What Does the Word "Comprising" Mean, and Why Should I Care?
August 2001
In their intellectual property law column,
Sanford E. Warren Jr. and Kenneth T. Emanuelson examine the negative nature
of patent rights and the distributed nature of patent right ownership, providing
entertaining examples of each.
by Sanford
E. Warren Jr. and Kenneth T. Emanuelson
Winstead Sechrest
& Minick
In general, intellectual property is fairly ethereal stuff. It's all about
the ownership of things you can't see, smell, touch, or feel. You can't literally
carry around your patent rights in your pocket or the backseat of your car.
(Then again, storage is pretty much a cinch, and a bad patent claim generally
won't get lost behind the cushions and smell up your whole car on a hot Summer
day.)
Legal intangibles are tough enough to get a handle on even without the added
complexities piled on by the innumerable intellectual property technicalities
that our laws have created over the last 225 years. Unfortunately for the general
public, intellectual property law has, over the centuries, developed its own
independent rules, some of which jibe pretty well with the rest of the world's,
and some of which don't really seem to fit at all, at least at first glance.
Although each branch of intellectual property law has its own set of particular,
and sometimes weird, rules, probably no area is more rife with idiosyncrasies,
picky rules, and peculiar concepts than the patent law. We patent attorneys
speak in what seems like our own arcane language, using words like "comprising"
as if it were going out of style (someone forgot to tell us that it did a long
time ago), writing extremely long sentences violating all rules of proper English
(at least we include a lot of semicolons), and using the word "said" when any
normal person, or even a normal attorney, would simply use "the." Believe it
or not, we generally have very good reasons for doing these things.
Demystifying Patent Terminology
As a patent attorney, it is often my job to translate the sometimes bizarre
set of patent terminology and rules into English for the benefit of my non-lawyer
clients. Unless my client is an attorney, or at least fairly well-versed in
the law, responding to his question in patent-ese won't help him much in making
his decisions in the real world. For example, I could tell a client concerned
about infringement that "One or more of the dependent claims may be valid and
not anticipated by the prior art, but the effect of prosecution history estoppel
will act to circumscribe their scope to their literal range, thereby eliminating
any range of equivalents" and leave him no better off than he was before he
came to me for advice.
Unless the client has experience in the patent law, I might as well give
him an answer in Gaelic. Although some attorneys may believe that their understanding
of legal jargon provides them with an "edge" over their clients, I believe that
my relationships with my clients will be much closer and stronger where my clients
understand what I'm doing and can have a meaningful role in the legal decision-making
process.
In this article, and a few more to follow, I am going to attempt to provide
the reader with a greater degree of insight into some of the basic concepts
of patent law. Although a thorough grasp of the many subtleties and particularities
of patent law can take years, or even decades, to attain, the fundamental concepts
are really not that difficult to understand. It is my sincere hope that the
broad outlines I lay out in these articles will encourage some of my readers
to take a greater interest in the details of patent law. For others, I hope
that they will at least serve to demystify some of the quirkier concepts and
make the whole subject just a little more palatable.
Addressing Patent Concerns and Questions
Most patent questions from my clients fall into one of three categories.
Often, a client comes in with an invention and wants to know if he can get a
patent on it. A second group includes those clients who already have patents
and want to stop their competitors from building knock-off products. A final
group includes those clients who are actively producing products and have been
accused of patent infringement by a competitor. The questions raised by each
of these groups are related, but distinct. Accordingly, I have decided to deal
with them separately.
With respect to the first group, a client will often come in the door carrying
an odd-looking contraption and want to know whether he can get a patent on it.
In general, the answer is, "Probably so." Provided that the person sitting in
my office developed this contraption, he can most likely get some form of limited
patent protection for it.
My answer, however, is probably not of much use to my client. What my client
really should have asked was whether he can get patent rights in his invention
that will meaningfully further his business goals. The answer to that question
is generally that the client can likely acquire certain limited patent rights
that will further certain of his business goals. Then the inevitable follow-up
question arises: "How much will it cost?" The prudent client will weigh the
cost of those rights in fees against some estimate of the value of those rights
in profits and decide accordingly.
Negative and Positive Patent Rights
In order to determine the value of any patent rights likely to be received,
it is important to first understand the nature of patent rights themselves.
The popular conception of a patent conceives of a formal paper giving the inventor
the exclusive right to make, use, and sell the invention described in the patent.
This popular conception is wrong on two fronts: (1) a patent doesn't really
give anyone the right to do anything (except
sue), and (2) the invention described in
the patent doesn't determine the scope of the patent rights. I will deal with
point (1) in this article and follow up with point (2) in the next.
With respect to point (1), patent rights are purely negative rights, and do not carry with them
any positive rights to do anything except
to sue those infringing on the rights. In other words, a patent provides you
with a form of veto power over certain actions by others, but it doesn't necessarily
empower you to act yourself. This is in stark contrast to more traditional forms
of property, such as real estate, which carry both positive and negative rights.
If you're in legal control of your home, you're legally empowered to enjoy
the home as you see fit (a positive right) while also being legally empowered
to eject other persons from the premises (a negative right). If home ownership
were the same as patent ownership, you might in certain cases be able to exclude
others from your house, but not be able to go there yourself.
A Prehistoric Analogy
The seemingly strange, and yet relatively common, situation where an inventor
can't practice his own patented invention occurs where the inventor's contribution
builds upon some earlier invention that is still protected by an enforceable
patent. As an illustration, I often use the example of a three-legged stool.
Sometime a long time ago, someone, probably a caveman, got tired of sitting
on the ground all the time. Necessity being the mother of invention, this person
took a flat piece of wood and stuck three sticks to the backside of it and made
the world's first three-legged stool. I doubt they had a patent system back
in those days, but let's pretend that they did, and let's pretend that this
first caveman inventor, who we'll call "Caveman 1," received a patent #1 titled
"Ooga Mooga Ugh," (which loosely translates as "Three-Legged Stool.") Patent
#1 claims, "A stool comprising a seat and three legs attached to the seat."
Let's suppose that the "Ooga Mooga Ugh" became an instant hit and took the
world by storm. Soon, Caveman 1 becomes a captain of industry and puts the manufacturers
of dirt mounds and vaguely chair-shaped rocks completely out of business. Owing
to his patent, Caveman 1 is the only person empowered to build the "Ooga Mooga
Ugh" and builds a huge monopoly empire.
Most people are fairy happy with Caveman 1's contribution to the world of
technology, but after a while, a certain limitation in the design becomes apparent.
One day, one of Caveman 1's loyal customers falls asleep in one of the new stools.
Startled by the sound of a Tyrannopotamus in the bushes, the sleeping caveman
(we'll call him Caveman 2) falls over backwards off the stool and hits his head.
Whether through natural ingenuity or owing to hallucinations induced by the
head blow, Caveman 2 decides that the "Ooga Mooga Ugh" can be improved. Grabbing
a couple of bones and a vine, Caveman 2 builds a back for his stool, thereby
creating what he calls the "Ooga Booga Wooga." Caveman 2 promptly gets patent
#2 on the "Ooga Booga Wooga." Patent #2 claims, "A stool comprising a seat,
three legs attached to the seat, and a back attached to the seat."
Caveman 2 is ready and able to begin manufacturing when he receives a stone
tablet from Caveman 1's thugs. It reads:
Our client owns Patent # 1 for "Ooga Mooga Ugh." Your Ooga Booga Wooga
infringes Patent # 1. Stop or else.—Onebrow, Gump & Hunchback, L.L.P.
Under these facts, even though Caveman 2 owns a patent on his new stool,
he cannot make, use, or sell any of his patented inventions without the permission
of Caveman 1. This is true due to the fact that even though Caveman 2 has created
a new invention in his "Three-Legged Stool with Back," his invention cannot
be made without necessarily incorporating Caveman 1's invention of the "Three-Legged
Stool."
So, in light of the above, does this mean that Caveman 2's patent is worthless?
Not at all. Properly utilized, Caveman 2's patent can actually be very valuable.
While it is true that Caveman 2 can't manufacture his invention without the
permission of Caveman 1, it's also the case that Caveman 1 can't manufacture
any backed three-legged stools without the permission of Caveman 2.
Conceivably, many of Caveman 1's customers would prefer to have a back on
their three-legged stools. In this situation, Caveman 2 can leverage his patent
rights—which constitute, in a sense, veto rights against Caveman 1—to his own
advantage. He may negotiate a monetary license with Caveman 1, allowing him
to make the invention in exchange for money, or he may wish to negotiate a cross-license
with Caveman 1, whereby each party grants the other party the right to make,
use, and sell the other party's patented invention. If Caveman 2 is uninterested
in the manufacturing business, he may wish to sell his patent outright to Caveman
1. Accordingly, it can be seen that Caveman 2's patent can be extremely valuable,
even though it grants him only negative rights.
Co-Inventor Rights
A closely-related, and equally quirky, aspect of the patent law relates to
the rights granted to co-inventors. In a purely theoretical sense, the negative
rights granted by a patent could be allotted to co-owners in any number of ways.
One possibility is that each co-owner could have an absolute veto right against
every other person in the world except for the other co-owners. Under this scheme,
any person wishing to practice the invention would need the permission of each
and every co-owner to do so. If he didn't have unanimous permission, any of
the co-owners could sue him at will.
Another possible scheme for the allotment of rights among co-owners is that
in which no co-owner has any veto right against any person absent the unanimous
agreement of the other co-owners. Under this scheme, any person wishing to practice
the invention would need the permission of only one owner to do so. So long
as one co-owner consented to such practice, the other co-owners would be completely
helpless to stop him.
Other intermediate schemes could be contemplated, including a "majority rule"
scheme, major and minor inventors, or the like, but each of the above "unanimous"
schemes represents the two outer extremes.
In the United States, the latter scheme of patent ownership is employed.
That is, any person wishing to practice an invention need only acquire the permission
of one of several co-owners to do so. So, for example, in the case of a patent
having five owners, four of which are rabid Armani-clad capitalists and the
fifth of which is a "peace and love" type individual in tie-dye and Birkenstocks,
the Armani set would be helpless to stop the latter from granting the invention
to the public at large, to or any subset of humanity he may choose at his will.
It can be seen here that as there are more co-owners, there is an ever-increasing
chance that one or more of the owners will, for one reason or another, refuse
to help in enforcement efforts. Accordingly, an increase in the number of co-owners
of a patent tends to decrease the chance that the patent will ultimately be
successfully enforced.
In the real world, patent rights are generally transferred from inventors
to the corporations that employ them. A given patent, even one that is the product
of numerous individual inventors, will generally be wholly owned by a single
corporation, which is a single legal entity even though it may have millions
of shareholders. In those cases, decisions as to patent enforcement are under
the exclusive control of the corporation's officers, rather than the individual
inventors and shareholders. Patent ownership will sometimes be shared by two
or more separate companies in a joint venture arrangement, but owing to the
enforceability issues discussed above, such shared ownership is often best avoided.
Conclusion
To sum up, rights in a patent represent only negative rights, and the grant
of a patent on an invention does not necessarily mean that the patent owner
can practice the invention claimed. Furthermore, enforcement of these negative
rights against members of the public requires the unanimous consent of the owners
of the patent, so that enforcement of a patent having multiple owners can be
difficult, if not impossible.
While this article has highlighted certain quirky principles of patent law—the
negative nature of patent rights and the distributed nature of patent right
ownership—these are by no means the only, or even the most important ones. The
next article will cover an equally-important principle: determination of the
scope of the negative right that the patent holder can legitimately claim against
the public.
Ken Emanuelson is an associate with the intellectual property section of Gardere & Wynne, LLP.
His clients range in size from small startups to established Fortune 500 companies,
in various areas of technology, from online commerce to aerospace. His regular
practice includes client counseling in all areas of intellectual property law,
patent and trademark drafting and prosecution, litigation, licensing negotiation,
and infringement analysis. In his prior career as an engineer, Mr. Emanuelson
worked for Texas Instruments and Ford Motor Company. His engineering experience
included work in semiconductor processing, factory automation, microwave communications,
aerospace materials, automotive technology, and superconductive ceramics. Mr.
Emanuelson is a graduate of the University of Texas School of Law, where his
course of study focused primarily on patent, trademark, and copyright law. He
also holds a BS degree in mechanical engineering from the University of Arkansas.
He can be reached by email at .
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