Patenting for Inventors Ep. 151 - Patent Me Maybe: (Carly Rae) Jepson-Style Patent Claims

Illustration by @max_gps

Patent Me Maybe: (Carly Rae) Jepson-Style Patent Claims

Podcast Transcript:

Hello and welcome to the Patenting for Inventors podcast. My name is Adam Diament, a registered patent attorney and partner at the law firm of Nolan Heimann in Los Angeles, California. This is Episode 151: Patent Me, Maybe: (Carly Rae) Jepson-Style Patent Claims.

I’ve had lots of episodes on how to write patent claims. If you’re new to the podcast, you’ll want to go back and listen to those episodes. But briefly, the claims of a patent define the boundaries of your invention. If you claim an invention having parts A, B, and C, but someone comes along and does something similar with only parts A and B but not C, then they’re not infringing your patent, and you can’t stop them.

Writing good patent claims is essential to getting the protection you want. There are many ways to write patent claims. One way is called a Jepson-style patent claim. It’s not named after Carly Rae Jepsen, the singer with the 2011 hit song Call Me Maybe—it’s named after an inventor named Jepson from a patent case in 1917. The inventor’s name is spelled differently than the singer’s, so it’s not a typo in the podcast title. But I thought, what if I explained Jepson-style patent claims as if Carly Rae Jepsen were trying to patent something based on her song Call Me Maybe?

Before we go into the Carly Rae Jepsen style, let’s first talk about the traditional way U.S. patent claims are written.

They’re written more like a mystery novel—they hint at an innovation without revealing too much about what came before. The goal is to describe an invention as broadly as possible. Think of it like trying to patent a peanut butter and jelly sandwich before anyone had come up with the peanut butter and jelly sandwich, but other kinds of sandwiches had existed before. A traditional U.S. patent claim for a peanut butter and jelly sandwich might read something like this:

“An edible product comprising a first bread slice, a second bread slice, and a mixture of peanut butter and jelly disposed between the first and second bread slices.”

Notice what this claim doesn’t do—it doesn’t admit that sandwiches existed before, and it doesn’t specifically say what the innovation is.

Now let’s look at how this might have been written if it were a Jepson-style claim. A Jepson-style claim is like a history lesson with a plot twist—it explicitly admits what’s already known. A Jepson-style patent claim for the same sandwich might read like this:

“A sandwich having a first bread slice and a second bread slice, the improvement comprising a mixture of peanut butter and jelly disposed between the first and second bread slices.”

See the difference? The first half of the claim concedes that sandwiches already exist, and you’re just stating what your improvement is. Then, it specifically says “the improvement comprising,” and the stuff that comes after this phrase is what you are claiming as the inventive part.

This is why, at least in the United States, this is not a popular way to write patent claims. In the U.S., if you’re writing claims like this, it’s like you’re giving up your Miranda rights—anything you say can and will be used against you. In the U.S., you don’t want to admit anything about what your patent isn’t; you just say what your invention is, and it’s up to the patent examiner to determine whether it should get a patent. It’s not the inventor’s job in the claims to spell out exactly what came before and what the improvement is. That’s why most U.S. patent attorneys prefer writing in the traditional claim style—to avoid giving up too much ground. In Europe, however, the Jepson claim style is more common.

To see how this applies to Carly Rae Jepsen-inspired patent claims, let’s take a look at two versions of a claim based on Call Me Maybe. The traditional claim keeps things broad and open-ended. For example:

“A method of getting your crush to fall in love with you, comprising the steps of: 1) throwing a wish down a well, 2) providing your phone number to a crush, 3) asking the crush to call you maybe, 4) answering your phone when the crush calls you, and 5) setting up a date to meet the crush.”

The inventive part may be just throwing a wish down a well, just like the song says in the beginning. But in the traditional way claims are written in the U.S., this claim doesn’t admit that giving out your number is old news, or that asking someone to call you, answering your phone, or setting up a date is old news. It’s up to the examiner to determine whether all the parts of the invention already exist. That old news is called “prior art” in patent language.

If we were to write this as a Carly Rae Jepsen-style claim, it would look a little different. In this format, we’d first acknowledge the prior art—that is, the fact that people have been giving out their numbers forever, asking someone to maybe give them a call, answering their phone, and setting up dates. You state all of that upfront as things that aren’t innovative. Only then do you describe what makes this version innovative. So, a Jepson-style claim might read something like this:

“A method for getting your crush to fall in love with you, wherein the method includes providing your phone number to a crush, asking the crush to call you maybe, answering your phone when the crush calls you, and setting up a date to meet the crush, the improvement comprising throwing a wish down a well.”

This version admits that giving out your number isn’t new, asking someone to maybe call you isn’t new, answering your phone isn’t new, and setting up a date isn’t new—but it claims that the real innovation is throwing a wish down a well. We know that’s what the inventor is saying the invention is because the claim specifically includes the words “the improvement comprising.” It’s only the stuff after the words “the improvement comprising” that the patent examiner has to consider as being inventive, because you already admitted that the other elements aren’t new.

Now, maybe you’re thinking it doesn’t matter how you write the claim because, in the end, the patent will only be granted if the combination of everything is new and non-obvious. You could be right in many cases, but there may be complicated situations where it’s unclear what the prior art actually disclosed and what it didn’t. So why admit to anything if you don’t have to? It’s the American way—don’t admit to anything unless you’re required to.

Now, in real life, you probably wouldn’t be able to patent either claim—I’m just providing an easy-to-understand example of the format differences.

And I know, this is crazy, but here’s my number, so call me maybe at 424-281-0162 if you need assistance with your patents, trademarks, or other intellectual property.

Until next time, I’m Adam Diament, and keep on inventing.