Claiming Strategy: Broad or Narrow? Strategies Come Full Circle. Patent prosecution strategy has shifted in the last few years, but I think a prudent strategy may be to write a very good specification, claim broadly, and use divisional applications as an insurance policy. In the Old Days, (prior to Festo), there was a general strategy of claiming very broadly in the first iteration of a patent.
Here is an example of a broad claim (claim 1) found in a patent application for a collapsible tent frame. Claim 8 for the same patent is narrower in scope and focuses on a specific aspect of one part of the invention. Try reading through the claims for this patent and notice how the section begins with broad claims and then moves towards claims.EuropeanPatent AttorneyEuropean Patent Attorney. 2 Patent Claim Design The Claims -- Represent the heart of the patent application Define the scope of protection given to an invention Are usually the first and sometimes the only parts of patent application actually reviewed by the patent examiner. 3 Drafting Patent Applications Once the patent agent understands the invention, then he can begin.Although we talk about patents being invalidated by the prior art, it is more accurate to say that claims are invalidated by prior art. Each claim stands on its own, and must be judged separately, claim-by-claim. Thus, an independent claim might b.
The claim covers a wide range of ailments and proposed treatments, so coupled with previous case law on inventive step and sufficiency, the claimants believed the patent was invalid because“it merely provides information about the known use of VEGF antagonists and their use for treating disorders” and because its claims are speculative and covered a “huge range of non-neoplastic diseases.
Effective patent claim drafting attempts to balance discrete disclosure of all elements comprising the invention against broad claiming that anticipates future improvements and provides the.
Under the European Patent Convention, when a claim in one particular category (see below), e.g. a process claim, depends on a claim from a different category, e.g. a product claim, it is not considered to be a dependent claim but an independent claim. Under U.S. law, this is still counted as a dependent claim, regardless of the class change.
If your independent claims are too dissimilar to each other, or a single dependent claim adds too much novelty (e.g., a combination of 3 or more non-obvious clauses), and you are filing for an international patent, you may be required by the Examiner to file multiple applications, which will double your cost and add to the difficulty of prosecuting the patent.
This is the second in a two-part blog series on the scope of your patent application’s claim set. (Read Part One). When drafting the claim set for a patent application, conventional wisdom is generally to pursue the broadest claims possible — that is, the claims that capture the broadest range of technology, without being so broad as to cover the prior art.
It is a legal document that you must write clearly, precisely and in a certain format. Patent applications are written this way to make your invention and claims clear to the examiner and anyone else reading your patent. Our lesson on writing a patent application begins the way most people start to write their applications: with the drawings.
Here is an example of a broad claim (claim 1) found in a patent for a collapsible tent frame. Claim 8 for the same patent is narrower in scope and focuses on a specific aspect of one element of the invention. Try reading through the claims for this patent and notice how the section begins with broad claims and develops towards claims that are narrower in scope. Characteristics. Three criteria.
Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application. So if you present a very broad claim initially, you can amend narrower. But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader. It is for.
Potential Pitfalls of Broad Claim Language by Rebecca L. Harker. When drafting patent claims, patentees generally attempt to draft the broadest set of claims possible in order to benefit from the full scope of their inventive contribution. To pass muster at the U.S. Patent and Trademark Office (USPTO), these broad claims, given their broadest reasonable interpretation, must have sufficient.
Validity of a patent claim over prior art (see also Prior Art Invalidity). The process of resolving disputes between the parties concerning the meaning of disputed patent claim terms is referred to as the claim construction or Markman process. Markman Process In Markman v. Westview Instruments, Inc., the Supreme Court ruled that the responsibility for claim construction determinations falls on.
Pharmaceutical patent owners invent a drug, and that drug is what they’re entitled to patent. But in software, broad claims of the “curing cancer” form are everywhere; they just use “a.
Write Broad Disclosures to Avoid Discouraging Language June 22, 2006 - The Federal Circuit determined that the Honeywell, the holders of Patent No. 5,164,879 purposefully limited the scope of the claims thereby relieving rival ITT of patent infringement accusations.The claim in dispute related to a new fuel filter technology.
And if the level of abstraction for the shared characteristic is too broad, a patent examiner may very well reject the claim resulting in a need to amend the claim using several ordinary dependent claims. Note there are other issues to consider with Markush claims, such as double-patenting and restriction requirements, but we will save those issues for another article. In general, see MPEP.
Use of the composition of claim 1, or the vector system of claim 2 or any claim dependent thereon, in the production of a non-human transgenic animal or transgenic plant. The OD has not yet issued its formal opinion (which can be expected in the next month or so), but last year it did issue a preliminary opinion prior to summoning Proprietor Broad Institute and the opponents to oral hearing.