The Legacy Approach: For decades, patent attorneys have been taught to submit claims to the USPTO that are as broad as possible. The theory is that submission of broad claims are opening gambits in a negotiation process that will ultimately yield the correct scope of claims for the applicant.
The Current Situation: The patent prosecution situation has radically changed over the past few years. A combination of political pressure on the USPTO and case law have made patents harder to acquire than any time in recent memory (although the Obama administration appears to increasing the allowance rates). Furthermore, the patent office is buried in applications. In some technical fields, it often takes several years before a first office action is even issued. Operating under a legacy theory of broad claiming often will result in significant disadvantages to the applicant.
Some of the disadvantages with broad claiming are:
- Loss of Equivalents – At the risk of oversimplification, when an applicant narrows his claims during prosecution, the applicant gives up any equivalence relating to the narrowing amendment. Broad claiming usually results in claim amendments and claim amendments usually result in a significant loss of equivalence to the claim terms.
- Loss of a Chance at Negotiation – In years past, the patent office would issue two or three non-final rejections before issuing a “final rejection.” Multiple non-final rejections gave applicants room to effectively negotiate to the correct claim scope. Currently, examiners issue one non-final rejection and one final rejection which are usually based on the first claim set. Because final rejections severely limit the Applicant’s ability to amend claims, Applicants essentially have one chance at negotiation. Thus, they simply do not have the luxury of the back and forth negotiation process of times past without filing additional continuation requests. Essentially, applicants have one shot at negotiation. Broad claims render this negotiation chance useless because the parties will always be too far apart to effectively reach a compromise.
- Obviousness – Recent case law has made it easier than ever for an examiner to reject an application based on “obviousness.” Broad claiming allows the examiner to easily “knock out” the independent claims with anticipation arguments, then allows the examiner to knock out each of the dependent claims with obvious arguments. Under current case law, these obviousness arguments can be extremely difficult to overcome.
- Angering the Examiner – Most patent examiners are young engineers who are not familiar legal nuances nor with potential malpractice law suits. When they receive an application with broad claims, they immediately become defensive and view the initial submittal of broad claims as a waste of their time. They will then “knock” out the claims based on art that may not even be that relevant to the invention.
A New Approach: For many applicants, the current situation requires a fresh approach to the patenting process. In contrast to broad claiming, it may be better to just claim the invention. In other words, provide claims which cover an exact or nearly exact copy of the invention. Then, once some claims are allowed and the most relevant prior art has been identified, the applicant can broaden the claims using continuation practice to claim additional patent scope.
Advantages of narrow claiming are:
- Teaching the Examiner – most examiners no longer read the specification. They simply turn to the claims and start conducting word searches to “knock” the claims out. A narrow claim essentially explains the invention and forces the examiner to understand the invention.
- Most Relevant Art is Uncovered – Narrow claiming forces the examiner to find the most relevant art rather just knocking out the broad claims based on art that may not be relevant to the actual invention.
- Obviousness Rejections are Easier to Overcome – Narrow claiming forces the examiner to try to knock out all of the elements of a claim. This forces them to combine multiple references.
- Preserves Equivalents – because most of the claim elements will not be narrowed during prosecution, there is less chance that prosecution history estoppel will prevent the application of the doctrine of equivalents.
- Faster Patent Protection – obviously, narrow claim will reduce the negotiation process which will provide for faster allowance. Again, the scope of protection can be widened later with continuations.
- Additional Work – under this approach, one should still draft broad claims, but place these in a “claim bank.” A “claim bank” is a section towards the end of the application which consists of claim-like sentences of varying scope.
- Additional USPTO Fees – because additional protection will be obtained through the use of continuations, there will be additional filing fees and maintenance fees paid to the USPTO. However, these USPTO fees are likely to be offset against much lower attorney fees.
If narrow claiming has potential advantages, why do most outside law firms actively encourage the practice of submitting broad claims? First, one should realize that patent attorneys are creatures of habit. Second, one should keep in mind that many law firms have been sued for legal malpractice for claiming less than the applicant thought they should have received. Obviously, broad claiming can provide an effective defense to a law firm in future cases. Third, broad claiming will typically lead to numerous offices actions from the USPTO which will result in a greater amount of legal fees during the course of prosecution.
Every situation is unique. So, narrow claiming may not be right in every situation. However, narrow claiming should at least be considered when developing an overall patent strategy.
Bill Naifeh is a patent attorney in Dallas, Texas. He often works with clients on a part time “in-house” basis to assist clients with the management of their patent portfolios. More information may be found at www.naifeh.com.