The claims of a patent define the legal rights you have regarding your invention. The rest of a patent supports the claims; i.e., to help understand the invention being claimed. For this article, let’s call the rest of the patent, which includes the figures, the specification.
It is very important to note that the specification is used to interpret the claims but it is not to be read into the claims. This is a confusing concept. In particular, what does “reading into the claims” mean? Further, where is the line between “interpreting the claims” and “reading into the claims?”
Reading into the claims means language that is in the specification but is not in the claims is added when interpreting the claim. For example, a claim includes:
- Execute an initialization process when a device is initialized; and
- Execute an in-situation process when the device is in normal operation.
The specification discloses that the initialization process includes four detailed steps when the device is initialized and how the device is initialized when power is applied. The specification also discloses that the in-situation process includes six detailed steps and includes many ways in which the in-situation process is triggered. Yet, this claim and other claims of the patent, do not include this detail.
So, reading the four detailed steps of the initial process into the claim would be improper. It would also be improper to read into the claims the way in which the device is initialized. The same is true for the in-situation process and normal operation.
It is proper; however, to use the specification to interpret the meaning of initialization, initialized, in-situation, and normal operation. For example, initialization and initialized are disclosed to occur when the device is turned on. As such, initialization and initialed can be interpreted to be regarding the turning on of the device but is not specifically limited to “power on”, which would be the case if “power on” were read into the claim. Thus, a device that does a reboot process when the device is rebooted would have a strong non-infringement argument since it can be reasonably argued that a reboot of the device is not the equivalent of turning on the device.
Further, high-level processes such as the initialization process and the in-situation process, without detail, are fairly easy to invalidate with prior art. Since the details are not claimed, it cannot be used to save the claims from invalidity.
Thus, this example claim has some serious issues, which limits its usefulness and value. Unfortunately, issues like this occur far too often in practice. So, keep in mind that, if the claims aren’t good, a patent isn’t worth much regardless of how good and detailed the rest of the patent is.
**Please note that this article is not legal advice; it is not a legal opinion; nor should you rely on it as legal advice or as a legal opinion. This article merely expresses the author’s general thoughts on a topic regarding the business of patents. Nothing in this article establishes any form of an attorney-client relationship between you, the reader, and the author of this article.
