Similar to a carpenter’s hammer, words are the tools patent attorneys use to protect your invention. The words selected to claim your invention, sometimes the addition of just one word, can be the difference between infringement and non-infringement.
Too often I have reviewed patents where words were added that were unnecessary to obtain allowance. One example came from my first litigation. The invention was directed to a muzzle-loading rifle that had been adapted for a more conventional bolt action. The novel feature was that the bolt of the rifle had a cam slot in the side of the bolt. While not necessary to obtain allowance, the patent attorney claimed a specific shape requiring a cam slot having “a longitudinally extending forward section and a rearward extending transverse section.”
Our client’s accused product had a cam slot in the side of the bolt, but the cam slot only had a rearward extending transverse section. Because the patent attorney added limitations that were not necessary, our client was found not to infringe. The additional three words “longitudinally transverse section” likely cost the patent owner over a million dollars.
This is why, during prosecution of your patent, we contest changes an examiner may want us to make. While it would be easy to get you a patent by adding additional words, the patent is more susceptible to a design around and not of great value. Better to hold out now for only what is necessary instead of finding out down the road that you gave away too much.{{cta(’29b47d10-02c7-4a8d-9faa-025c4397f3be’)}}
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