Learning from the Grappling Dummy Patent

Grappling dummy and production thereof
US Patent No. 6,139,328 [ PDF ] [ HTML ]
Issued October 31, 2000 

This is a patent that I have used for years when teaching law students the art of patent application drafting, particularly claim drafting. As you can see from the picture, this invention is a grappling dummy. This dummy meets the utility requirement because it is used for exercise or practice by athletes training for competitive martial art or wrestling. Perhaps this is not your idea of a “useful” invention, but the utility requirement, which is one of the so-called “patentability requirements,” is satisifed if the device that is claimed in the application can be used for the purpose described. Here the inventor has quite clearly provided a useful invention, at least in so far as the patent law is concerned.

Not that it is necessary to satisfy the utility requirement, but this patent goes further, and in my opinion all patents and patent application should. The patent goes on to explain that an inventive aspect of the invention is that the weight of the grappling dummy is diminutive relative to its stature. Such a description can be helpful indeed.

On its face it is hard to immediately reach the conclusion that this “invention” is not or should not be patentable, which is why it is not going into the Museum of Obscure Patents, but there are a couple mistakes worth learning from. First, if you look at the patent you will notice that in Column 1 there is a section labeled “Background and Summary of the Invention.” This is not something that should be done! It is not approprite to describe the invention in a section labeled “Background.” The background section is where you get to explain a story and the history of inventions leading up to the invention that is the subject of the patent application. What you want to do in a good Background is discuss the problems with the prior art. Here the section also says it is part summary, so it is not all bad, but where does the Background end and the Summary start? While this might be OK in this case, best drafting practices are not to mix the two together. They serve different purposes and you don’t want an angry patent litigator dissecting something so simple as your opening paragraph.

Another problem seems to be that the claims have a large number of elements and great specificity, even in the broadest claim. That may have been necessary to get a patent issued, but is the patent effort (i.e., time and cost) worth such a narrow set of claims? The answer can be a resounding YES, or a definite NO! It all depends upon what you want to do with the patent. One this is for certain though, this patent illustrates that you can patent virtually anything if you add enough qualifiers, which is unfortunately a truth that invention promotion companies know all to well!

In the situation where the only patent that can be obtained includes claims with great specificity, such as this one, obtaining a patent is likely not going to provide the type of strong protection that one would normally associate with a patent. True, the inventor of this patent will enjoy exclusive rights with respect to that which is claimed. The question, however, is whether the exclusive rights are so narrowly defined such that competitors could engineer around the patent. If your patent covers a successful product there will be market entrants who will seek to engineer around, and if your patent allows that to happen then the return on your investment does not provide the expected yield.

The morale of the story is this — you always need to consider what you want to do with a patent once it issues. If you want it to scare off competitors and maybe encourage consumers because you can say you have a “patent pending,” then any patent could be worthwhile, depending of course on financial costs.