This blog post explores how inventors can effectively draft patent claims to broaden the scope of protection for their inventions.
If someone could easily copy and sell an invention after an inventor has invested time, capital, and effort to bring it to market, no one would invent anything. The patent system exists to prevent this. The patent system is a framework where the state exceptionally grants an exclusive monopoly in exchange for the public disclosure of the invention. This disclosure facilitates improvements and further inventions, thereby contributing to industrial development. In other words, it legally grants inventors exclusive rights to their invention for approximately 20 years to encourage invention, while also making the invention publicly available. However, while patents grant long-term exclusive rights, they involve complex procedures and mechanisms regarding registration requirements and the exercise of rights after registration. Therefore, simply claiming to have invented something does not guarantee patent registration for every invention. Even if registered, it may still be possible to manufacture and sell imitations within the bounds of the law. To prevent this, we will examine the requirements for patent registration and explore, through examples, what kind of patent should be obtained to maximize protection for one’s invention.
Before examining patent requirements, we will first review how inventions are expressed. An invention is a creation of technical ideas utilizing natural laws; it is a highly abstract, invisible, intangible technical concept. Therefore, when filing a patent application, we must draft and submit our invention in the specification in the form of claims. These claims serve as the basis for judging patent requirements and later defining the scope of rights. In other words, the content of the claims becomes the very invention itself. We do not submit the invention itself; instead, the claims in the specification are the sole basis for judgment, regardless of the invention’s nature. Thus, the importance of claims cannot be overstated. Now, let’s explore how to draft claims.
To obtain a patent, one must draft claims that meet patent requirements, which fall into three broad categories. First, the person eligible for a patent. Second, the invention eligible for a patent. Third, the formal requirements for a patentable application. Among these, the formal requirements for a patentable application fall under the purview of the patent attorney handling the patent application. Since the person eligible for a patent is generally not a major issue, we will focus on the patentable invention. While there are several requirements for a patentable invention, we will explain the most crucial ones inventors must know: novelty and inventive step. Novelty means an invention that has not been disclosed domestically or internationally prior to the filing date. In other words, only truly new inventions can be registered; inventions disclosed overseas are also ineligible for registration. However, it is not only completely identical inventions that cannot be registered; improved inventions are registrable. Inventive step means that only inventions that represent an advancement over previously disclosed inventions can be registered. Here, “previously disclosed inventions” refers to inventions disclosed domestically or internationally, just as with novelty. Whether an invention represents an advancement is judged based on the state of the art in the relevant technical field, as understood by a person skilled in the art. Therefore, an improved invention that adds an advancement over the prior art can be registered.
By drafting claims that satisfy both novelty and inventive step, one can register their invention. But can one then exclusively use their patented invention? Analyzing this further: Can I use my patented invention? Can I file an injunction against others selling imitations? The answer to both questions is “No.” This is an area where inventors often misunderstand, requiring a deep understanding of patents. It would be very frustrating to invest money and time in obtaining a patent registration only to find you cannot monopolize your invention. To avoid this situation, we need to understand the scope of patent rights.
The scope of rights refers to the range within which you can exercise the rights of your registered patent, determined by the claims examined earlier. Korean patent rights adopt a peripheral limitation approach. This means rights are granted only to the extent that all components constituting the invention are included. Conversely, if any one component of my invention is omitted or slightly modified, it becomes possible to design around the patent. For example, suppose the claim is written as ‘a bicycle comprising a wheel, handle, body frame, and pedal’. Then, the scope of my invention’s rights extends to all ranges including the wheel, handlebar, body frame, and pedal. Therefore, if someone adds a light to this and sells it, they infringe on my patent rights. However, if I drafted the claim as ‘a bicycle comprising a wheel, handlebar, body frame, pedal, and light’, then if someone sells a bicycle excluding the light, it would not constitute infringement.
Let’s consider another example. Suppose you invented a truly delicious ox head soup. How would you draft the claims most advantageously? Suppose you filed patent claims for ‘a dish consisting of ox head meat as a topping in broth made from simmered ox bones, served with minced seasoning.’ If someone made a similar product using meat from another part instead of ox head meat, would they infringe your patented invention? If they used pork or chicken instead of beef, or clear broth instead of minced seasoning, this would not infringe your patented invention. Therefore, drafting the claim as ‘a food consisting of animal meat served as a topping in broth made by simmering animal bones’ would be most advantageous, as it provides the broadest scope of protection. While the previous example is merely an arbitrary illustration, such situations are common in practice. There is a real case where someone invented a highly patentable stethoscope, but the claim specified the shape of the stethoscope head as square, a feature that did not affect the invention’s utility. Later, when a competitor changed only the shape of the stethoscope head to triangular, oval, or round and sold it, the patent holder could not assert infringement, rendering the patent useless.
Now, let’s address the first question mentioned earlier. The first question is: Can I use the patented invention? In this case, it may not be possible under certain circumstances. For example, suppose Party A registers invention A first. If Party B later files a patent application for A+B, it could be registered if it meets the requirement of inventive step. However, if Party B actually implements their own invention, it falls within the scope of rights of Party A’s prior registered patent invention due to the principle of peripheral limitation explained earlier. Consequently, Party B’s invention infringes on Party A’s invention. In this case, even though Party B obtained registration, they cannot implement their own invention. That is, registration and the ability to exercise rights are separate issues; one can obtain registration yet be unable to enforce their rights. Does this mean B has no need to register their invention? Not necessarily. In this case, since B’s invention is more advanced than A’s, demand for A’s invention in the market will decrease. Therefore, while A may wish to sell B’s invention, doing so would constitute infringement. At this point, A and B could enter into a contract allowing each other to use their respective inventions. Consequently, B gains a need to register such an invention.
Next, let’s address the second question. The second question is: Can an injunction be sought when others sell imitations? This may also not be possible. As seen earlier, if patent claims are drafted narrowly, circumvention means will always exist.
So, what kind of patent should we obtain? To efficiently utilize one’s own invention in the market and prevent infringement by others, it is first necessary to set the scope of rights for one’s own invention as broadly as possible. That is, when drafting claims in the patent specification, one should avoid including components unnecessary to the invention. Only the essential elements of the invention should be included in the claims, and they should be drafted to cover only one’s own invention. Claims should be centered on the parts where the invention achieves its effect, and thorough review is essential to ensure competitors cannot easily modify other parts.
In conclusion, the patent system is a crucial institution that promotes invention by granting inventors exclusive rights, thereby contributing to industrial development. However, due to its intricate and complex procedures and mechanisms, inventors must exercise caution during the patent application process. To maximize protection for their technology, inventors should carefully draft the claims when preparing the patent specification and set the scope of rights to ensure their invention can be effectively utilized in the market.
