Think of embodiments (or technologies) as represented
by
elements of some universal set T which I shall call
Technology
Space. Then claims are subsets of T.
Inventions are
considered under the law to be synonymous with
claims. An inventor can submit
an application at time
t1 specifying an embodiment a
of
the invention together with a claim A1
covering novel
features of embodiment a, where
a ∈
A1.
Another inventor can submit an application at
time
t2, where
t2 ≥ t1,
specifying
an embodiment b of the invention together with a
claim
B1 covering novel features of
embodiment b, where
b ∈ B1
and a ∉
B1.
(The requirement that
a ∉
B1
comes from the fact that
a would otherwise be prior
art invaliding
B1.) It may be the case
that
A1 ∩ B1 ≠ ∅,
but claims
are allowed to overlap. Anyone making, losing or selling
a technology
in
A1 ∩ B1
during the period that the
patents are in force infringes both
patents, and may need to pay a license fee
to each inventor.
Now a particular process, machine, manufacture of
composition
a could exhibit more than one innovative feature.
Therefore
the inventor of a could submit a
claim for invention A2
that is also embodied by
technology a, either at time
t1
or at some subsequent time (in a continuation application).
Thus
both a ∈ A1 and
a ∈
A2. This makes sense. For
example a could be a
bicycle with an improved breaking system,
represented by claim
A1, and improved pedals,
represented by claim
A2. There is no logical
connection between improvements to
the braking system of a bicycle
and improvements to the pedals of a bicycle.
But it would not make
administrative sense for the inventor to submit separate
patent
applications for improvements to those two components of the
bicycle.
Therefore the inventor submits a patent application
specifying
embodiment a (the bicycle), claim
A1
(covering improvements to the braking system), and
claim
A2 (covering improvements to the pedals).
A competitor's
bicycle might infringe patent claim
A1 on the improvement to
the braking system
but not patent claim A2 on the
improvement
to the pedals. Or the competitor's bicycle might
infringe
A2 but not A1.
Or the competitor's
bicycle might infringe both patent claims.
One therefore arrives at a
model whereby a patent application
by the first inventor includes an embodiment
a, which
embodies all the separate inventions claimed in the
patent,
together with a sequence A1,
A2,
A3,…
An of distinct claims.
Distinct claims
correspond to distinct inventions.
And in a ‘first
to invent‘ patent system
(i.e. prior to the Leahy-Smith “America
Invents”
Act) in which priority is determined by the date on which
the
invention is made, there is no logical reason why the inventor
should be
precluded for submitting further applications for
patent claims, in a
continuation application, where these applications
are embodied in a.
Because clearly this embodiment cannot
be prior art for a patent claim made on
some invention embodied in itself.
(The above is not based on any
authoritative source: I am
simply attempting to think through the logical
implications
of what I understand to be Judge Rich's principle that
the
invention is “what is claimed”.)
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