In patent law, everything seems counter-intuitive

When I first studied quantum mechanics as a university student, everything I learned seemed to contradict my intuition.  How could a particle be in two states at the same time?  But after a while I started to understand the beauty of quantum theory, which has been the basis for world-changing technologies.  Today, quantum computers are starting to exploit the very principles of quantum states that I (and others before and after me) found so hard to fathom.

In patent law and patent practice, as in quantum mechanics, so many things are counterintuitive.  (Take that with a grain of salt.  Unlike quantum mechanics, which is a part of the cosmic order, patent law was made by people and includes anomalies that only a lawyer could have created.)  A good patent attorney learns to appreciate and take advantage of these counterintuitive features, but they are understandably confusing to our clients. 

Perhaps the most disturbing point for clients who have not had a lot of exposure to IP law is that having a patent does not entitle them to make or sell their invention.  A patent is a negative right, which only enables the patent owner to prevent others from using the patented invention.  The patent owner’s product, however, may still infringe earlier patents belonging to others:  Even though the product is novel, the patent owner’s freedom to operate is blocked by these earlier patents.

Isaac Singer is thought of as the person who invented the sewing machine, and in fact he was the first to make a sewing machine that operated with the up/down needle motion that is still used today.  But Elias Howe was actually the first to invent the two-threaded lock-stitch method of sewing, which Singer used in his machine, and Howe obtained a patent on this method in 1846.  Howe sued Singer in 1856 and took home $2 million in royalties.

There is a popular myth that Singer patented an eye-pointed needle, which was the secret of his success.  In fact, Howe held this patent, which is an excellent example of another anomalous point of patent law: Less is more.  In general, the most valuable patents do not cover all the features of the system that they are mean to protect, but only a small, key component or feature, without which the system will not work – the “glue” that holds the system together.  Without moving the eye down to the point of the needle, the lock-stitch method would not have been practical.  Singer made sewing machines that worked much better than Howe’s, but they could not work without the eye-pointed needle.

Another aspect of the “less is more” doctrine often comes up in my discussions with inventors:  In patent claims, the fewer words you use, the broader is your patent, and vice versa, a claim with many words is often easy to circumvent.  The reason for this rule is that in order for a product to infringe a patent claim, the product must include all the elements and limitations of the claim.  Any extra words may make it easier for competitors to avoid infringing the patent.  

On the other hand, patent examiners hate short claims, which leave them open to criticism by patent office quality control.  (Yes, there is such a thing.)  So as patent attorneys, we have to walk a fine line to find just enough words to satisfy the examiner, without adding any more substantive limitations than we really need.  For patent attorneys, the epitome of elegance is a claim that reaches just the right balance between these conflicting demands.

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