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Claims In A Patent Application
– What You Should Know
Michael J Foycik Jr
by Michael J Foycik Jr.
January 3, 2014

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

What is a broad claim?  How can you protect your invention when competitors make slight changes?  Should you even worry about these things?  Here is a simple guide that may help.

There is a law of claim infringement that is worth knowing.  A claim is infringed if the accuses product has each and every limitation of the claim.  What's that mean?  Well, suppose a claim for a pencil reads:  “An implement for marking having a hollow tubular portion having a spreadable substance inside.”  Then, a pencil having an eraser would still infringe – the added feature of the eraser does not matter.  Even more importantly, that claim even reads on a lipstick case.  What a wonderful claim!

You too can have good – even wonderful – claims, if your invention can support them.  The one problem is that the patent examiner rejects any claims that would read on the prior art patents.  So, no one else can ever get a claim for a pencil as broad as the above example, now that pencils are part of the prior art.

Let's say your invention has all kinds of wonderful and exciting features.  Many do!  How should be approach the claims for such a product?

One approach is to have several “independent” claims, which do not depend from any other claim.  Many of the features can then be added as depended claims, like this:  Dependent claim 2 for the above pencil invention could read:  “Claim 2:  An implement as claimed in claim 1, further comprising an eraser disposed at one end of the tubular portion.”

By this approach, you would make your independent claims as broad – and as different – as possible.  Then, you would add more limitations by way of dependent claims.  That way, if the patent examiner allows the application, your protection is broad and strong.  If the patent examiner rejects the broader claims, there is still a range of features for the patent examiner to choose from, which he/she might deem allowable. 

There can be more too it, of course.  Claim practice is a response may well require a high level of legal skill.  Remarks and arguments in a response may also require legal niceties.  Case law may require special ways of reciting software inventions, business methods, or electrical inventions.  Even so, the above comments should help you make sense of the claims. 

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
 
 
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