We are frequently amused and sometimes annoyed at the broad and f oolish claims suggested to us by inventors, and the pertinacity with which many of our clients adhere to their erroneously conceived ideas as to the manner in which a claim should be framed, to properly embrace their inventions and protect them from evasion and infringement. A lively interest on the part of inventors, on the subject of the legal security in their inventions is but natural and just, but its exercise too often stultifies the judgment, and prevents it being governed by manifestly more wise and experienced counsel. To properly draw the specification and claims of an invention or discovery, it is necessary that a general knowledge should be had of inventions and improvements for the same purpose, and all others that relate to the machine, manufacture, or process for which it is designed, as well as a proper understanding of the nature of claims generally ; and hence it follows that an inventor can seldom be found who can construct a claim which will be acceptable at the Patent Office, and clearly embrace his entire invention. It very often occurs that an inventor, in his zeal to fully cover his invention, makes his claim so broad as to render it nugatory in effect, or, f rom a lack of comprehensiveness and detail, embarrasses the examiner at the Patent Office in distinguishing the real merits and vital parts of the invention desired to be secured. There appears to be a wrong impression v/ith many inventors as to what constitutes a good and proper patent claim. They often object to one when confined to a combination of parts essential to a certain result or operation, on the ground that such a claim is more likely to be evaded and infringed upon than where a special claim is made to the arrangement, construction, or form of an essential part. Now this mode of reasoning does not always hold good, as in many cases the novelty of the invention is of such a character as to make it impossible to secure it in any other wsiy than in combination with other parts, and very often this combination claim is stronger than if the arrangement, or construction, or form of the additional part constituting the invention were specifically claimed, as these latter can often be so altered as to avoid the charge of infringement, and yet produce an equally beneficial, and in many cases analogous effect. There are, moreover, cases of meritorious inventions where, if the arrangement, construction, or form of certain parts were claimed, their success at the Patent Office would not only be endangered, but in the event of patents being secured under such circumstances, in addition to being worthless on account of the specific character of the claims as stated, they would fail to secure to the inventors the exclusive protection to which they were legitimately entitled; whereas, if the parts were claimed in combination with other essential ones, they would be what is generally termed strong and good claims admitting of general and broad applications. The right to the celebrated Woodworth planing machine was held under the claim of the combination of the rotating cutters with pressnre rollers, or analogous devices; and this combination claim was subjected to a more scrutinizing judicial test than any other ever secured by patent. There are again other inventions which, if secured under a combination of parts would be futile, and hence it is that to dissect, discriminate, and select the novel and important parts to be claimed, and embrace them in the peculiar form and phraseology to make them acceptable at the Patent Office, requires knowledge, judgment and skill of that peculiar * kind which cannot usually be found, except A among those who are thoroughly acquainted f( with the contents of the Patent Office, and ^ are conversant with the business of procuring patents. We would theref ore advise inventors who have not had much experience in patent matters, to employ some competent agent in whom they have confidence, to conduct their cases before the Patent Office. A case in point has recently occurred in our own practice which illustrates this view. A Pennsylvania inventor recently called upon us, who brought some half dozen of his inventions, every one of which had been rejected. He wanted advice. The only reason assigned by the Patent Office for rejecting his claims was the imperfect manner in which his papers were prepared. Upon examination we found that some of his inventions were novel, but his specifications and claims were drawn up in the most absurd and incongruous style, that his drawings were anything but artistic in their execution, and that as a whole his papers were nothing but a mass of error and confusion. Under such circumstances the rejection of his papers by the Commissioner of Patents was of course perfectly justifiable. The papers were prepared by and embodied the ideas of the applicant, and it was difficult to convince him that they were faulty in any respect. All persons are prone to approve of their own productions, and it is notorious that some inventors have sl peculiar weakness in this respect. It is an old proverb among lawyers that " he who pleads his own cause has a fool for a client." This is equally true of inexperienced inventors. They generally make a botch of their patent papers, and after a long delay are glad to seek that professional advice and assistance which, had it been employed at the outset, would have saved them much money and a great deal of annoyance.
This article was originally published with the title "What Constitutes a Good Patent Claim" in Scientific American 13, 40, 317 (June 1858)