it, at least, to the same extent on which
he seek to be, and usually is, informed on
general legal procedure and other things
pertaining to his business and his every day
life.
An elementary knowledge of what patent
protection means and the general procedure
that is followed in obtaining a patent, will
enable Mr. Manufacturer to save himself
many headaches and expense, and, what is
just as important, will place him in a better
position to cooperate with his patent at-
torney, to the advantage of his organization.
Much of the misapprehension that now
exists as to what patent protection means
and the misunderstandings that frequently
crop up in organizations and between the
manufacturer and his patent attorney, as to
its value, could be eliminated, were Mr.
Manufacturer acquainted with certain fun-
damentals, with which he should be fa-
miliar.
A patent, as we all know, grants the ex-
clu ive right to make, use and sell the in-
vention patented for a term of seventeen
years, unless that right is terminated by
the Courts, for good and sufficient reason.
In making application for a patent, the in-
ventor must make a com plete disclosu re of
his invention, explaining all of the parts of
the mechanism, if it is a machine, and the
manner in which it operates, the mechan-
ism being shown in drawings to which the
description refers in detail. This descrip-
tion is termed a specification.
Following the specification, the invention
is described or defined in a series of para-
graphs called claims. These claims are the
foundation on which the patent structure
stands. It is immaterial how broadly the
mechanism may be described in the speci-
fication or what assertions may be made
therein as to its value in advancing the art
or improving the industry to which the in-
vention relates, the final determination of
the scope of protection that is afforded
rests entirely upon what has been claimed.
Of course, the invention, a claimed, may
be interpreted in the light of the specifica-
tion, but unless the essential features of the
invention are covered by the claims, the
patent does not protect them.
In drawing the claims, the patent attor-
ney sets forth the invention by describing
its essential elements or features and the
manner in which they cooperate in the
functioning of the mechanism. This may be
done in various ways and by the use of
terms that define the elements to the best
advantage, each claim standing upon its
own legs, in defining the invention, as
described therein. The purpose of these
claims, as I said before, is to point out just
what the patentee claims as new and seeks
to protect for the seventeen year term. A
large part of the mechanism may be of a
well known and conventional design, but
the invention is predicated on the addition
thereto of some element or combination of
elements, which improve the original
mechanism and possibly gives it a wider
range of utility in its own or other fields.
Now, when the claims are drawn, the
original mechanism or parts of it may be
included, with the elements of the improve-
ments or such of them, as may cooperate to
make the invention defined operative. In
other words, each claim should be directed
to an operative invention. If the alleged in-
vention, as set forth in the claim would not
function, then the claim is of no value in
affording protection. It is the province of
the patent attorney to draft these claims
and to so draw them that protection of the
broadest possible scope may be ultimately
obtained, but before he can do this, the in-
ventor, who is the father of the mechanism
and should know it better than anyone else,
should make it his business to acquaint the
attorney with every feature of importance.
Many times, a feature of a mechanism
which may seem unimportant in the blue
print stage, may turn out to be "the reason
why it works" when the invention is ac-
tually produced, and the importance of giv-
ing the patent attorney the complete picture
of the improvement in every detail cannot
be too strongly stressed. Then, it is up to
the attorney to do his part. That is, draw
the claims as broadly as pos ible, in defin-
ing the invention.
During the progress of the patent appli-
cation through the Patent Office, it may be
necessary to restrict the clai ms, in one way
or another, because of earlier patents or
prior mechanisms, which will be discussed
in detail in a subsequent article, but Mr.
Manufacturer should remember that if his
invention is not defined in the claims of his
~ patent, in such a way as to protect it
~ against competitors, his patent will not be
~ of much value, irrespective of what may
~ have been set out in his specification and
~ what may be shown in the patent drawings.
~
The point that I want to drive home to
~ Mr. Manufacturer is that the claim of a
patent and not the specification is the meat
of the protection that is given him by the
patent grant. Whether he obtains one claim
or a dozen or more, the value of the pro-
tection is measured by the way the inven-
tion is defined in such claim or claims, and
not by what is set forth in the descriptive
matter and drawings. If inventors will bear
this in mind, and make complete dis-
closures of their inventions to their attor-
neys, even to the minutest details of the
supposed improvements, there will be less
grounds for subsequent misunderstandings
and they will obtain better patent protec-
tion.
The manner in which a part is defined in
a claim is frequently of considerable im-
portance in keeping a patented invention
safe from attack by a competing organiza-
tion. Let us take a simple example to illus-
trate what is meant by the broad definition
of a part. Suppo e we assume that a certain
mechanism includes a gear wheel which is
an essential element thereof, for the per-
formance of a particular function of the
.mechanism. Now, in drawing the claim,
that gear wheel may be simply defined as a
gear wheel, which it is. Suppose the patent
issues with the claim as drawn and a com-
petitor sees the merit of the invention and
wonders how he can get around the claim
and avoid a possible charge of infringe-
ment. He plays with the idea and finally
hits upon the idea of using another type of
driving means, in lieu of the gear wheel,-
let us say, a roller or pulley and belt, for
instance. It may work just as well as the
gear wheel, or possibly better, as eet forth
f'
in the patent claim.
The patentee wants to stop the use of the
belt and pulley, but he finds that his patent
is limited to a "gear wheel" as a driving
medium and there is little likelihood that
he would succeed against his competitor.
However, had the patefltee obtained a claim
in his patent which defined that gear wheel
as a driving means, instead of just a gear
wheel, he would have covered the belt and
pulley and many other ways in which the
drive might be effected. With a broader
definition of the gear wheel function, it will
be seen that a greater scope of protection
against com peti tors would have been pro-
vided.
When Mr. Manufacturer is ready to make
application for a patent, he should try to
visualize what his competitors might do in
the future to reproduce his invention, or
produce substantially its equivalent and see
to it, in so far as it is possible to forecast
possible future developments, that his ini-
tial patent on a mechanism is as broad as
may be obtainable. Of course, as a line of
mechanisms may be created and developed
for the market, specific construction or de-
tails may be patented, in line with the
policy of the organization, but in every in-
stance care should be exercised in getting
the invention into the claims. That is where
it must be set forth.
•
Is it true that you -
and you -
Are having trouble with your slot?
You·ve had it down to Joe's Garage,
But still it doesn", work 80 hot.
You've tried the jeweler and the plumber-
All your friends have had their fling;
But yet it doesn't seem to click,
You "II have to trade the darned old th ing!
Find the answer to your problem-
See the man who knows his stuff'.
Do not longer dilly-dany,
When your machine gives you guff!
GLENDALE GRAHAM
Vending Machine Repairs
212 East Palmer Ave.
Glendale. Calif.
Citrus 1·1093
Mention of THE COIN MACHINE REVIEW is your best introduction to our advertisers.
COIN
MACHINE
REVIEW
11
FOR
SEPT.
1941