In this blog post, we will look at how inventors can effectively write patent claims to protect the scope of their inventions.
If someone easily imitates and sells an invention that you have spent time, capital, and effort to create, no one will invent anything. The patent system exists to prevent this. The patent system is a system that allows the state to grant an exceptional monopoly in exchange for disclosing the invention and contributing to industrial development through improved inventions. In other words, it encourages inventions by allowing inventors to legally monopolize their inventions for more than 20 years and then disclose the inventions to the general public. However, although patents are a system that grants exclusive rights for a long period of time, they have strict procedures and mechanisms for registration requirements and the exercise of rights after registration. Therefore, not all inventions can be patented simply because they were invented by the inventor, and even if they are patented, it may be possible to manufacture and sell imitations within the scope of the law. To prevent this, we will look into the requirements for patent registration and use examples to find out which patents should be obtained to protect one’s invention to the fullest extent possible.
First, before we look at the patent requirements, we will review how to express an invention. An invention is a creation of technical ideas using natural laws, and it is a highly advanced, invisible, and intangible technical idea. Therefore, when filing a patent application, we must write and submit our invention in the form of a claim in the specification, and the patent requirements are judged based on this claim, and the scope of rights is determined later. In other words, the content of the claim is the invention itself. The claims are not submitted as an invention itself, and the importance of the claims cannot be overstated because the claims are judged based on the claims alone, regardless of the invention. Now, let’s take a look at how to write claims.
To obtain a patent, you must write claims that meet the patent requirements, which are broadly divided into three categories. First, the person who can obtain a patent. Second, the invention that can be patented. Third, the formal requirements for patent-eligible applications. The formal requirements for patent-eligible applications are the job of patent attorneys who represent patent applications. Since it is not a big problem for who can obtain a patent, let’s take a look at inventions that can be patented. There are various requirements for inventions that can be patented, but I will explain the most important requirements that inventors should know: novelty and inventive step. Novelty means that the invention was not known in Korea or abroad at the time of application. In other words, only new inventions can be registered, and inventions that are known in Korea or abroad cannot be registered. However, only completely identical inventions cannot be registered, and improved inventions can be registered. “Progressiveness” means that only inventions that are advanced from a known invention can be registered. Here, a known invention means a domestic or foreign known invention, as does novelty. An advanced invention is judged based on the person with ordinary knowledge in the relevant technical field based on the technology in Korea. Therefore, an improved invention that adds an advanced technology from a known technology can be registered.
If you draft a claim that satisfies novelty and inventiveness, you can register your invention. Now, can you exclusively use your patented invention? If you analyze this further, can you use your patented invention? Can you claim infringement when others sell imitations? The answer to both questions is “no.” This is a part that is often misunderstood by inventors and requires a deep understanding of patents. It would be very frustrating if you spent money and time to register a patent but could not monopolize your invention. To avoid this situation, we need to understand the scope of patent rights.
The scope of rights refers to the range in which you can exercise the rights of your registered patent, which is determined by the claims we have just discussed. The scope of Korean patent rights is limited to the surrounding area. This means that the right is granted as long as it includes all the components that make up the invention. Conversely, if any of the components of my invention are excluded or slightly modified, an avoidance design becomes possible. For example, let’s say that the claim is written as “a bicycle consisting of wheels, a handle, a body frame, and pedals.” Then, the scope of my invention’s rights extends to all parts including the wheels, handlebars, frame, and pedals. Therefore, if someone sells a bicycle with a light attached to it, it would be an infringement of my patent rights. However, if I had drafted the claim as “a bicycle consisting of wheels, handlebars, a frame, pedals, and a light,” then it would not be an infringement if someone sold a bicycle without the light.
Let’s take another example. Suppose you invented a really delicious ox head soup. How would you write the claim to be most advantageous? Suppose you submitted a patent claim that said, “A dish with ox head meat as a topping, and chopped seasoning in a broth made from ox bones.” If someone made a similar dish using a different part of the meat instead of ox head meat, would that be an infringement of your patent? If you used pork or chicken instead of beef, or a clear broth instead of minced seasoning, then this would not be an infringement of your patent. Therefore, it would be advantageous to write the claim as “a food with animal meat as a topping in a broth made from animal bones.” The above examples are just for illustrative purposes, but there are many cases like this in reality. In fact, there is a case where a highly patentable stethoscope was invented, but the shape of the head of the stethoscope, which does not affect the utility of the invention, was described as square in the claims. Since then, even if a competitor changes the shape of the head of the stethoscope to a triangle, oval, circle, etc. and sells it, the competitor cannot claim patent infringement, making the patent useless.
Let’s answer the first question mentioned earlier. The first question is, can I use the patented invention? In this case, it cannot be used in certain situations. For example, let’s say that Company A has registered Invention A first. If Company B then files for A+B, it will be possible to register it if it is inventive. However, if Eul implements his invention, it will infringe on the patent of A because it falls within the scope of the rights of A’s pre-registered invention due to the peripheral limitation described above. In this case, Eul cannot implement his invention even though it is registered. In other words, whether it is registered or whether the right is exercised are separate issues, and the right may not be exercised even though it is registered. Does Eul not need to register his invention? No, he does. In this case, Eul’s invention is more advanced than G’s invention, so G’s invention will be less in demand in the market. Therefore, G wants to sell Eul’s invention, but doing so would be an infringement of the invention. At this point, G and Eul can enter into an agreement that allows each to use the other’s invention. Therefore, Eul needs to register these inventions.
Let’s answer the second question. The second question is, can you file a claim for infringement when someone else is selling a copycat product? Again, the answer is no. As we have seen, if you narrow the scope of your patent claims, there will always be a way to avoid infringement.
So, what kind of patent should we get? In order to efficiently use your invention in the market and prevent others from infringing on it, you first need to set the scope of your invention’s rights as wide as possible. In other words, when drafting claims in a patent specification, you should avoid including components that are not necessary for your invention. Only the essential parts of the invention should be included in the claims, and the claims should be drafted to cover only your own invention. You should draft the claims around the parts of your invention that are effective, and thoroughly review them to prevent competitors from easily changing other parts.
In conclusion, the patent system is an important system that promotes inventions by granting exclusive rights to inventors and thereby contributes to industrial development. However, inventors should be careful during the patent application process because the procedures and mechanisms are complicated and difficult. In order to protect the technology they have invented as much as possible, inventors must carefully draft the claims when preparing the patent specification and set the scope of the rights so that their invention can be used effectively in the market.
