Developing a patent portfolio is itself a business strategy, but strategy also plays a part in deciding what to seek patent coverage for, when and how to seek it, when and against whom to assert it, and how to defend it when its validity or enforceability is challenged. Strategic decisions are made from the time of filing a patent application through the time that the application spends in the PTO prior to grant and throughout the life of a patent after grant. Inventors, employers, attorneys, and investors will all benefit from well-thought-out strategies, as will anyone seeking to derive value from or defend a patent. This chapter addresses two acts performed at a patent's earliest stages that involve strategic planning. These stages are the preparation and filing of a patent application, and the strategic acts are the use of provisional patent applications and the drafting of claims.

10.1 Provisional Patent Applications

The filing of a provisional patent application prior to a utility patent application is probably the strategic tactic most commonly used by inventors and their employers. A provisional patent application is a document containing a description of an invention and filed in the PTO but not processed by the PTO other than being assigned an application number and filing date. If a utility (nonprovisional) patent application on the invention described in the provisional is filed within a year of the filing of the provisional and expressly claims the benefit of the provisional, the provisional's filing date can serve as the effective filing date of the utility application and thus of any patent that is granted on the utility application. If no utility application is filed by the 1-year date, the provisional's filing date is no longer available for use, and the provisional loses its entire value. Since a provisional application itself will not result in a patent regardless of its merit, a provisional application is not truly an application for a patent but rather a kind of placeholder for a utility patent application.

The strategic options presented by a provisional patent application are many. Several of these options are due to one's ability to obtain a filing date from the PTO quickly and inexpensively by filing the provisional. The quickness is due to the fact that a provisional application is not required to contain all the parts of a utility patent application such as claims or an abstract or any of a utility patent application's organization and formatting requirements. The quickest provisional applications are those known as “cover-sheet provisionals,” a term used to describe documents prepared for other purposes and then submitted, with essentially nothing more than a cover sheet, as a provisional application. The cover sheet is most often a transmittal form downloaded from the PTO website and filled in with such information as the identification of the inventor(s), a correspondence address, and the filing fee. The low expense of a provisional is in part because a provisional has a lower filing fee than a utility application: for applicants not qualifying for discounts (see Appendix A for the qualifications and the amounts of the discounts), the filing fee for a provisional is a single fee of $400 compared to the three-part fee (base filing fee, search fee, and examination fee) totaling $1600 for a utility application. A utility application incurs even higher fees when it exceeds certain size limits in terms of the number of pages and the number of claims (also shown in Appendix A), although these excess page and claim fees are subject to discounts as well. (Note that a utility application filed after, and claiming the benefit of, a provisional application will require the full utility application filing fees with no credit for fees paid with the filing of the provisional.) In addition to lower filing fees, provisionals often entail lower attorney fees, or even no attorney fees for those applicants who prepare provisionals on their own, particularly those filing cover-sheet provisionals. When an attorney is used, the drafting of claims and an abstract and the attorney's involvement in the organization and formatting of the text all contribute to the attorney's time, in addition to the attorney's own contribution to the strategy of the application and the patent that will issue on it.

Obtaining an early effective filing date for a utility (nonprovisional) application by first filing a quickly prepared provisional application is certainly useful in a priority dispute between utility applications under the first-to-file rule of the AIA, but it offers further benefits as well. One of these is providing an early prior art cutoff date for a later utility application, and another is serving as a prior art date itself when the utility application (or patent) that relates back to it is cited as prior art against another utility application. For purposes of cutting off prior art, that is, predating documents or activities that would otherwise qualify as prior art, a well-kept laboratory notebook can be useful, as explained in Chapter 4, but provisional applications offer benefits that laboratory notebooks either cannot provide or can only provide if combined with other facts or showings. For example, an inventor seeking to predate prior art by submitting a notebook entry as evidence of an earlier date of invention must also show that in the time between the notebook entry and the filing of the patent application the inventor has diligently continued to pursue the invention, either by working further on the invention itself or by working with a patent attorney on the patent application. In contrast, the inventor who can predate prior art with the filing date of a provisional application can do so without the need to show diligence. Nor is there any need for the inventor or the inventor's employer to preserve the record of a provisional, other than to know its application number and filing date so that these can be referenced in the nonprovisional application, since once filed the provisional is officially on record at the PTO. In litigation, for example, inventors who wish to introduce a notebook entry into evidence are typically called upon to testify as to how the notebook was preserved to protect it from alteration and often to also provide a witness to corroborate the date and authenticity of the entry. No such testimony is needed with a provisional application, since its date and authenticity are verified in the PTO record, and there is no opportunity for modifying it after it is submitted. When the situation is reversed and a utility patent or published application that claims the benefit of a provisional application assumes the status of prior art, the provisional's filing date becomes the effective prior art date. Thus, for example, a utility application filed on October 1, 2014, with no benefit from a provisional application can be rejected over a utility application filed later, for example, on November 1, 2014, that claims benefit of a provisional application filed earlier, for example, on January 1, 2014.

Another strategy associated with the filing of a provisional application is the postponement of the need to make a choice between revealing the invention to the public and maintaining the invention as a trade secret. A provisional application is initially held in confidence by the PTO but is ultimately made available to the public if a utility application with a claim to the provisional is filed within the 1-year deadline and allowed to be published, since the utility application will be published whether or not a patent is ultimately granted. If no utility application is filed (or if one is filed and then withdrawn before it is published), the official record of the provisional remains closed and the contents of the provisional remain confidential, unless the provisional or its contents have otherwise been made public, by the inventor or the inventor's employer, for example. The confidentiality of the invention in a provisional that has been allowed to lapse with no utility application having been filed is therefore preserved, but the lapsed provisional provides no protection against competitors and its filing date does not become the effective date of any patent, including those serving as prior art. Often, the need for and advantage of an early filing date may not become known until well after both the provisional application and the utility application have been filed. The potential of an advantage however usually justifies the early filing of a provisional, regardless of when the decision regarding a utility application (to file or not to file, or to pursue to grant or to abandon) is made. The effective filing date of the utility application is secured at the provisional stage.

A further strategy is the use of the provisional to extend the time between the effective filing date and the expiration date of a patent. If a utility application is filed in a timely manner and succeeds in becoming a patent, the expiration date of the patent will be 20 years from the filing date of the utility application, and in some cases longer if delays attributable to the PTO occurred during pendency, rather than 20 years from the filing date of the provisional. A utility application can thus be filed as late as the lapsing date (the 1-year anniversary) of the provisional and still claim the benefit of the provisional's filing date, and if this is done, the time span between the prior art cutoff date and the patent expiration date will be 21 years. Without the provisional, the time span is only 20 years. Note however that the provisional does not extend the term of enforceability of the patent, since a patent is not enforceable until it issues; instead, the provisional shifts the term into the future by the length of time between the filing dates of the provisional and the utility application, that is, a maximum of 1 year. The shift occurs without loss of an early prior art cutoff date, and this can be an advantage for inventions whose licensing opportunities or royalty income does not typically occur in the first year of enforceability. This is true of inventions whose commercial use is preceded by years of clinical or field testing or for which market development requires an extended period of time. (Note that a patent does not have a 20-year term, as is often mistakenly said, since the term begins with the grant of the patent, which is typically well more than a year after the filing date of the utility application. Again, however, extensions can occur if certain types of delays occurring prior to grant are attributable to the PTO rather than the applicant.)

Yet another strategy associated with provisional patent applications is the option that a provisional offers the applicant of postponing the final decision on whether to fully commit to the financial investment involved in obtaining patent coverage. A provisional application filed at the conception stage of an invention affords the inventor a year to test the concept for efficacy or to determine, verify, or modify the scope of the concept. From a strictly financial standpoint, inventors filing provisional applications have a year to raise funds from potential investors before committing to the filing fees and attorney fees incurred in filing a utility application, and the same is true for inventors wishing to determine whether their inventions have sufficient industrial or commercial appeal to justify the costs. Postponing the decision for the year can be done without loss of patent rights if the prior art cutoff date is a determining factor of patentability.

With any of these strategies, care must be taken to avoid a false sense of security from the filing of a provisional application. Even if a provisional application is filed early enough to predate prior art that might be cited against a subsequent utility application, the provisional must be adequate to support the claims of the utility application and therefore effective to overcome the prior art. Certain provisionals, for example, are filed at a stage where the inventor has not yet progressed beyond a rudimentary concept of the invention, and a provisional that is hastily written and filed at this stage may contain only the bare outlines of the concept with little or no explanation of how to implement it. The provisional may lack the detail needed for fully describing how to make and use the invention or the scope needed to support the broader claims of the utility application that is subsequently prepared in less of a hurry. Cover-sheet provisionals are particularly vulnerable to these deficiencies. Those whose contents are lifted from technical papers, for example, frequently focus on experiments actually performed by the authors with little or no statement of broader fields of application. Many technical papers also include statements that compromise patent coverage, such as negative conclusions, statements of doubt or inadequacies of the work performed, and recommendations for further testing to verify results or to confirm conclusions. Provisionals that are essentially trade show presentations repackaged for filing in the PTO are often similarly deficient since their purpose is more to attract interest among investors and consumers than to present information in a way that will support a broad patent claim. They thus tend to stress the advantages of a new product or service while withholding the underlying technical details that are required in a patent application.

Even with a full description of technical details, a provisional application may fail to provide sufficient descriptive content to support the strategies that are often needed for achieving grant of a patent application, defending the validity of the patent against a post-grant challenge, or allowing the patent to realize its full potential as a competitive instrument. These strategies can include the ability to shift to alternate ways of expressing the invention to assert its novelty when facing prior art that the inventor was not initially aware of or to trim the scope of the invention when the claims are held to be overbroad. The strategy-minded inventor or patent owner will therefore try to predict the various ways in which a patent can be challenged and of the various persons or entities, including those in different segments of the industry, over whom the patent owner might eventually wish to assert the patent. Drafting the provisional with these in mind can contribute considerably to its value.

Many patent owners adopt the habit of preparing every patent application as a fully drafted utility application and filing it as a provisional application and then refiling it as a utility application at the 1-year date. As noted earlier, this results in a patent with an expiration date that is 1 year later than it would be if the application were originally filed as a utility application, and yet it eliminates any question of support in the provisional for the claims in the utility application. This procedure offers no advantage however in the quickness by which a provisional application can be prepared, nor does it offer the financing flexibility of a provisional. Nor is it strictly necessary for assuring proper support. The courts have repeatedly stated that “[i]t is not necessary that the [earlier] application describe the claim limitations exactly … but only so clearly that persons of ordinary skill in the art will recognize from the disclosure that appellants [i.e., the inventor(s)] invented processes including those limitations.” ¹

The need for a provisional application to contain enough description to provide a flexible strategy in the ultimate patent was demonstrated in a case involving Patent Nos. 5,899,283 and 5,950,743 of New Railhead Manufacturing, L.L.C. ² Both patents were applied for on the same date and claimed the benefit of the same provisional application that had been filed 9 months earlier. The claims of the '283 patent were apparatus claims and those of the '743 patent were method claims, but the subject matter of both was horizontal, or “trenchless,” drilling. Trenchless drilling is used for oil and gas exploration in stratified earth formations and also for forming boreholes underneath roadways and bodies of water for the placement of utility conduits. Trenchless drilling typically requires a drill string terminating in a directable drill bit and a device known as a “sonde” that sends positioning data to a receiver on the ground. High-speed fluid jets are used both to steer the drill bit and to cool the drill body and blade during drilling.

Prior to the inventions in the New Railhead patents, trenchless drilling systems had been unable to drill through rock, even with the help of the fluid jets. To address this problem, the inventor in the two patents had devised an asymmetric drill bit whose body was angled relative to the sonde housing and drill string. A drawing from the '283 patent is shown in Figure 10.1.

As the drawing shows, the body of the drill bit (102) had a heel (the left half of the drill bit) extending above the axis of the sonde housing (110) and a toe (the right half of the drill bit) extending below the axis, with end studs (112) protruding from the tip of the toe. (The axis itself is not shown but is horizontal and runs along the longitudinal centerline of the cylindrical sonde.) In use, the bit rotated intermittently in a random, orbital motion that allowed the studs to fracture the rock at one location and then move to another location at a different angle relative to the axis of the sonde housing to resume fracturing. The rotation of the angled bit body relative to the axis produced a borehole whose radius exceeded that of the drill bit itself. The claims of the '283 patent were drawn to the drill bit and included the phrase “the unitary bit body being angled with respect to the sonde housing.” The claims of the '743 patent were drawn to “A method of horizontal directional drilling in rock” and included the phrase “causing a drill bit at one end of a drill string to intermittently rotate as it digs in, stops rotation until the rock fractures, and then moves in a random, orbital intermittent motion.” The method claims did not expressly recite the angled orientation of the drill bit, but New Railhead conceded that the method of the '743 claims was performed whenever the drill bit of the '283 claims was used.

When the patents issued, New Railhead sued its competitors Vermeer Manufacturing Company and Earth Tool Company for patent infringement, and the defendants responded by challenging the validity of both patents. The challenge succeeded at the trial court, which therefore declared the patents invalid, and this decision was affirmed on appeal. ³ The challenge to the method claims (the '743 patent) was based on grounds that did not call the provisional application into question, but the challenge to the drill bit claims (the '283 patent) did, asserting that the provisional's filing date could not be applied to those claims because the provisional did not show or make reference to the angled orientation of the drill bit. The provisional's filing date was essential to the drill bit claims because New Railhead had made a sale of drill bits within the scope of the claims on a date 6 months before the provisional's filing date but 15 months before the '283 patent's filing date. Thus, unless the provisional's filing date could be applied to the claims in the '283 patent, the claims would be invalidated by an on-sale bar, that is, a bar to patentability due to a sale of units within the scope of the claims more than 1 year before the effective filing date of the patent in regard to those claims (see Chapter 3). Use of the provisional's filing date would have reduced the time between the sale and the filing date to less than a year, avoiding the bar.

The application on which the '283 patent was granted, and hence the patent itself, described the angled relationship between the bit body and the sonde housing in its text and showed it in its drawings, specifically the drawing reproduced in Figure 10.1. The closest descriptions that could be found in the provisional application, on the other hand, were a “high angle of attack,” “asymmetrical geometry,” “offset drill points,” and a “trailing shoe.” The provisional did not state that the bit body was at an angle to the axis of the sonde housing, and the drawings in the provisional application showed the bit body and the sonde housing in separate views but not joined. When questioned at trial, the inventor testified that if one were to construct the parts from the drawings and combine them, the resulting drill bit would be angled as claimed in the '283 patent, but this contradicted the inventor's own deposition where he stated that there was nothing in the provisional application that indicated that the bit was angled. After considering all this, the appeals court ruled that the provisional did not adequately support the claims of the '283 patent and affirmed the trial court's decision that the patent was invalid because of the sale of units 15 months before the patent's filing date.

10.2 Strategies in Claim Construction

The exclusionary power of a patent, that is, its ability to allow the patent owner to exclude others from practicing the invention and to grant licenses to do so, resides in the claims, which thereby form the core of a patenting strategy. The claims delineate in explicit terms the metes and bounds of the products or activities that constitute infringement of the patent. While the patent is in force, therefore, the claims are its most important part, despite their location at the end of the patent and the absence of any heading, special type fonts, or much else to set them apart from the body of the patent (the specification) or draw attention to them. In fact, the placing of the claims after the bulk of the description in the patent can often mislead the reader as to the scope of the patent's coverage, since the descriptive sections of the patent often suggest a broader scope of coverage than the claims themselves. ⁴ Nevertheless, the claims provide the arguments and options often needed for guiding the patent application through the examination process at the PTO, for asserting the patent against infringers as a competitive tool, and for providing the litigator with legal strategies when asserting and defending the patent in court. While this book does not attempt to instruct scientists, engineers, and other inventors how to draft their own claims, much less their own patent applications, the strongest and most valuable patents in terms of both content and strategy are those that are prepared through collaboration between the inventor and the attorney. For this reason, inventors will benefit from understanding certain basics of claim construction and in particular how to draft a claim to best serve its different functions and to provide the strategies that will give the patent its greatest value.

Most patents have figures in the form of drawings, graphs, or diagrams to supplement the specification and aid the reader's understanding of the invention. The figures generally depict specific examples or embodiments of the invention, however, while the claims express the invention as a whole, using generic terms to provide breadth of coverage. For this reason, the claims are intended to be read and understood without reference to the figures. As an exercise, therefore, read the following claim without reference to the drawings that appear on the succeeding page, and try to form a mental image in a generic sense of the physical object (a clothespin) that the claim describes. This claim is the leading claim of an actual, although expired, U.S. patent, reproduced verbatim (including punctuation and spelling errors) and in the format in which the inventor's attorney presented it to the PTO and in which it appears in the patent. (Hint: if you become lost before reaching the end of the claim, you will be in the majority.)

Claim 1: A clothespin comprising a pair of generally symmetrical, longitudinally, elongated, generally rectangular, block-like non-metallic members each having a longitudinal axis and similarly configured inner and outer surface portions; each of said pair of elongated members including a forward clamping jaw having its inner surface portion adapted for gripping a clothesline and articles to be hangably suspended therefrom when the clamping jaw of one of said pair of members closes into clamping engagement with the corresponding clamping jaw of the other of said pair of members, a tapered tail adapted to be manually engaged for levering said forward clamping jaws open, and an intermediate portion between said jaw and said tail for defining a fulcrum about which each of said pair of members may be pivoted for opening and closing said clamping jaws with respect to one another; metal spring means for pivotally urging said clamping jaws toward one another in a clamping position, said spring means including a coiled hollow body portion intermediate first and second relatively straight elongated end portions; the intermediate portion of each of said pair of members including a transverse lateral groove across the inner surface portion thereof, said groove being generally perpendicular to said longitudinal axis and having a generally semi-circular cross-sectional configuration such that the coiled hollow body portion of said spring means may be houseably received between the correspondingly opposed lateral grooves in the inner surface portions of said pair of elongated members and at least partially concealed therein, the intermediate portion and tail of one of said pair of members having a first relatively straight longitudinal recess in the inner surface portion thereof for receivably retaining and recessably concealing said first relatively straight elongated end portion of said spring means and the intermediate portion and tail of the other of said pair of members having a secong relatively straight longitudinal recess in the inner surface portion thereof for receivably retaining and recessably concealing said second relatively straight elongated end portion of said spring means so that the end portions of said spring means are recessed beneath said inner surface portions and said coiled body portion is at least partially recessed to prevent or at least minimize metal contact with said clothesline and said suspended articles, a first metal clip means for retainably securing one of said pair of members to the coiled hollow body portion of said spring means and a second metal clip means for retainably securing the other of said pair of members to the coiled hollow body portion of said spring means so as to prevent the inadvertent separation of said members and said spring means even under abnormal conditions, each of said members including a three-sided continuous slot formed in the external surfaces of the intermediate portion thereof and extending from one end of said lateral groove in the inner surface portion along the side of said intermediate portion, laterally across the outer surface portion of said intermediate portion directly opposite said lateral groove and along the opposite side of said intermediate surface to the opposite end of said lateral groove, the outer surface slot portion being generally parallel to said lateral groove and perpendicular to said longitudinal axis and said side slots being generally perpendicular to said lateral groove; each of said clip means being an integral piece of resilient metallic material generally configured as a partially opened rectangle when in operative position, said clip means having a relatively straight intermediate clip body, a pair of relatively straight clip sides which are generally perpendicular to said clip body and a pair of clip ends disposed toward one another and generally parallel to said clip body and perpendicular to said clip sides, said body portion being adapted to be receivably retained and recessably concealed within said outer surface slot portion, said clip sides being adapted to be receivably retained and recessably concealed within said slot sides, and said clip ends adapted to be insertably received and retained within the opposite hollow ends of said coiled spring body thereby preventing separation while simultaneously recessing said metal clip means beneath the exterior side and outer surface portions of said members to prevent or at least minimize metal contact with said clothesline and the articles suspended therefrom to prevent rust spots and the like.

Now, read the following, which is the same claim with no changes to its wording except for the removal of a misplaced comma and the correction of a spelling error, but with added paragraphing and indentation and the use of italics to highlight the physical components of the clothespin. While reading this version of the claim, refer to Figure 10.2, which contains selected drawings from the patent including the patent's own drawing representing the prior art (Part E of Fig. 10.2). Numbered parts from the drawings have been inserted in the claim to show how the claim elements are exemplified in the drawings.

Claim 1 (with paragraphing and part numbers): A clothespin comprising

1. a pair of generally symmetrical, longitudinally elongated, generally rectangular, block-like non-metallic members (Part A: 12, 13) each having a longitudinal axis (17) and similarly configured inner and outer surface portions (inner: 18, 27; outer: 19, 28); each of said pair of elongated members including
   1. a forward clamping jaw (Part B: 22, 31) having its inner surface portion (23, 32) adapted for gripping a clothesline and articles to be hangably suspended therefrom when the clamping jaw of one of said pair of members closes into clamping engagement with the corresponding clamping jaw of the other of said pair of members,
   2. a tapered tail (Part A: 24, 33) adapted to be manually engaged for levering said forward clamping jaws open, and
   3. an intermediate portion (Part B: 25, 34) between said jaw and said tail for defining a fulcrum (26) about which each of said pair of members may be pivoted for opening and closing said clamping jaws with respect to one another;
2. metal spring means (Part C: 14) for pivotally urging said clamping jaws toward one another in a clamping position, said spring means including a coiled hollow body portion (35) intermediate first and second relatively straight elongated end portions (36, 37);

   the intermediate portion (25, 34) of each of said pair of members including a transverse lateral groove (Part A: 39, 41) across the inner surface portion thereof, said groove being generally perpendicular to said longitudinal axis and having a generally semi-circular cross-sectional configuration such that the coiled hollow body portion (35) of said spring means may be houseably received between the correspondingly opposed lateral grooves in the inner surface portions of said pair of elongated members and at least partially concealed therein,

   the intermediate portion and tail of one of said pair of members having a first relatively straight longitudinal recess (Part A: 42) in the inner surface portion thereof for receivably retaining and recessably concealing said first relatively straight elongated end portion (36) of said spring means (14) and the intermediate portion and tail of the other of said pair of members having a second relatively straight longitudinal recess (43) in the inner surface portion thereof for receivably retaining and recessably concealing said second relatively straight elongated end portion (37) of said spring means so that the end portions (36, 37) of said spring means are recessed beneath said inner surface portions and said coiled body portion (35) is at least partially recessed to prevent or at least minimize metal contact with said clothesline and said suspended articles,

3. a first metal clip means (Part D: 15) for retainably securing one of said pair of members to the coiled hollow body portion of said spring means and a second metal clip means (16) for retainably securing the other of said pair of members to the coiled hollow body portion of said spring means so as to prevent the inadvertent separation of said members (12, 13) and said spring means (14) even under abnormal conditions,

   each of said members including a three-sided continuous slot (Part A: 48) formed in the external surfaces of the intermediate portion thereof and extending from one end of said lateral groove (39, 41) in the inner surface portion along the side of said intermediate portion, laterally across the outer surface portion of said intermediate portion directly opposite said lateral groove and along the opposite side of said intermediate surface to the opposite end of said lateral groove, the outer surface slot portion (49) being generally parallel to said lateral groove (39, 41) and perpendicular to said longitudinal axis (17) and said side slots (51) being generally perpendicular to said lateral groove; each of said clip means (15) being an integral piece of resilient metallic material generally configured as a partially opened rectangle when in operative position,

   said clip means having

   1. a relatively straight intermediate clip body (46),
   2. a pair of relatively straight clip sides (47) which are generally perpendicular to said clip body and
   3. a pair of clip ends (45) disposed toward one another and generally parallel to said clip body and perpendicular to said clip sides,

   said body portion (46) being adapted to be receivably retained and recessably concealed within said outer surface slot portion (49), said clip sides (47) being adapted to be receivably retained and recessably concealed within said slot sides (Part B: 51), and said clip ends (45) adapted to be insertably received and retained within the opposite hollow ends of said coiled spring body (35) thereby preventing separation while simultaneously recessing said metal clip means (15, 16) beneath the exterior side and outer surface portions of said members (12, 13) to prevent or at least minimize metal contact with said clothesline and the articles suspended therefrom to prevent rust spots and the like.

The second version of the claim is easier to follow than the first, and this benefits the strategic considerations listed earlier, since the inventor, the PTO, and any attorneys seeking to assert the patent against infringers or defend it against challengers will need to know from the claim wording itself exactly what structures fall within the scope of the claim and what structures do not. Also, to promote a more efficient and thorough examination of the pending application, the PTO itself encourages attorneys to incorporate paragraphing and indentation into their claims so that the claims are easier to follow. ⁵ Even in its revised form, however, the length of the claim raises questions, not least for the reason that the invention is a clothespin, a structurally simple device whose defining features should presumably be expressible in a claim that is correspondingly simple in both language and length.

Regardless of how simple or complex the invention, the optimal claim sets forth the metes and bounds of the invention with just enough specificity to distinguish the invention by its point(s) of novelty, rather than describing in detail the drawings that are included to illustrate the invention. Since each word or phrase in a claim is a limitation on the scope of the claim, the longer the claim, the more limitations it has and the narrower its scope. ⁶ The goal is therefore to include as few limitations as possible, with the understanding that certain limitations will be needed to put the others in a proper context. Claims of narrow scope do have a certain appeal, of course, since they will most likely encounter fewer rejections from a patent examiner and also be less likely to overlap with (and therefore be invalid over) prior art that might be discovered after the patent is granted. The extreme example of a narrow-scope claim is a “picture claim,” which is a claim that lists all details of the patent's drawings. A picture claim is therefore a verbal picture of the unit that the inventor has actually constructed, listing all, or essentially all, of the features of the unit regardless of their criticality to the functionality or novelty of the concept at the core of the invention. (A method claim can also be a “picture claim” for analogous reasons, for example, by listing all materials, equipment, steps, operating conditions, amounts and proportions, etc., regardless of their criticality and their relation to the point of novelty.) As the ultimate narrow-scope claim, a “picture claim” is usually the easiest to distinguish over the prior art, since it contains so many limitations that any number of them can be pointed to as needed when prior art is cited against it. Many inventors whose patents contain only picture claims however realize too late that a competitor's product that includes what the inventor considered to be her/his point of novelty falls outside the scope of the claims by sidestepping one or more of the limitations that are peripheral to the point of novelty. A patent whose broadest claim is a “picture claim” is therefore relatively easy for a competitor to design around, and picture claims provide a very limited scope of coverage, often more limited than the invention deserves.

Returning to the clothespin claim, therefore, how did the claim get to be this long? And must the claim be as narrow as it appears to be (contain as many limitations as it has)? First, however, let us look at the clothespin itself as represented by the drawings in Figure 10.2 and at what the specification says about the novelty and nonobviousness of the invention.

As the drawings show, the clothespin of this invention has only five parts: two wooden (“nonmetallic”) pieces (elements 12 and 13 of Part A of Fig. 10.2) that together form the clothespin's clamping jaws as well as its finger grips, a central spring (element 14 of Parts A, B, and C), and two U-shaped clips (only one of which, element 15, seen in Parts A, B, and D, is assigned a number) that secure the spring to the wooden pieces.

Turning to the specification, the problem addressed by the invention and the solution that the invention presents are stated in the opening paragraphs as follows:

The prior art teaches many clothespins of the type having a pair of elongated clamping members and a spring interposed therebetween for normally urging the jaws of the clothespin closed upon one another. Many of the springs used in the prior art quickly lose their resiliency and render the clothespin ineffective after a short period of use. Helical springs have proven to be extremely effective at providing a sufficient clamping force over an extended period of use.

However, many of the clothespins of the prior art utilizing helical springs are structurally unstable. If a clothesline or an article of clothing or the like is inserted between the jaws of the clothespin to a point sufficiently close to the fulcrum, the body of the spring may lift out of the grooves provided therefore causing the clothespin to fall or fly apart if any type of lateral or longitudinal force is applied to its tail portion.

Many of the prior art attempts to solve this problem involve the use of sliding sheaths or staple arrangements whereby the spring is physically attached at one or more points to the two halves of the clothespin. This increases the complexity and cost of the clothespin so as to render many such proposed modifications to be economically unfeasible.

Furthermore, since most of the springs utilized in the prior art are metal, they are subject to rust. Therefore, the clothesline or any article of clothing or the like which is inserted between the jaws of the clothespin and allowed to physically contact the spring may become soiled or acquire a rust deposit often necessitating re-laundering of the article.

The invention therefore addresses two problems—the instability of the mounting of the helical (coil) spring to the clamping members and the risk of soiling the clothing that is held between the jaws of the clothespin due to contact of the clothing with the rusting spring. The invention in claim 1 addresses the first of these by adding the two clips (“first metal clip means” and “second metal clip means,” one of which is shown in Part D of Fig. 10.2) to hold the helical spring against the clamping jaws and the second by mounting the spring in the opposite direction so that the elongated ends of the spring extend toward the rear of the clothespin (the finger-grip or tail end) (“the intermediate portion and tail of one of said pair of members having a first relatively straight longitudinal recess in the inner surface portion thereof for receivably retaining and recessably concealing said first relatively straight elongated end portion of said spring means,” as expressed in the claim—emphasis added) rather than toward the clamping end ⁷ (compare Part A of Fig. 10.2 to Part E, which represents the prior art).

Returning to claim 1, the claim as originally presented to the PTO was less than half as long as the version shown here. The official PTO record shows that the added wording, which includes various modifiers throughout the body of the claim plus the entire section at the end of the claim, beginning with “each of said members including a three-sided continuous slot …,” was added by amendment in response to the first Office Action. The amendment was made in response to a rejection of the claim for obviousness over two pieces of prior art, a 1931 patent entitled “Clamp or Clothespin” (No. 1,810,304) and an 1873 patent entitled “Clothes Clamps” (No. 140,659). The clothespin depicted in the 1931 patent was identical to the clothespin that was shown in the figure labeled “prior art” (Part E of Fig. 10.2) in the application being examined.

Accompanying the amendment was the following explanation (the comments in parentheses are added herewith):

[N]either of the references teach a coiled hollow spring body having relatively straight elongated end portions (the 1873 patent actually did show a spring meeting this description); semi-circular lateral grooves for houseably receiving the coiled spring body (the 1931 patent actually did show this) and relatively straight longitudinal recesses along the inner surface of the intermediate and tail portions for retainably receiving and recessably concealing the straight end portions of the spring to prevent clothes-metal contact (these features were already in the claim prior to the amendment) … [nor did either reference] show or suggest Applicant's exterior recess along the sides and outer surface of the intermediate portion opposite the lateral groove for receivably retaining and recessably concealing the clip members which secure the elongated members to the spring assembly while recessing the metal clips below the surface of the member to prevent clothes-metal contact (in fact, neither reference showed any “clip members” at all). None show Applicant's claimed clip configuration where the elongated body portion is disposed in an external lateral recess and the opposing clip ends enter the hollow coil body portion.

Was it necessary to more than double the length of the claim in response to the rejection, and is the resulting claim a “picture claim”? Specifically, are all the limitations in the claim necessary to the novelty and nonobviousness of the clothespin (compare Part A of Fig. 10.2 to Part E, the acknowledged prior art) or necessary to the functionality of the elements of the clothespin (i.e., are they needed to place the elements in their proper context so that the claimed invention is still a clothespin)? The following is a list of limitations from the claim selected with these questions in mind.

Removing one or more limitations in the “Modifier” column will broaden the claim (the more limitations removed, the greater the broadening), and admittedly this will render the claim more vulnerable to challenge for lack of novelty or for obviousness over prior art, particularly prior art that may be discovered after either the application filing date or after the patent issue date. This vulnerability can be addressed however by placing the removed limitations, individually or in combinations, in dependent claims to serve as backup positions. Doing so will provide strategic options that are not available with the claim as shown. ⁸ In the broadest claim, the modifiers should be those that are needed for context, clarification, or distinction over the prior art or all three. Those that limit a component to aspects of appearance or shape that are neither critical to the component's functionality nor relevant to its distinction over the prior art should be avoided. With these considerations in mind, an approach to drafting the broadest claim is to first identify the problem that the invention is intended to solve; then isolate and find words to express the features that embody the inventor's solution to the problem, that is, the point(s) of novelty (which is also nonobvious), without limiting the features more than is needed to express their functionality; and finally add only those additional features that are needed to place the point(s) of novelty in a context that will reflect their functionality. The resulting claim will express the invention in an economy of words and yet have the breadth of scope that the invention justifies.

How many points of novelty (and nonobviousness) should the broadest claim recite? If a single limitation is both novel and nonobvious, this is sufficient to make a claim allowable and enforceable. Multiple points can certainly be included, but novelty is not a matter of degree, and hence a claim with multiple points of novelty does not meet the novelty requirement any better than a claim with only one. Nonobviousness may be considered a matter of degree, but insurance against insufficient nonobviousness in the leading claim can be obtained by the use of dependent claims. The clothespin claim shown here, which is the first claim in the patent, recites both the “clip means” and the rearward orientation of the elongated ends of the coil spring (extending toward the finger-grip ends of the clamping members)—two points of novelty in the same independent claim. The specification, as quoted earlier, indicates that each of these features addresses a distinct problem and is able to do so independently of the other. There may be a certain degree of interaction between these two features—for example, the need for the clips as stabilizers for the spring may be greatest when the spring ends are in the rearward orientation. Nevertheless, each feature has at least some effect in lessening the problem it is directed to without the inclusion of the other feature. This suggests that further flexibility in terms of asserting the patent over competing clothespin manufacturers could be achieved by placing these two features in separate independent claims. This would further increase the overall scope of coverage by encompassing manufacturers that incorporate only one of the two features as well as those that incorporate both. A third independent claim that recites both features could still be retained as backup support.