07 Dec 2017
This is the second in a two-part blog series on the scope of your patent application’s claim set. (Read Part One)
When drafting the claim set for a patent application, conventional wisdom is generally to pursue the broadest claims possible — that is, the claims that capture the broadest range of technology, without being so broad as to cover the prior art.
In an earlier blog post, we discussed why you might want to take a more nuanced approach in some cases. That may mean pursuing narrower claims that, generally speaking, cover a smaller scope of technology.
There are many ways to narrow your claims. For example, you can focus on:
- A particular use case
- A particular commercial product or service
- A certain field of use
- A certain feature of the invention
When deciding whether to pursue narrower claims, you’ll want to consider the following advantages and disadvantages.
ADVANTAGES OF FILING NARROWER PATENT CLAIMS
On one hand, narrower claims can help distinguish your invention from prior art, which can help speed up the process of successfully getting a patent grant.
1. NARROWER CLAIMS ARE EASIER TO OBTAIN AND MORE RESILIENT TO CHALLENGES
You may be able to obtain enforceable patent rights more quickly if you use narrower claims, as there may be less prior art that could block or invalidate the claims. For this reason, companies that want to quickly and efficiently build up a large number of patents will often file narrower claims.
Additionally, narrower claims may be more resilient to challenges when you enforce your patent because they specify more details about a particular embodiment of your invention. Thus, some companies pursue narrow claims because their primary focus is having strong patent protection that covers their own products.
2. NARROWER CLAIMS HELP HEDGE AGAINST UNKNOWN PRIOR ART
One key disadvantage of aggressively broad claims is that they could expose your invention to irrelevant prior art.
But if you start with narrower claims, the patent examiner is more likely to restrict their search to relevant prior art — their search will be limited by the language used in your claims.
So by strategically narrowing your claims to a specific technological field, you can hedge against unknown prior art from other fields you don’t specialize in.
3. YOU CAN ADD BROADER CLAIMS LATER
If you’re filing in the United States and want to add broader claims later, you can always file a “continuation” application. A continuation application refers to an application that’s based on an earlier-filed patent application (called the “parent” application), and uses the same priority filing date and specification as the parent application.
If the claims of your parent application cover only a specific embodiment of your invention, a continuation application can be a useful follow-up for pursuing broader claims — whether to cover alternative embodiments, or to block competitors’ attempts to “design around” your patent.
4. YOU CAN REDUCE THE RISKS ASSOCIATED WITH BROAD CLAIMS
Your patent application may simply not be deemed allowable if it contains overly broad claims — especially if the claims are so broad as to be considered “abstract.” So by narrowing your claim set, you may reduce the risks associated with obtaining and enforcing aggressive claims, as discussed in our earlier blog post.
DISADVANTAGES OF FILING NARROWER PATENT CLAIMS
On the other hand, narrower claims can make it easier for competitors to avoid infringing your patent — and you may be able to block these attempts only under specific circumstances.
1. NARROWER CLAIMS ARE LESS USEFUL AS A BUSINESS TOOL
Patents are, first and foremost, business tools. They can help protect your invention’s commercial value or offer your business an advantage over its competitors.
But if your patent covers only a specific embodiment of your invention, your competitors may be able to easily “design around” your patent — allowing them to use an insignificantly modified version of your invention without technically infringing your patent. In this case, your patent will be less useful in serving your business’s interests.
2. YOU CANNOT ALWAYS ADD BROADER CLAIMS TO FOREIGN APPLICATIONS
As discussed above, if you decide that you do want to broaden your initial claim set, in the United States, you can always file a continuation application later on (assuming the broader claims are supported by the description in the parent application).
However, other jurisdictions have stricter rules about broadening claims. For example, the European Patent Office may reject claims that go beyond the scope of the claims in the original priority document. So if you’re seeking international patent protection, you may not have the option of broadening your claims beyond the priority application.
3. NARROWER CLAIMS OFFER YOU LESS ROOM TO NEGOTIATE AN ALLOWABLE CLAIM SCOPE
You can view the patent examination process as a negotiation between the patent office and the applicant. And in many cases, the patent office will encourage applicants to narrow their claims before allowing the application to issue as a patent.
So if you start with broader claims, and then negotiate a narrower claim scope with the patent examiner, you may be able to obtain an appropriate scope of protection in your issued patent.
By contrast, if you start with narrow claims and the patent examiner rejects the claims, you won’t have many options to negotiate for reasonably broad protection.
WHAT CLAIM SCOPE SHOULD WE USE IN OUR PATENT APPLICATIONS?
Strong patent applications use a mix of narrow and broad claims to ensure that the patent will hold up if challenged in court, but will also serve your business’s goals and interests.
Henry Patent Law Firm usually takes a mixed approach. We typically craft reasonably broad independent claims, and include narrow dependent claims that support the broader independent claims. But sometimes it may make sense to take another approach, for example, starting with at least one focused (narrower) independent claim.
Need help drafting meaningful claim sets with varying scope? Our attorneys can help you craft a strategy personalized to your business’s specific needs. Contact us now!
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.