Patent Claiming Strategies
Sally Gillis, Adv.
When talking about claiming strategies, we often quote the Indian legend of the Six Blind Men and the Elephant.
The following is John Godfrey Saxe’s (1816-1887) version of the famous Indian legend:
Six Blind Men and the Elephant
It was six men of Indostan To learning much inclined, Who went to see the Elephant (Though all of them were blind), That each by observation Might satisfy his mind.
The First approached the Elephant, And happening to fall Against his broad and sturdy side, At once began to bawl: “God bless me! but the Elephant Is very like a wall!”
The Second, feeling of the tusk Cried, “Ho! what have we here, So very round and smooth and sharp? To me `tis mighty clear This wonder of an Elephant Is very like a spear!”
The Third approached the animal, And happening to take The squirming trunk within his hands, Thus boldly up he spake: “I see,” quoth he, “the Elephant Is very like a snake!”
The Fourth reached out an eager hand, And felt about the knee: “What most this wondrous beast is like Is mighty plain,” quoth he; “‘Tis clear enough the Elephant Is very like a tree!”
The Fifth, who chanced to touch the ear, Said: “E’en the blindest man Can tell what this resembles most; Deny the fact who can, This marvel of an Elephant Is very like a fan!”
The Sixth no sooner had begun About the beast to grope, Than, seizing on the swinging tail That fell within his scope. “I see,” quoth he, “the Elephant Is very like a rope!” And so these men of Indostan Disputed loud and long, Each in his own opinion Exceeding stiff and strong, Though each was partly in the right, And all were in the wrong!
So often in theologic wars, The disputants, I ween, Rail on in utter ignorance Of what each other mean, And prate about an Elephant Not one of them has seen!
How is this poem related to patents? Well, a good patent attorney should always look to see the different ways to describe the invention.
For the elephant of the story, we could prepare the following claims:
- An animal with a snake at its front end.
- An animal whose side is built like a wall.
- An animal with a rope at its rear end.
Each claim describes the elephant yet each claim recites a different aspect of the ‘inventive’ elephant. Similarly, imagine your product. You can claim it in the straightforward way, or you can look at it from its different “sides” and claim each of those views as well.
At Eitan Mehulal Sadot, we usually look both at the technical invention and the marketing invention. Your marketing department will describe the invention very differently than your technical folks and sometimes, that viewpoint also points to an invention.
We might also look at the operation of the invention (e.g. it processes data in a certain way), or just at its achievements (2 times faster than a prior art unit).
We might consider only a small portion of the entire invention to be worthy of a claim.
In short, we will consider as many sides of the invention as we can.