An inventor, being the first to produce a given organization, and
desiring to patent it, may see at once a patentable variation on the
device. In other words, he makes two machines patentably different,
but both embodying his main invention. He drafts his broad patent
claim to cover both machines. In his patent he must illustrate his
invention, and he accordingly shows in the drawings the preferred
machine. The two machines represent two species of his generic
invention, and for illustration he selects the preferable species. He
drafts his generic claim to cover both species, and he follows this
with a specific claim relating to the selected species. The question
might be asked, If the broad generic claim covers the selected and all
other species, why bother with the specific claim, why not rest on the
generic claim? The answer is that it might in the future develop that
the genus was old, and that the generic claim was invalid, while the
specific claim would still be good. The infringer of the specific
claim may thus be held notwithstanding the generic claim becomes void.
But the inventor cannot claim his second species in his patent. He can
claim the genus, and he can claim one species under that genus, but
all other species must be covered in separate patents. It is even
unwise to illustrate alternative species in a patent for, in case, of
litigation, some one of the alternative species might prove to be old.
This would have the effect, of course, to destroy the generic claim,
but it might possibly have the effect of damaging the specific claim
if it should appear that the specific claim was after all merely for a
modification as distinguished from a distinct species. Were it not for
the danger of broad generic claims being rendered void by discovered
anticipations, there would be no need for claiming species, but in
view of such possibility it is important to claim one species in the
generic patent, and to protect alternative species by other patents.