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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
Patents - Quality of Service Issues(continued)
Remember the Maverick TV series where Brett Maverick, (for those who don't remember, that's the James Gardner brother; the other, named Bart and played by Jack Kelly was not quite as much Maverick), frequently referred to his "pappy," as in "as my pappy always said." Bart Maverick never did refer to "pappy" and perhaps for that reason was dismissed from the show for failing to acknowledge a respected source of knowledge. A reference or respected source is the same in the law as it is in TV land. That’s why lawyers are always quoting court opinions as respected support for their respective positions and why legal briefs and lawyers are sometimes so boring, except to other lawyers, and I have a few words left over for accountants and actuaries, for those interested.
To return to the matter at hand, as my father always said, "a client by law selects his own lawyer, (my father, also a lawyer. was always gender specific), usually by a referral from a lay person and ultimately for reasons unrelated to the practice of law or the needs of the client. He wasn't as long winded as that statement makes him appear, but spoke in a stream of consciousness which deliberately or unintentionally, prompted questions, to which he added his elaborate explanations. According to my father, a good lawyer can speak in precise terms of those matters he knows and can explain, in precise terms those matter he doesn't know and in precise terms explain why he can’t give a precise answer to the precise question. As I said last month, the lawyer, the physician and the ordained clergyman (or women), each possesses an arcane body of knowledge not possessed by the layman and it is for that body of knowledge that the lay person chooses the services of, and places his or her trust in, these professionals. Because it is information sought from the lawyer (for a price), the lawyer should be able to complete the bargain by answering precisely.
Getting to the subject of intellectual property and this month, to patents (as we invariably must), in last month's column, I offered as a way of measuring patent legal services, the test of at least one set of claims prepared by the patent attorney, precisely reciting each part of the system, in the case of an apparatus patent, or step for a method patent, and the cooperative connection of each of the parts or steps, essential and necessary for the claimed inventive result. This style of claiming establishes a floor for describing the basic invention in a way that prevents an infringer from doing an exact replicated copy. Once the attorney has established this basic claim, then options, discretion, even art may be employed to give the client the broadest possible claim coverage. Bear in mind, however that a shorter claim does not necessarily equate to a broader claim.
In attempting broader coverage, the tools of the trade reside in statutory law: 35 U.S.C. 112, 6th paragraph which recites,
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure , material or acts and in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.
I hope you are following my above instructions and are ready with the precise question: “what are you talking about?” As I asked the question and as I am the one expected to answer it, you will judge for yourself how my answer compares to our “precise” standard.
The precise answer is a claim need not be described by the physical object such as a cam, or a transistor amplifier or a hard drive or random access memory or a buffer with an ordered data structure. Instead, the functions of each of these elements may be recited. That comes easier for an electronic, computer or data processing invention as these inventions typically come with a full complement of mathematical descriptions for each of the separate functions within the invention. After that, it becomes a matter of connecting the dots by identifying the elements performing the functions, and the interrelation of the functions, which can be described by interconnected block diagrams.
A method claim reciting step works the same way. Take a functional description and turn it around describing the function as a step for, instead of a means for. It's even easier for a method invention because there is no requirement for a block diagram as in the case of the means for - system claim.
Now with every silver cloud there is always a black lining. Here it's in the words,
such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.
Once again, into the breach. What does that mean? It means "plenty" to the attorney who is preparing the application. To answer precisely, as I know you will insist upon, it means the functional description will not be expanded beyond the exact system shown in the application, in order to cover other non-disclosed system performing the claimed and recited functions, unless the attorney is careful to show in the specifications, what other equivalent existing or non-existing systems can perform the same functions as each of the recited claimed functions.
For example, for a thin lens capable of projecting a real or virtual image, recited as "means for receiving light rays from an object and projecting said light rays in a real or virtual image,” the attorney should be careful to emphasize the result or function achieved by the system and not limit the inventive achievement to a common element such as “a thin lens for . . . ,” which could be replaced in the future by another “means for projecting a real or virtual image.” Otherwise, the "mete and bounds" of the recited lens means might be limited for what the non-technical court might know best as thin lens; the glasses sitting on the edge of the judge’s nose.
So the key is to carefully prepare the patent application specification, describing the invention so all possible equivalents, known or unknown, are included. It may seem a simple matter but you would be surprised how often it is not done with the result of a diminished quality of service and an elusive infringer “getting away.”
For those who question my style of answering my own question, I can tell you it is better than most, having perfected it with my retriever Bo and over the years of our relationship, I never hear any complaints or criticism from him.
For a change, next month, I'll take you through a software startup, exposing the overworked illusion of protectable programming.
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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