Less is More
Never is the old adage ‘less is more’ truer than in the field of intellectual property (IP) protection.
Whether you are seeking to register a trade mark, to obtain patent rights, or to register a design – less is more!
During the last ten years working in the IP field, I find that this is often the hardest concept to get across to our clients. People naturally think that the more they write, or show, the greater the scope of protection their IP provides. But in fact the opposite is often the case. In this article I will simply run through an example in each of the three main areas of IP – trade marks, patents and registered designs – to help explain this principle.
This concept is perhaps most easily understood in the context of trade marks. If you register a stylised version of the mark BERTS BANANA SKINS for your new range of mobile phone covers, your scope of protection will be much less than if you only register the mark BANANA in plain text. The reason that the shorter and plainer mark provides a broader scope of protection is that the registration will be infringed by anyone who uses the word banana (or even words that sound similar) in relation to mobile phone covers. Whereas the longer, and stylised version of the mark will only be infringed by someone who uses all or most of the words, or similar sounding words, and who uses a similar form of stylisation. Therefore, while you may initially think that the more detail you put into the mark in your trade mark registration the greater the protection you have, in fact the opposite is true.
The same principle applies to the claims of a patent. While it is beneficial (and necessary) to describe your invention in great detail in the description section of your patent, and to mention variations in detail, the less words you include in your patent claims, the broader the protection your claims will provide. Clearly there is a limit here, if too few words are used the meaning of the claim may not be clear, and the claim may have no value at all.
Inventors naturally tend to describe as many clever features of their invention as possible in their claims, thinking that this makes their claims better. However, a patent claim is only infringed by a product that incorporates all of the essential features recited in a patent claim. For example if a patent claim reads: “a hovercraft having a ducted air distribution system wherein the ducts are steerable using hydraulic actuators”, the claim will not be infringed by someone who makes or sells a hovercraft in which the steerable ducts are ‘manually’ controlled. When drafting patent claims it is very important to re-read the initial drafts of the claims and to prune out unnecessary wording, or to move the removed wording into dependant claims.
The principle also applies to registered designs. You may say that a registered design is simply a set of drawings of an article, how can you include too much detail. In many cases this is true, but always ask yourself if the design of the entire article is novel or important. A classic example is a switch panel. While it is necessary to provide front and back views of the switch panel (among others), the portion of the switch panel that warrants protection may only be the front view. Time and skill may have been used to produce a classy looking front, however the back may be purely functional. While the back view must be provided in the registered design, the Statement of Novelty can be worded to clearly state that the novelty of the design resides only in the shape and configuration of the front of the switch panel.
While it may not be obvious at first, this limitation in the Statement of Novelty actually increases the scope of protection provided by the registered design. By limiting the registration to only the features of the front of the panel, the design registration can be used to stop the sale or manufacture of competing switch panels irrespective of whether the back of the competing switch panels looks like the back of your switch panel or not.
While the concept of ‘less is more’ is not intuitive, it is relatively easy to understand once you have thought about it.