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How much is one word
worth? To BJ Services Corporation the word "about" was
worth $98.1 million!
The language of patents is
the language of precision, but sometimes, as engineers, we
know that our inventions aren't "exact". Most physical
systems are not binary - working for one particular
combination of parameters but failing with the slightest
deviation from the prescription. So how do you capture your
invention in an imprecise world? To understand why your
patent attorney may ask you for ranges of values for the
details in your invention, read It's All "About" Your
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It's All "About" Your Claims
The patent law
states that you must claim your invention with exactitude
so other people, of ordinary skill in your field of endeavor,
can understand what they are prohibited from making and what
is okay to make. You also have to explain in detail how to
make your invention, that is, to "enable" it (to allow
others to make your invention later and to show that you
actually have done it yourself). But most inventions will
work with wide variations in many parameters, making these
patent law requirements hard for engineers to deal with.
There may not even be a single, well defined performance
maximum to claim. When describing these inventions, many
inventors want to use "words of degree" like "greater",
"smaller", or that favorite, "about".
In a case
recently before the Court of Appeals for the Federal Circuit,
Halliburton Energy Services was looking for relief from a
$98.1 million infringement judgment awarded to BJ Services.
Halliburton's case was that a BJ's claim including the words
"having a [concentration] of about 0.06 percent by weight"
was too imprecise to be valid. The claim, Halliburton
said, did not "particularly [point] out and distinctly
[claim]" the invention, since "about" could be a range of
any size: what percentage was part of the invention and what
was not? This question was not without merit, since the
inventors had to distinguish themselves from the prior art in
which a percentage of about 0.2 was used.
also argued that the specification failed to "enable" the
invention because it did not explain under what conditions to
measure the concentration in question or how to relate "about
0.06 percent" to the measurement technique.
original trial jury and the Appeals Court rejected these
arguments. BJ had expert witnesses and a textbook that
confirmed that the appropriate measurement technique was known
to anyone of ordinary skill in the field; Halliburton did not
call its expert to testify. Furthermore, with Halliburton's
concurrence, the trial jury was instructed to give "about
0.06" its plain and ordinary meaning. Apparently the
jury had taken high school chemistry and understood
"about" to mean within typical experimental error and to
follow rounding rules for precision.
Services prevailed and is $98 million richer for its efforts,
the whole infringement suit might have been avoided had
BJ included their textbook measurement method evidence as
a reference in their patent and defined ranges for the
concentration to show what "about" meant.
this article on line.
Tip of the Month
version of the Tip of the Month
careful when using "words of degree" in your patent,
particularly in the claims:
possible, use ranges - There is nothing
indefinite about a range but an infringer might try
operating just outside the range. Try making the range
so large that performance suffers outside the range.
Include dependent claims that narrow the
your specification to define your words of degree: -
Explain why you can't claim an exact number. Is there a
measurement precision/accuracy problem? Is the value
arbitrary within a wide band? Is it interaction with
- Explicitly state your preferred value -
Often, the preferred or nominal value for the parameter
is the object of the modifier "about". It's better to
identify the value as the nominal or preferred value and
then indicate the range over which it may vary.
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IP Links of Interest
office - Searchable database of all US Patents and, now,
published patent applications.|
The Patent Cafe - an
on-line source of interesting insights into current IP
EKMS Inc. - a
company with whom we've worked that provides a range of IP
management services including portfolio analysis, deal-making,
and process improvement.
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On-Line Patent Glossary