This is the first in a two-component blog series on the scope of your patent application’s claim collection. (ReadPart Two)
When emerging the case strategy for a patent application, many startup owners commonly assume that bigger claims are constantly much better. Without a doubt, there are many great strategic factors to go after wide clintends. For instance, narrowhead claims could allow competitors to “architecture around” your patent — offering competitors an possibility to use your development without technically infringing your patent.
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Let me say this upfront: At slrfc.org Patent Law Firm, we love pursuing anaggressive case strategyfor our clients. We execute it frequently.But pursuing the broadest feasible clintends is not always the right relocate.
In reality, if you’re not mindful, pursuing overly broad claims might also cause lasting damage to your patent application. In the list below, we’ve outlined the potential after-effects that might follow.
1. HIGHER CHANCES OF REJECTION
If your case set is overly broad, you might inadvertently cause your patent application to be rejected for not satisfying one or more of thelegal requirements for patentcapacity.
BROADER RANGE OF APPLICABLE PRIOR ART
When you file wider clintends, the examiner will search for a wider scope ofprior art— making it more most likely for your application to be rejected on unimportant (and frequently avoidable) grounds.
For instance, if you’re claiming a food processor tool via an innovative blade framework, the examiner will certainly a lot of likely focus on prior art related to food processors. But if you increase your clintends to include the innovative blade framework inanyform of tool, the examiner will look at a much broader variety of prior art that has nopoint to execute via food processors (prefer, say, lawn mowers).
So technology suppliers must think around whether the potential value of a more comprehensive insurance claim scope is worth the hazard of encountering a more comprehensive selection of prior art.
UNITED STATE PATENT LAW: ENABLING DISCLOSURE
U.S. patent lawneeds that the specification — that is, the written description in your patent application — permit a perkid via plain ability in the area to be able to bring out your development.
So if an examiner believes that your specification doesn’t carry out sufficient permitting detail relative to the scope of your clintends, the examiner deserve to reject the application.
The likelihood of this happening increases when you file wider clintends. This is because wider claims mostly require a higher level of permitting disclosure.
UNITED STATE PATENT LAW: THE ABSTRACT IDEAS EXCEPTION
Finally, if your claims are also broad, the examiner is more most likely to reject the application on the basis that it clintends nothing more than an “abstract principle.”
Basically, abstract concepts are notpatent-eligible topic matter— so the examiner deserve to reject your application also if there’s no pertinent prior art.
Unfortunately, the patent office hasn’t establimelted a clear typical to determine what is or isn’t an “abstract principle.” But in basic, wider claims are more most likely to be scrutinized as abstract principles.
CAN WE OVERCOME THESE REJECTIONS DURING PROSECUTION?
Usually, yes: you can regularly get rid of these rejections by narrowing your clintends throughout prosecution. But it’s not as straightforward as you could think.
Once the examiner has actually opened a Pandora’s box of prior art or construed the innovation as an abstract concept, it have the right to be very difficult to undo. To follow up from our original example, including the phrase “food processor” to your case for the innovative blade structure won’t constantly convince the examiner to withattract their lawn mower referral.
Furthermore, a drawn-out prosecution procedure can be damaging to the final patent because all the debates that you submit during prosecution can be used against you as soon as you enpressure the patent.
2. INCREASED COSTS
In order to attend to the rejections noted above, you may incurhigher legal fees.
For one, you might need to provide more complicated and in-depth debates during prosecution. This indicates your patent counsel will certainly need to spend even more time on arising arguments and drafting responses.
For an additional, the USPTO may issue even more office actions. Each “round” of examination comes with some associated legal fees and also patent office fees — so the even more “rounds” your application goes with, the better your prices will run.
3. LACK OF SUPPORT FOR NARROWER CLAIMS
After an original patent application has been filed, it’s incredibly common to ultimately file an amendment that narrows the claims (or to file a “continuation” application via narrower claims).
To have priority to the filing day of the original patent application, the narrower claims must be adequately described in the specification of the original application.
But if the clintends in the original patent application were too wide, the specification of the original application may not adequately define the narrower creation via sufficient information. In that instance, your narrower clintends won’t enjoy the benefits of the earlier filing day for any type of new or included details — definition that you might need to abandon your narrower clintends and also lose the capacity to patent a valuable embodiment of your development.
4. MORE DIFFICULT TO ENFORCE YOUR CLAIMS
Successfully enforcing a patent really counts on just how the patent gets taken in court — yet larger clintends make it even more likely for your patent to be construed in methods you didn’t intend.
Also, once you enforce a patent, the infringer will certainly virtually definitely attempt to show that your patent is invalid due to some prior art that the examiner didn’t consider. Broad clintends are more vulnerable to these types of challenges because, as mentioned earlier, they can be subjected to a more comprehensive range of prior art.
5. EASY TARGET FOR IPR CHALLENGES
In 2012, the America Invents Act (AIA) presented a new USPTO procedure calledinter partes review (IPR). Basically, byfiling an IPR challenge, your competitors now have actually the alternative to preemptively invalidate your patent before you’ve also chose to enforce it.
Patent applications containing overly wide clintends are simpler to knock out through an IPR because — equivalent to the point over — they’re more vulnerable to misinterpretation or to irappropriate prior art.
HOW DO WE USE BROAD PATENT CLAIMS EFFECTIVELY?
Aggressive claims are an essential component to any kind of filing strategy. One logical method to draw the line is to protect against pursuing clintends that are wide sufficient to extfinish past your market, bereason in those instances, you’d most likely enrespond to all kinds of unsupposed and also unimportant prior art.
By limiting claims to your own market or field of modern technology, you’re spanning the most useful region for your service — namely, your own commodities and also solutions, and also those of your rivals. Tright here are absolutely cases wright here it renders sense to actively pursue patents that cover various other markets, but you need to be thoughtful to carry out it best.
If you do seek broad clintends in your application, make certain that you also incorporate plenty ofnarrower dependent claimsas “backup” positions for enforcing your patent. That way, also if one of your wide claims gets invalidated, your dependent insurance claim may still hold.
See more: Why Were The Elves Leaving Middle Earth ? Tolkiens Legendarium
CAN OUR PATENT CLAIMS EVER BE TOO NARROW?
You should tailor your claim strategy according to the particular business objectives of each patent application. Watch this room for the second blog post in our series, where we’ll discuss the pitdrops offiling patent clintends that are too narrow.
Need to map out the typical expenses and also deadlines connected as soon as you file a patent application? We’ve put together a FREE infographic detailingthe costs you have the right to expect to incur over the lifetime of a patent. Download it now!