Why Patent Claims are Crucial for Robust Patent Rights
When seeking patent protection for an invention in Australia, inventors would be wise to focus on the most critical portion of their patent specification: the claims. Here, the Pareto principle (i.e., 80-20 rule) is in action. While the claims should only be a small percentage of the text written by your patent attorney, the language of the claims disproportionately impacts the strength and thus value of your patent.
Indeed, patent attorneys work through furrowed brows and endless linguistic battles to perfect the language of the patent claims; the process is often painstaking and thwarted by many wrong turns, but it is also punctuated with spectacular lightbulb moments and insights that eventually sculpt the claims into the works of art that they are (in my humble opinion) to optimally define your invention and scope of protection.
In this article, we’ll delve into the importance of patent claims and how to ensure the claims your patent attorney drafts properly define and protect your invention and contribute to your commercial objectives.
1. What Are Patent Claims?
Patent claims are a set of written statements included in a patent application that define the key and inventive aspects underlying an invention. For example, if a chair had never previously existed before, then a strong patent claim that protects the concept of a chair wouldn’t be limited to a seat with four legs.
Instead, your patent attorney would work with you to understand the inventive principle underlying your invention (which, in the case of the world’s first chair, might be providing an elevated support surface). As such, an example claim might be something like:
Claim 1:
A seating apparatus comprising:
a support surface for supporting a body above a ground; and
one or more ground-engaging members associated with the support surface for maintaining the support surface above the ground.
While such a claim may capture chairs with any number of legs, and seat styles, and is silent on whether or not the chair has a backrest etc., the claim would not cover, for example, one of those egg chairs that hang from a ceiling.
Hopefully, the above example paints a picture of what goes into drafting a strong patent claim. Your patent attorney should not only understand the specific technical details of your invention, but they should also have an insight into what the underlying key principles are so they can draft your patent claims accordingly. After all, what you want to cover isn’t just the exact invention you’ve developed, but also any obvious workarounds that cunning third parties might dream up.
In short, your patent claims should be drafted so that it is very difficult (if not impossible) for a competitor to come up with a commercially viable alternative to your invention without infringing your patent.
2. Types of Patent Claims
There are two primary types of claims in a patent application:
Independent Claims: These are broad and stand on their own, covering the core features of an invention. They do not rely on any other claims.
The hypothetical “claim 1” above is an example of an independent claim.
Dependent Claims: These are narrower and add further detail or limitations to independent claims. Dependent claims often protect specific variations or applications of the main invention.
For example, continuing on from the example “claim 1” above, claim 2 might recite: a seating apparatus according to claim 1, wherein the or each ground-engaging member comprises a leg. Claim 2 refers back to claim 1 and is thus considered a dependent claim.
Dependent claims can offer fallback positions in case the independent claim is not valid. For example, a patent examiner might find prior art that renders a broad independent claim not novel. In such cases, a patent attorney might amend the independent claim to incorporate technical features from a dependent claim to overcome the patent examiner’s objection.
3. Why Are Patent Claims So Important?
a. Defining the Invention
During examination, patent offices scrutinise the claims to determine whether the invention you have applied to protect is in fact novel and involves an inventive step. Your claims need to be sufficiently broad to protect against third party workarounds, but they can’t be so broad that they cover things which already exist, in which case your claims wouldn’t be valid.
Your patent attorney’s goal is to maximise the breadth of your claims while ensuring the invention they define remains novel and inventive over the prior art. This is a delicate balance which can involve a bit of a tug-of-war with patent examiners.
b. Defining the Patent’s Legal Boundaries
The claims are also instrumental in determining whether your patent has been infringed by a third party. Generally speaking, patent infringement is likely to have occurred if a third party exploits a product or process that falls within the scope of your claims. Without carefully drafted and broad patent claims, competitors might find ways to “design around” your patent, producing a similar product or process while avoiding patent infringement.
Indeed, patent attorneys are often engaged by such third parties to examine patents and advise on how to design around the claims of a patent.
b. Providing Clear Protection in Disputes
In the event of a legal dispute, patent claims are the focal point of litigation. Courts will interpret the claims to decide whether a competitor’s product or process infringes upon your patented invention. The clearer and more carefully written the claims, the better your chances of enforcing your patent successfully.
c. Increasing Commercial Value
Well-drafted claims not only protect your invention but can also increase the commercial value of your patent. Broad claims can enhance the marketability of your patent to investors or potential licensees by offering stronger and more comprehensive protection. Conversely, narrow or weak claims may limit the patent’s attractiveness (and may, inadvertently, reveal to competitors where the holes are in your protection).
4. Drafting Strong Patent Claims
To ensure that your patent claims provide sufficiently broad protection, consider the following key strategies:
Broad, Yet Precise Language: Claims should be broad enough to cover potential variations or modifications of the invention, but not so broad that they risk being rejected by IP Australia during examination. For example, the 12V brushed electric motor used in your prototype might be referred to as “a driver”, while the screws and bolts used to hold everything together might be referred to as “fixing means”.
Cover Multiple Embodiments: Draft dependent claims to cover different and specific embodiments or applications of your invention. These claims can define potential fallback positions to retreat to in case the original independent claims is too broad.
Anticipate Infringement Loopholes: Yes, your invention in its current form might be optimal, but it’s important to put yourself in the shoes of your competitors and think about how they might try and do it differently. Indeed, after a good patent attorney prepares a claim, they will then imagine how a competitor might try to workaround the claim, the goal being to continue refining the claim language until such workarounds are no longer possible. A dedicated patent attorney will go through this drafting and redrafting process again and again until they arrive at a maximally broad claim which is at least novel.
5. Common Pitfalls to Avoid
a. Overly Narrow Claims
While it’s essential to be precise, overly narrow claims can limit the protection your patent provides. If your claims are too specific, competitors may easily design around them by making small changes to their products. For example, if a claim includes a feature, component or step that is not absolutely essential to the invention, then a third party could omit that feature and avoid infringing that claim.
b. Insufficient Support in the Specification
Australian patent law requires that each claim must be supported by the description (or “specification”) of the invention. If the claims include elements that are not adequately described in the patent application, they may be rejected.
c. Failure to Account for Future Developments
When drafting claims, consider not only how your invention functions today but also how it may evolve in the future. This foresight can help ensure your patent remains relevant and protected as the market or technology develops.
Relatedly, this is one benefit of starting the patent application process with a provisional patent application; once filed, you can continue to refine your invention and include any developments in the specification and claims of your eventual standard or PCT patent application.
The claims of your patent specification form the foundation of your patent’s strength and enforceability. By carefully drafting claims that strike the right balance between broad protection while remaining novel and inventive over the prior art, you can maximise the legal and commercial value of your patent.
Indeed, many first time patentees believe that getting a granted patent is the be all and end all - the holy grail of the patent application process. However, the quality of the patent is what truly matters. Indeed, a granted patent with narrow claims that are easy to workaround is often of little-to-no commercial value, and not worth all the time and cost you could have directed elsewhere in your business.
