Getting More From Your Patent Claims

Having inventors and companies explore the full potential and ramifications of their inventions is often overlooked in many companies. Here are some simple techniques that inventors, team managers, and in-house patent counsel can use to get more out of their patent claims.

First, there are some basics that inventors and team managers should know about patent applications and claims. The coverage of a patent application is determined by the application’s claims, as interpreted by reference to patent application, statements made to the Patent Office, and, in some cases, external evidence. Since 1793, Federal Law 35 U.S.C. § 101 and its predecessors have specified that claims can be directed to following four broad categories of subject matter: processes, machines, manufactures, and compositions of matter. Over time, the categories have, in common practice, evolved to include the following additional claim forms: apparatuses, business methods, computer-program products, chemical forms, devices, financial products, organisms, test kits, systems, etc. It is not uncommon for a patent application to have two or more different forms of claims. The Patent Office often considers two different claim forms to constitute two different inventions, requiring each to be covered in separate patent applications.

In general, a claim is made of one or more "features", where a "feature" can be a physical element (e.g., microprocessor, chemical constituent), a quality of an element (e.g., a RISC microprocessor, a fluorinated polyimide), a process step (e.g., receiving a data file comprising database records, heating the polyimide), and a relationship between elements and/or steps (e.g., a memory electrically coupled to the microprocessor, the curing step occurring immediately after the mixing step).

Claims also come in two basic types: independent claims and dependent claims. The goal of an independent claim is to recite the essence of one aspect of the invention with as few features as possible, but with enough features to distinguish it over the prior art. A dependent claim effectively replicates the features of a selected independent or dependent claim, and adds one or more features. A dependent claim can provide a fall-back position should the Patent Office find prior art that shows all of the features recited by the independent claim. An invention can have several inventive aspects, with each inventive aspect being claimed by one or more independent claims and respective sets of dependent claims. In addition, an inventive system, software program, apparatus, etc., can, in fact, have several inventions. If the Patent Office determines that the claims of a patent application are drawn to two or more inventions, only the claims to one invention will be examined. Claims to the other inventions can be pursued in divisional applications.

Here is a simple process that can be used to help identify the inventive aspects of an invention. On one side of a sheet of paper, have the inventor(s) identify all of the advantages and benefits, no matter how small, of the invention. Then, on the other side, have the inventor(s) identify all of the groups of features that provide or enable each advantage and each benefit. In this process, it is important to think how a competitor may try to achieve the same advantage/benefit using a different grouping of features, and to recognize that the features may be packaged in different claim forms (e.g., method, system, computer-program product). Often, the addition of one or two features to an existing set of features brings about new or expanded benefits and advantages. This can be indicated in the list by shorthand notation as an addition to a prior listed set of features.

After this initial step, it may be useful to repeat the step with the involvement of other members of the product development team or research group, as well as members of the product marketing department who are in touch with what customers want and who might know what competitors are developing. These other members can bring added perspective as to how competitors might design around the invention. During the initial creation of the list by the inventors, and the subsequent expansion of the list with the help of others, the names of the people who contributed to the creation of each set of features should be noted on the list so that the inventorship of the claims derived from the list can be documented.

During the above steps, each listed group of features should be examined to determine if the arrangement of the features (e.g., relationships between elements) can be changed, or if some features can be eliminated or substituted with other features or groups of features. For example, can one still make a 3-speed bicycle by moving the sprockets from the rear wheel to the pedal crank? Or can additional speeds be provided by placing sprockets on both the rear wheel and the pedal crank? Through the process, more advantages and benefits are likely to be recognized, which can be processed as well by these steps. In-house patent counsel can play an important role by ensuring that the inventor(s) and other team members identify competitors who are likely to infringe the invention, consider all the forms in which the competitors could sell the invention, and thus help the team members determine the most effective forms of the claims. In addition, if a large number of inventive aspects are recognized during the process, in-house patent counsel can help the team members prioritize the inventive aspects for patent coverage in the application.

The following points will help focus the above process. First, to show that a competitor infringes an independent claim, one must show that the competitor’s method, system, product, etc. has all of the features recited by the claim. The fewer features that an independent claim recites, the easier it is to show infringement. Thus, the breadth of an independent claim is inversely related to the number of features it recites, and it is generally better for an independent claim to recite as few features as possible, while still reciting enough features to distinguish over the prior art and to convey the essence of an inventive aspect of the invention. What a patent practitioner considers to be a good independent claim is often contrary to what a business plan writer or advertiser considers to be a good description of the inventive system (or method or product), which is typically a description of all of the inventive aspects (and corresponding features) as an integral whole.

Second, while an independent claim should recite the features needed to convey the essence of an inventive aspect, it need not recite all the features to make an operative embodiment. For example, an independent claim directed to an inventive internal combustion engine need not recite the fuel needed to run the engine, nor the tank, lines, or pump needed to store and convey the fuel to the engine. Third, when possible, an independent claim should only recite features that are performed, controlled, or owned by a single entity (e.g., a competitor) rather than multiple entities (e.g., a competitor and a user of the competitor’s method, system, product, etc.). This makes it easier to find that the competitor directly infringes the claim, rather than indirectly infringing the claim by inducing the user to perform, control, or own one or more features of the claim.

Going through this process will help focus the invention in the inventors’ minds, which can aid them in subsequent developments of the invention. It will also facilitate the searching of the prior art by focusing the search on groups of features. Finally, it will help identify the competitors who are most likely to infringe, and will aid in drafting a set of more effective claims and a better application for the invention, particularly in combination with a prior art search.