The part of the United States utility patent application that I address today are the CLAIMS. Business people hear a great deal about claims, but they may be unsure of exactly what they are or their legal significance. Format-wise, claims are long numbered sentences at the end of each patent or the original application (where followed by the short abstract) .Substantively claims define the scope of what you seek to protect. Consequently, there is considerable ‘back and forth’ between your representative and the patent examiner to eliminate claims, broaden them, or narrow them. What exactly do we mean by broaden or narrow? The answer is crucial to your patent’s success in preventing competitors from entering your market space.
For example, suppose that your patent application addresses a pneumatic device that prevents trench walls from collapsing during a rescue mission. This is actually the case in my client’s U.S. Patent No. US 6,746,183 B1 (shoring device with outer ratcheting collar). Claim 1 of this patent designates a mechanical component made of an interlocking outer ratcheting collar and an inner ratcheting ring. This collar and ring effectively interlock each other so an enclosed piston is mechanically restrained from becoming a dangerous projectile and flying from the end of the enclosure structure such as a cylinder.
The great protection of the invention from Claim 1 arises from its wide scope: any future device that implements an outer racheting collar and inner ratcheting ring in the interlocking configuration as Claim 1 infringes my client’s patent. This is potentially a large number of devices—effectively any circular device that restrains an enclosed piston within a cylinder—so with this combination, the competitor is likely to enter the wide protected space created by my client’s patent.
In contrast, Claim 2 of the same patent includes all Claim 1 features plus additional features designated as handles and protrusions. Claim 2 thereby includes a great many more structural details, so initially one would presume that its coverage is more comprehensive than that of Claim 1. But, perhaps counter-intuitively the opposite scenario is actually the accurate one, is consistent with our previous analysis, and makes a great deal of sense.
For example, imagine a product with all of the features of Claim 1 with numerous handles but without locking rectangular protrusions or serrations. Although under Claim 1 this is an infringing product, under Claim 2 it is not! Why? Because Claim 1 does not include all the features designated in Claim 2, such as the locking rectangular protrusions or serrations, for there to be infringement. It also follows that fewer devices fall into this smaller scope of protection because there must be more structural details present in the potentially infringing device before infringement can occur ( unless we are talking about an infringing circumstances known as the doctrine of equivalents which we will not discuss here).
In sum, the same device may or not be protected, depending on how the claim is worded. You might also ask yourself if broadest claims provide the widest protection, why we include narrower claims in the patent application. There are at least two reasons. First, an examiner may allow narrow claims and not broader ones during patent prosecution. In that case the business owner must decide whether to risk losing all claims on appeal, or accept narrower claims that provide little or no protection for the product. Secondly, for a variety of reasons, if challenged in court a narrow claim may survive a lawsuit, but broader ones may ‘go down” for a variety of reasons.
© 2011 Adrienne B. Naumann
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