The claim section is the most crucial element of any patent application. This section specifies the scope of a patent holder’s right to prevent others from using his or her invention. Some information on claim structure may be beneficial before addressing claim drafting strategies.
Background on Patent Claims
- In a patent application, the “independent claims” are the broadest claims, while the “dependent claims” relate back to the independent claims.
- Despite the fact that the dependent claims refer to and incorporate the elements of the independent claims, each claim stands alone in terms of infringement and validity.
- Any number of claims may be included in a patent application. The United States Patent and Trademark Office (USPTO) allows up to 20 claims to be filed without additional costs.
Claims Strategies For Patent Application
The standard approach when creating the claim set for a patent application is to include the claims that cover the broadest scope of the invention while still falling short of capturing the prior art. Everyone understands that the wider the patent claim, the better. Right? The majority of the time, the answer is yes. Narrow claims, on the other hand, should not be dismissed; they might have significant strategic significance. You can limit the scope of your patent claims by restricting them to:
- A particular use/application case.
- A specific feature of the invention
- A certain field of use
- A specific commercial service/ product.
The scope of a patent owner’s property rights is defined by the patent claim. A broader claim permits the patent owner to prohibit others from engaging in a greater range of activities, whereas a narrower claim is confined to a smaller set of activities.
Before choosing to narrow your claims, consider the following merits and demerits of narrower claims:
Advantages of Narrower Patent Claims
Some of the advantages of submitting narrow claims are as follows:
- Narrower claims are simpler to obtain and difficult to challenge. With narrow claims, enforceable patent rights can quickly be obtained by reducing prior arts that might invalidate or hinder your claims. It is also generally harder to challenge narrow claims as the precise embodiments of your invention are quite apparent.
- Your claims can be expanded later: The application for a continuation is to extend the initial patent application and utilizes the same specification and priority date as the application for a parent. You can broaden your application in a continuation by incorporating other methods of application if you only pursue a single claim in your patent application or prevent your competitors from copying your innovation.
- The use of narrow claims restricts the examiner’s search to the prior art of your invention.
- It contributes to mitigating the wide claim-related risks.
- If the claims are excessively broad, especially in instances where they look abstract, your patent application may not be granted.
Disadvantages of Narrower Patent Claims
- Patents primarily serve as assets for enterprise. They can safeguard and offer you with a competitive advantage over the economic worth of your invention. However, a patent that limits your claims to a particular innovation enabling competitors to modify your idea without infringing your patent rights therefore limiting its usefulness for your firm.
- Narrower claims make the scope of acceptable claims less flexible in negotiations: The Invention Office encourages the applicant to restrict its claims before the patent is issued during the patent examination procedure. Only if you have more wide claims, this is possible. However, if your initial application was already narrow, you will not be able to negotiate any claim protection.