“drafting Broad Or Narrow Claims: Considering Technological Trends And Market Demands” – This is the first in a two-part blog series on the claim set of your patent application. (Read Part Two)
When creating a claim strategy for a patent application, many startup owners often think that broader claims are always better. In fact, there are many good reasons for pursuing extensive records. For example, narrow claims may allow competitors to “invent” your patent – giving competitors the opportunity to use your invention without infringing your patent.
“drafting Broad Or Narrow Claims: Considering Technological Trends And Market Demands”
Let me say this up front: At The Patent Law Firm, we like to pursue an aggressive litigation strategy for our clients. We do it often. But chasing the broadest reports isn’t always good.
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In fact, if you’re not careful, chasing claims that are too broad can cause lasting damage to your patent application. In the table below, we have described the possible consequences.
If the scope of your claim is too broad, you may accidentally get your patent application rejected for not meeting one or more of the legal requirements for patentability.
When you file broad applications, the examiner will search for a broad area of prior art—making it more likely that your application will be denied for unnecessary (and often avoidable) reasons.
For example, if you are looking for a food processor with a new blade structure, the inspector will focus on the original art related to food products. But if you expand your applications to include a new blade structure to
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Type of device, the reviewer will look at a wide variety of original images unrelated to food products (like, say, lawn mowers).
So technology companies should consider whether the potential value of a wide application area has the risk of encountering many types of prior art.
U.S. patent law requires that the specification – that is, the description written in your patent application – should enable a person of ordinary skill in the field to be able to carry out your invention.
So if the examiner believes that your description does not provide enough information to allow you to follow the scope of your application, the examiner may reject the application.
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The likelihood of this happening increases when you submit extensive applications. This is because extensive applications often require a large degree of provisioning.
Finally, if your statements are too broad, the examiner may reject the application on the basis that it amounts to nothing more than a “vague theory.”
In fact, abstract ideas are not patentable subject matter – so the examiner may reject your application even if there is no relevant prior art.
Unfortunately, the copyright office has not established a clear standard for determining what constitutes “absurd opinion.” But in general, broad narratives are more likely to be analyzed as abstract ideas.
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In general, yes: you can usually beat this rejection by reducing your claims during the prosecution. But it’s not as easy as you might think.
Once a reviewer has opened the Pandora’s box of original art or considered the design to be an abstract concept, it can be very difficult to reverse it. According to our original example, adding the phrase “food processor” to your claim for a new blade design will not convince the examiner to remove his reference to the lawnmower.
In addition, an impromptu prosecution process can be harmful to the final patent because all the arguments you raise during the prosecution can be used against you when you assert the patent.
For one, you may need to present complex and detailed arguments during the prosecution. This means that your patent attorney will have to spend more time developing arguments and writing responses.
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Alternatively, the USPTO may issue other office actions. Each “level” of examination comes with associated legal fees as well as patent office fees – so the longer your application progresses, the higher your costs will be.
After the original patent application is filed, it is very common to file an amendment that reduces the claims (or to file a “development” application with fewer claims).
To prioritize the filing date of the original patent application, the limited claims must be sufficiently defined in accordance with the specifications of the original application.
But if the claims of the original patent application were too broad, the original utility specifications may not adequately describe the limited invention in sufficient detail. In that case, your small claims won’t enjoy the benefits of an earlier filing date for new or added information – meaning you may have to drop your small claims and lose the ability to patent an important example of your invention.
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Successfully enforcing a patent depends on how the patent is interpreted in court – but comprehensive reports make it easier for your patent to be interpreted in ways you didn’t intend.
Also, when you assert a patent, the infringer will almost certainly try to show that your patent is invalid because of some prior art that the examiner did not consider. Extensive reports are vulnerable to these types of problems because, as mentioned earlier, they can be subject to many types of prior art.
In 2012, the America Invents Act (AIA) introduced a new USPTO process called inter partes review (IPR). In fact, by filing an IPR challenge, your competitors now have the option of invalidating your patent before you decide to use it.
Patent applications with broad claims are easier to invalidate through IPR because – similar to the point above – they are vulnerable to misinterpretation or invalid prior art.
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Aggressive reports are an important part of any installation strategy. Another sensible way to draw a line is to avoid looking for reports that are so broad that they go beyond your industry, because in those cases, you may come across all kinds of unexpected art and unnecessary first.
By narrowing down applications to your industry or technology sector, you cover the most important area for your business – namely, your products and services, and those of your competitors. There are certainly situations where it makes sense to pursue patents that cover other industries, but you have to think about doing it right.
If you are looking for broad claims in your application, make sure you include a lot of limited conditions that rely on “backup” to prove your legal right. That way, even if one of your broader claims goes wrong, your dependent claim can still stand.
You need to tailor your claim strategy to the unique business objectives of each patent application. Watch this space for the second blog post in our series, where we’ll discuss the pitfalls of invalidating patent applications that are too narrow.
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Michael K., Ph.D., is the principal and founding member of the firm. He specializes in developing comprehensive, growth-oriented IP strategies for early stage technology companies.
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Don’t miss a new article. Patent Law’s Patent Law News + Insights blog is designed to help people like you build smart, risk-free patent strategies that protect your intellectual property as your business grows. Sign up to receive email updates every time we publish a new article — don’t miss out on important information to help your business be more successful. Today is part four of the Blackwood Cardigan Sewalong! We’ll wrap up the performance tweaks section today with some narrow and broad tweaks. Tomorrow we will be cutting out the fabric and getting down to sewing for real!
Do you need a narrow or wide shoulder replacement? Signs of this change can be subtle. First, know where your natural shoulder is. It should be right where your arm meets your shoulder socket, and you can usually find it by moving your arm up and down and feeling around for the ‘hinge’. Now, try on your muslin and check your fit. Does the shoulder seam sit away from your natural shoulder? Do you see the pull lines from the shoulder seam? You may want to try a wider shoulder shift. Is the shoulder seam lower than your natural shoulder? Do you have other fabrics attached to the inside of the arms or sleeves of the bag? You might want to try changing the narrow shoulders.
If you don’t make muslin for your project, you can try making one first, like a t-shirt, and check the fit there. Then compare that sample piece with the piece for your next project to see what changes may need to be made.
To know how much I should change, I like to watch it visually. When using the muslin, pay attention to the distance from the shoulder seam to the seam. This is your adjusted amount.
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Note: Also look for other signs of withdrawal