IEEE Consumer Electronics Magazine - July 2015 - 83

IP Corner

It Is All in the Claims!
By Peter Corcoran

hen I'm not pulling together the next issue of IEEE
C o n s u m e r E l e c t ro n i c s
Magazine or writing my
next column or editorial, I occasionally
do "real" work. My day job is at the
local university, but I also do some
consulting for industry, and, as you
might guess, one of the things that
industry is willing to pay for is my
experience and know-how with regard
to patents. It is also interesting the sort
of things you get asked to look into.
Recently, I was asked by a client to
take a look at some patents held by the
Chinese Academy of Sciences (CAS)
and to give a general determination of
how important these might be. So, at
some point a few days later, I had a few
minutes of time to spare and I fired up
the tool that I reckoned would be most
suitable to tackle this particular
"knowledge request." In this case, I
decided to run with Google Patents [1].
Why? Well, Google also has a great
translation engine, and, as I'd suspected, many of the CAS patents were not
yet filed outside of China. However,
happily, Google provides a translation
service, and all these patents are naturally in the public domain.
That is the great thing about patents-
they are public. They have to be public
because the whole point is that the patent
owner gets his/her rights based on making
the knowledge available to the public.

Digital Object Identifier 10.1109/MCE.2015.2423708
Date of publication: 15 July 2015

That is also where the claims come into
the picture-because the claims define the
ownership rights exerted by the owner of
the intellectual property (IP), the patent.

GOOGLARIzE ME, BABY
So, there I was searching Google with the
general brief looking for IP assigned to my
search target. I was quite surprised at how
much IP I found, and most of it was only
available in the original language-either
it has not yet been registered and was published in a foreign patent office or it is only
filed locally in China. So, it was translated
into English and was a bit tricky to figure
out in places. Nevertheless, I have generally been very impressed with the quality of
today's machine translation, and pretty
much every document I looked at was reasonably intelligible with some modest
effort and a bit of creative thinking.
Of course, the claims were also
machine translated, and that was where
things started getting a bit more cryptic. Patent claims are constructed with
carefully chosen phraseology, and their
precise meaning can depend on the
order and structure of the wording and
subtle connotations in the language
used. Machine translation is not (yet)
capable of achieving the same level of
cunning as your friendly neighborhood
patent attorney.
So there I was staring at claim sets
that had my internal central processing
unit running at 130% trying to figure
out what they might possibly mean,
and I had screen after screen of these
patents to review. This would have
been nice if I was billing by the hour,

but I had a client who wanted a "quick
opinion"-in the world of IP consulting, that translates as "don't bill me
for this one!"
This brings me to the pencil test.

THE PENCIL TEST
This is one of those urban legends shared
among IP professionals. It gets its name
from the pencil behind the patent examiner's ear-most examiners still use a lead
pencil to make notes and write commentary on their copy of your patent application when they are reviewing it. The
essence of this particular tall tale is that
after a long day in the office, the examiner will often resort to using his pencil to
reach a final decision regarding the
allowability of your main claims.
If you don't work directly with IP,
that probably went over your head, so let
me explain a bit further. The underlying
rule of patent claims requires that every
single claim element be performed by a
system that infringes on your invention.
If any single element is missing, then it
does not infringe. Thus, the more steps
that are listed in your claims, the greater
the likelihood that someone can implement a very similar system but skip or
omit one of those required steps, thus
avoiding infringement.
This means that the more claim elements in your claims, the less useful your
invention-unless every element is actually required and cannot be substituted.
More claim elements means something
different for the examiner-it means that
your patent is less likely to end up in
court and there is less likelihood that
july 2015

IEEE ConsumEr ElECtronICs magazInE

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