30 Nov 2017
This is the first in a two-part blog series on the scope of your patent application’s claim set. (Read Part Two)
When developing the claim strategy for a patent application, many startup owners commonly assume that broader claims are always better. Certainly, there are many good strategic reasons to pursue broad claims. For example, narrow claims could allow competitors to “design around” your patent — giving competitors an opportunity to use your invention without technically infringing your patent.
Let me say this upfront: At Henry Patent Law Firm, we love pursuing an aggressive claim strategyfor our clients. We do it often. But pursuing the broadest possible claims is not always the right move.
In fact, if you’re not careful, pursuing overly broad claims may even cause lasting damage to your patent application. In the list below, we’ve outlined the potential consequences that could follow.
1. HIGHER CHANCES OF REJECTION
If your claim set is overly broad, you may inadvertently cause your patent application to be rejected for not satisfying one or more of the legal requirements for patentability.
BROADER RANGE OF APPLICABLE PRIOR ART
When you file broader claims, the examiner will search for a broader scope of prior art — making it more likely for your application to be rejected on unnecessary (and often avoidable) grounds.
For example, if you’re claiming a food processor device with an innovative blade structure, the examiner will most likely focus on prior art related to food processors. But if you broaden your claims to include the innovative blade structure in any type of device, the examiner will look at a much broader range of prior art that has nothing to do with food processors (like, say, lawn mowers).
So tech companies should think about whether the potential value of a broader claim scope is worth the risk of encountering a broader range of prior art.
U.S. PATENT LAW: ENABLING DISCLOSURE
U.S. patent law requires that the specification — that is, the written description in your patent application — enable a person with ordinary skill in the field to be able to carry out your invention.
So if an examiner believes that your specification doesn’t provide sufficient enabling detail relative to the scope of your claims, the examiner can reject the application.
The likelihood of this happening increases when you file broader claims. This is because broader claims generally require a greater degree of enabling disclosure.
U.S. PATENT LAW: THE ABSTRACT IDEAS EXCEPTION
Finally, if your claims are too broad, the examiner is more likely to reject the application on the basis that it claims nothing more than an “abstract idea.”
Basically, abstract ideas are not patent-eligible subject matter — so the examiner can reject your application even if there’s no relevant prior art.
Unfortunately, the patent office hasn’t established a clear standard to determine what is or isn’t an “abstract idea.” But in general, broader claims are more likely to be scrutinized as abstract ideas.
CAN WE OVERCOME THESE REJECTIONS DURING PROSECUTION?
Generally, yes: you can often overcome these rejections by narrowing your claims during prosecution. But it’s not as easy as you might think.
Once the examiner has opened a Pandora’s box of prior art or construed the invention as an abstract idea, it can be very hard to undo. To follow up from our original example, adding the phrase “food processor” to your claim for the innovative blade structure won’t always convince the examiner to withdraw their lawn mower reference.
Additionally, a drawn-out prosecution process can be damaging to the final patent because all the arguments that you submit during prosecution can be used against you when you enforce the patent.
2. INCREASED COSTS
In order to address the rejections noted above, you may incur higher legal fees.
For one, you may need to provide more complex and detailed arguments during prosecution. This means your patent counsel will have to spend more time on developing arguments and drafting responses.
For another, the USPTO may issue more office actions. Each “round” of examination comes with some associated legal fees as well as patent office fees — so the more “rounds” your application goes through, the higher your costs will run.
3. LACK OF SUPPORT FOR NARROWER CLAIMS
After an original patent application has been filed, it’s very common to subsequently file an amendment that narrows the claims (or to file a “continuation” application with narrower claims).
To have priority to the filing date of the original patent application, the narrower claims must be adequately described in the specification of the original application.
But if the claims in the original patent application were too broad, the specification of the original application may not adequately describe the narrower invention with sufficient detail. In that case, your narrower claims won’t enjoy the benefits of the earlier filing date for any new or added details — meaning that you might have to abandon your narrower claims and lose the ability to patent a valuable embodiment of your invention.
4. MORE DIFFICULT TO ENFORCE YOUR CLAIMS
Successfully enforcing a patent really depends on how the patent gets interpreted in court — but broader claims make it more likely for your patent to be interpreted in ways you didn’t intend.
Also, when you enforce a patent, the infringer will almost certainly try to show that your patent is invalid due to some prior art that the examiner didn’t consider. Broad claims are more vulnerable to these types of challenges because, as mentioned earlier, they can be subjected to a wider range of prior art.
5. EASY TARGET FOR IPR CHALLENGES
In 2012, the America Invents Act (AIA) introduced a new USPTO procedure called inter partes review (IPR). Essentially, by filing an IPR challenge, your competitors now have the option to preemptively invalidate your patent before you’ve even decided to enforce it.
Patent applications containing overly broad claims are easier to knock out with an IPR because — similar to the point above — they’re more vulnerable to misinterpretation or to irrelevant prior art.
HOW DO WE USE BROAD PATENT CLAIMS EFFECTIVELY?
Aggressive claims are a key component to any filing strategy. One logical way to draw the line is to avoid pursuing claims that are broad enough to extend beyond your industry, because in those cases, you’d likely encounter all kinds of unexpected and unnecessary prior art.
By limiting claims to your own industry or field of technology, you’re covering the most valuable territory for your business — namely, your own products and services, and those of your competitors. There are certainly cases where it makes sense to actively pursue patents that cover other industries, but you have to be thoughtful to do it right.
If you do pursue broad claims in your application, make sure that you also include plenty of narrower dependent claims as “backup” positions for enforcing your patent. That way, even if one of your broad claims gets invalidated, your dependent claim may still hold.
CAN OUR PATENT CLAIMS EVER BE TOO NARROW?
You need to tailor your claim strategy according to the specific business objectives of each patent application. Watch this space for the second blog post in our series, where we’ll discuss the pitfalls of filing patent claims that are too narrow.
Need to map out the typical costs and deadlines involved when you file a patent application? We’ve put together a FREE infographic detailing the costs you can expect to incur over the lifetime of a patent. Download it now!
HOW MUCH DOES IT COST TO PURSUE PATENT PROTECTION? IT’S A QUESTION ON EVERY BUSINESS OWNER’S MIND.
Need to find out how much you’ll spend and when? We’ve created a free infographic to help you plan for the costs associated with securing protection for your intellectual property.
- Costs to expect during the patent process — so you’re not surprised or unprepared for fees
- Breakdowns of official government fees versus legal fees
- Where costs occur during the patent-protection timeline
- The cost of patent protection in a number of foreign countries
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Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.