Why Do Patent Claims Have Unnecessary Elements?

There are “a plurality” of possible reasons why a patent claim you are looking at might seem to have unneeded claim elements that complicate assertion of the claim in litigation.

First and worst is low attorney skill. Beginners especially, but some attorneys at all experience levels, simply lack the claim drafting gift. Of course, where the working attorney is an associate at a law firm, this problem is really lack of good partner supervision. Not a surprising problem where the client pays a bargain price, but it can happen at all price points (ouch!).

But even skilled patent attorneys like a little meat on the bones of a patent claim. Imagine an invention of a new widget having an inventive gold sparkle. You could try a claim that simple: a widget having a gold sparkle. But such a claim invites a very direct validity attack in litigation—if you can find any gold sparkle in the prior art, grab it and argue it would be obvious to add to a widget… very reasonable.

One way to protect against that is to recite more widget structure in the claim language, especially if all widgets have this stuff any way: “A widget having at least one signal input and one or more signal outputs, widget memory for storing signals and values, and a processor in communication with the signal input, the signal outputs and the widget memory and transforming the input signal to generate the output signals so as to include a gold sparkle.” Effectively the same thing as a widget with gold sparkle, but it forces a much more complicated and long winded validity argument. And the longer the validity argument, the less powerful it is.

So that is one good reason for the extra unnecessary claim elements—stronger validity. But there is an even better reason to include such things in the claims: you have to. The Patent Office insists.

The Manual of Patent Examining Procedure has hundreds of rules that the Patent Office follows in processing a patent application. It is complicated and difficult to work with—hence patent attorneys have to pass a hard qualification exam to even correspond with the Patent Office. But there are some unofficial rules too. Like, we hate being embarrassed, don’t even try to do that. When having an interview with an Examiner, it is not at all unusual to hear them say: “This claim is too broad. We don’t issue claims that broad.” The attorney hearing that can get all huffy and outraged—That’s not in the rules! That’s not fair! But the reality is that the Examiner has discretionary control of a patent application. He has unlimited power to keep assembling combinations of references in obviousness rejections for much longer than you have time or money.
If the Examiner doesn’t want to issue the patent, he won’t. If the Examiner doesn’t issue the patent, it is never going to be around to be asserted in litigation. If you want a patent, you better hear the Examiner when he says we don’t issue claims that broad, and make him happy that your claims are not too broad. And claims two or three lines long—a widget having a gold sparkle—are going to look too short and too broad to many patent examiners. So adding on the extra unneeded claim elements—and hey, all widgets have this stuff any way—makes the claim look narrower. Suddenly the claim is ten or more lines long and has three or four required elements. The Examiner’s potential embarrassment alarm will not go off, and you just may get a patent issued, albeit with some unnecessary claim elements that your poor litigators will have to deal with.

So a given patent claim may have unneeded claim elements for two reasons, either poor attorney skill or high attorney skill. How do you know which reason applies? I’m not sure you can tell just by looking at one claim.