By Michael K. Henry, Ph. Inventors often wonder whether the number of claims can affect the overall strength and value of their patent. In a patent, the claims determine the exclusive rights granted to the patent owner. As such, the strength of a patent lies not only in the described invention, but also in its claims. Generally speaking, a patent with more claims is more likely to withstand challenges in an adversarial setting.
As a patent litigator used to tell me, patent claims in litigation are like soldiers in a battle: many will not survive. But in patent litigation, you generally need only one claim to survive. As such, the key to a successful patent application lies in having enough claims so that at least one or two can survive all the challenges that the patent will eventually face in a litigation context. Challenges to patent claims typically fall into one of three broad categories: 1 prior art, 2 subject matter eligibility, and 3 clarity or support.
Prior art refers to any evidence that your invention was already publicly known or available, in whole or in part, before the effective filing date of your patent application. To hedge against uncertainty relating to prior art : Consider drafting many detailed dependent claims. Too often — especially when a patent application is drafted on a tight budget — patent attorneys draft only short, broad dependent claims that simply recite conventional elements.
These types of claims can be critical in navigating unexpected prior art. That may sound straightforward enough, but in fact, subject matter eligibility has turned out to be one of the least predictable areas of the U. Because of all these uncertainties surrounding subject matter eligibility, you must have some claims to account for variability in the way that Section will be applied by a judicial body.
Gene founded IPWatchdog. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations.
Tags: claim drafting for beginners , completely describing an invention , famous inventors , independent inventor , independent inventors , inventor , nonprovisional patent , nonprovisional patent application , nonprovisional patent applications , patent , patent claim drafting , patent claims , patents.
Read more. Gene, lay readers and I take it that they are your intended readership might be wondering why one bothers to include dependent Claims at all.
Yes, you say they limit the scope. Might there be another reason to include them? Max, As we know, examiners often reject the first independent claim but concede that a combination of dependent and independent claims would be patent eligible.
I have seen numerous patent applications where the first independent claim is far too broad not to be blanketed by prior art, and the novelty lies buried down in the dependent claims.
I do harbour my suspicions over which is the more common option. That plus the huge cost difference is one of the main reasons PTO IPR post-grant reviews [almost all with previously unconsidered patent or publication prior art] have become so remarkably widely used so rapidly. Over per year now. Re the above question about dependent claims, is not the fee difference vis a vis comparable numbers of independent claims a major factor?
Also, given the new Sup. So may I ask again, why bother with them? For example, how often does it happen that a dependent claim is decisive to the outcome of a patent infringement action? Thanks Benny. That would be a good reason, to get from the PTO Exr a positive indication of patentability. If not, can I Auxiliary Request have a patent with this narrower version of Claim 1? It is just that Americans really do not like Auxiliary Requests.
They think that if you include an auxiliary one, the Main Request will get short shrift. Paul, why is it diffrent then, with dependent claims. I hear a lot from independent inventors that they do not want to narrowly describe their invention and only want the most vague description possible so that more is infringing. That is up to them, but the application will be useless and if a patent does issue the patent would be exceptionally easy to challenge and quite useless. If you have only one claim in your patent and the patent claim becomes invalid you are left with no patent claims in the patent, which is why you absolutely need to have dependent claims.
Remember, the broader the claim the easier it is to invalidate the claim. Why would you ever not take 20 claims? That would be a very poor decision. Further, it is always preferable to have a specific claim that the defendant is infringing. If you have a highly specific dependent claim that is being infringed that can and does influence the decision-maker.
Still further, in a patent you can protect more than what you are going to be doing. You define the invention broadly, but you absolutely want claims of varying scope i.
So having a handful of very specific claims that narrowly cover the primary commercial embodiments is always advisable. Further still, post grant challenges have high fees, but the fees get even higher when a dependent claim needs to be challenged.
If a dependent claim is challenged in a post grant proceeding all the claims that the dependent claim refers back to must be challenged and fees paid for those. So if you have a lot of dependent claims that little by little add specificity and the claims need to be challenged the post grant fees would be much higher, which in some cases could deter use of post grant proceedings that are highly unfavorable to the patentee.
Further, you seem confused about fallback claim — dependent, versus specification. WD is required no matter the level of the claim, but does not and cannot take the place of the claim.
Reassuringly, it is just the same in Europe. To those Inventors who want only the broad claims, because they fear that the presence of narrow claims will somehow incite the Examiner or court to hold them to the core of the Invention and no more, and so reduce their enforeceable scope, I would suggest that the presence of a nicely graded array of dependent claims, each progressively adding a quantum of patentability to the independent claim, serves to enhance the impression of validity of the main claim, rather than to take from it.
If there is so much of substance within the envelope defined by Claim 1, why then Claim! Further question. Do you mean just add limitations to the main claim by amendment during application prosecution [or a reissue] only when forced to do so? I doubt if it would help a DOE argument either. Trying to argue that unclaimed specification limitations should be considered part of an issued claim in litigation may work with some Fed. Dependent claims that properly add such limitations in claim form is far better.
Also, the U. Patent profanity deals with the application and composing the application to avoid the unforeseen effects that are generated by judicial decisions. Such is strictly apart from how one might — or might not — choose a claim strategy other than to avoid the profanity no matter what claim strategy is chosen. If Independent Claim 1 lacks novelty, that is no basis on which to find that the claims dependent on it are also lacking in novelty. As somebody with experience of prosecution at the EPO, what do you think about that?
I see a ladder of abstraction ascending from the Best Mode of the Detailed Description, out to the concept of the Independent Claim. I see the dependent claims as the rungs of that ladder. And it is the bits of the WD that are there to complement and support each dependent claim, explaining why each ladder rung is placed where it is, that will unless the drafter is careful what she writes about the subject matter of these dependent claims provide the reader with the justification to call a halt.
For example with ranges of content of alloying elements. Which to choose? Which do you prefer, patent profanity or a patent to issue in Europe?
Choose deliberately, on the basis of full knowledge of both systems. Perhaps, after all, you can reconcile the two. That is not the commonly understood definition not by a long shot and it is good to note for the conversation that you are talking about something else. With that in mind, your reference of WD and support of claims can be understood for the rather unremarkable proposition that your claims must be supported by the specification. I believe that was a lesson learned on day one of application writing.
Here in the states, not just any reader will do. This is the second time that I see you asserting something that on its face and considering the article seems to be rather groundless. How many people do you think actually read the whole of any particular patent, other than the IP mangers of the applicant, and the examiner?
Of course, your answer is not correct, as the legal impact of the claims is geared not to a reader such as yourself. But the question of readership here is geared to the legal point. That reader is the person having ordinary skill in the art to which the invention pertains. This is a common and oft repeated error of yours.
No wonder why we seem to butt heads often — you are intent on not understanding the legal dimension of a legal document. Anon, You appear to contradict yourself. I have read Patent applications drafted in varying shades of quality — some are lucid, some appear to make a deliberate attempt at obfuscation.
Further, you create a strawman argument concerning clarity. I never said clarity was irrelevant. I really wish that you would gain some minimal appreciation of law in dealing with patent law issues. I feel that I am being condescending, but also feel that you should know better. You seem trapped in a technical-only mindset that is just not helpful for you to understand the topics of conversation.
Repeatedly, we run into exactly this type of issue. You seem recalcitrant and unreasonable in dealing with law. Anon, As usual, you display greater skill in providing criticism than information. One of the first things I learned about patents is that their true purpose is to encourage the dissemination of information in return for exclusivity — this does not mean disclosing the information solely to attorneys, who have no use for it, but to those who might implement the disclosure in return for financial compensation.
This purpose will not be achieved if the disclosure is so poorly written as to be incomprehensible.. This is always how he is. His participation in blogs is a way of getting his revenge for the treatment inflicted on him, and gives him a good feeling, no doubt. Gene does actually want readers who are not patent attorneys, and I, for one, enjoy reading your stuff. Readers, I assert it on the basis of a career lifetime of experience in telephone conferences with patent attorneys in the USA, instructing me on the prosecution of cases at the EPO.
Conversely, if you the reader do know what they are, you will immediately understand why other US patent attorneys find them irksome. Those US patent attorneys who least understand how they are construed in Europe are the ones who are most virulent in their knee-jerk criticism of them.
But the question is one that lawyers can argue about until the cows come home. Here, the invention was characterized by the use of super-absorbent material as used conventionally in female hygiene devices. The litigants not surprisingly had differing views.
Benny you will understand that it is irrelevant to validity which prior art the named Inventor knew about and which she did nort. The PHOSITA knows more than any real life inventor, but is less inventive than any person who invents the subject matter of a valid claim.
This can confuse people with no knowledge of how the validity of patent claims is decided disspassionately, without emotion and with no loss of face. Knowing what something is not is a benefit. I need not precisely define something to provide that benefit. Something that you take offense to? Or will this be yet another thing that you add to the baggage you carry around with you , to help add insult when there is none?
An odd request. Perhaps you should define the term straight up? Your use of the term in the context here seems to make an implication that is not in accord with the topic of providing a range of coverage with independent and dependent claims that is common nature for US prosecution. You seem to want to push an all-or-nothing independent only claim scheme, and use a phrase that I question to implicate a US desire that is just not there.
You are showing a tendency to project negative emotions, that are not called for. While I need not get into a psychological profiling session, suffice to say that such behavior of subjectively projecting emotions on others is not professional. Are you still there Benny, Readers? If so, see what I mean? Of sorts. Curious, no?
That reminds me of the now departed German national view of the inventive faculty. Who could argue with that? Next thing it will be telling us that there are different levels of novelty.
Or pregnancy. Not at all MaxDrei. You charge in with grand accusations and retreat with your tail between your legs. Baby steps for Benny, setting some straight forward advice for SadPanda, informing you how I used your term in the context of this thread, contrasting that use with your implication concerning US practitioners, and noting your own style of posting is all very straight forward from my end.
If I have said something in error, by all means, please provide a correction. If my baby steps to someone obviously untrained in the law lead away from a correct understanding of the law, by all means, set the path straight. If there are no corrections to be made, why then the hostility with which you post?
Why the sanctimony? The motor vehicle of claim 1, in which there is no motor. This is improper form because claim 1 requires a motor, and claim 5 says there is no motor. Thus claim 5 would be broader than its parent claim. Having a dependent claim like this would allow a product which does not infringe claim 1, because it has no motor, to infringe claim 5.
The claims rules introduced in rescinded in said that a dependent claim must claim an invention which is in the same class method, apparatus, etc. Thus, a claim which reads "A device manufactured by the method of claim While these rules were rescinded, clearly the USPTO does not like this sort of claim and intends to do something about them at some point.
It's best to avoid them. Many foreign countries have a special form of dependent claim, called "multiple dependent claims".
A claim of this form might be:. A motor vehicle according to any of claims , in which the body is painted red. This kind of claim is allowed in the USPTO, but discouraged - there is a large additional fee if there are any multiple dependent claims at all in the application, and each multiple dependent claim counts as more than one claim for the purpose of determining the basic filing fee in this example, claim 6 would count as five claims.
Also, although other countries allow multiple dependent claims to depend on other multiple dependent claims, this form is forbidden in the US. We do not recommend the use of multiple dependent claims. Special Claim forms. Jepson Claims:. Jepson claims are a special type of claim which are most often used when the invention is an improvement on an existing product. Here is claim 1, written as a single Jepson-style claim:. An improved motor vehicle for transporting people and objects, of the type having a chassis and a body mounted on the chassis, a plurality of wheels under the body, supporting the chassis, a transmission mounted on the chassis and coupled to at least one of the plurality of wheels, a motor mounted on the chassis having a fluid input and an output coupled to the transmission, and fluid supply mounted within the body and coupled to the fluid input, in which the improvement comprises:.
In the "ordinary" claim form of claim 1, above, the body of the claim lists elements which are both old and new. In this form, everything before the "in which the improvement comprises" is admitted to be prior art for the purposes of this claim, and everything after the phrase are considered to be the novel elements of the invention. Although this kind of claim is not often used in US practice, it can be very effective in separating the old and new parts of an invention. This style of claim is the preferred form in European practice, where they are called "two-part format" claims, and the transitional phrase is "characterised by Markush groups:.
Markush groups are a way of writing a claim to cover an element which is selected from a list of elements. For example,. The motor vehicle of claim 1, in which the the fluid is a gas selected from a group consisting of air, nitrogen, propane, butane, and fluorine.
In terms of claim coverage, this would be the same as five dependent claims, each claiming the fluid is one of the gasses, but by using this form we only have one claim. This can save money on the excess claim filing fees if there are more than 20 claims. The risk of a Markush claim form is that if any one of the group is found to be old, the entire claim is invalid. If the claim were written as separate claims, the invalidity of one of the claims would not affect the others. Note that on August 10, , the USPTO issued a "Notice of Proposed Rulemaking" which proposed changes to how claims presenting alternatives which includes Markush groups would be considered for examination and claim-counting purposes.
If enacted, the rules would have been changed to provide, among other things:. The rules were never enacted, but they provide some useful guidance on the sorts of problems which the USPTO is concerned about.
It would probably be a good idea to avoid those situations in drafting claims, since they do make the claims harder to read or interpret. Beauregard Claims:. Named after in re Beauregard , the case which approved this form of claim, a "Beauregard Claim" is really a claim to a computer-implemented method, but it is written to claim the computer-readable medium on which the program which is executed to implement the method is stored. The original idea was based on the then-current uncertainty about whether a method which was performed internally in a computer was patentable subject matter.
By claiming the method as a physical object the floppy disk or CDROM upon which the program was written which, if executed, would perform the method , the argument ran that this must be patentable subject matter, since floppy disks are tangible things.
Since then, Beauregard claims have gone into and out of style, as the USTPO and the courts struggle with the situation regarding computer implemented methods. The University of Phoenix, Inc. This was reinforced in the Alice Corp v. CLS Bank Supreme Court case - Beauregard claims are probably of much less value than before, especially regarding methods which relate to what the PTO and the courts term "abstract ideas" or "fundamental economic activities".
0コメント