Patent Claims: Where is your scope of protection?
After delivering a historical low rate in patent allowances, the U.S. Patent and Trademark Office is now encountering a plunge in revenue. Patent applications have accumulated over the past 5 years, resulting from extended prosecution (i.e. continuations) and appeals. Since there is a tremendous backlog of patent applications, reducing the pendency of a patent application to collect issue and maintenance fees may seem like a viable option.
While more scrutiny and searches are performed during extended prosecution, a detailed history may develop, which can affect future litigation. Relatively recently though, it seems that the examiners are expediting the prosecution phase, which may result in a favorable advantage for the applicant. Prosecution is advanced and prosecution history is somewhat limited. Although the quality of the examination should not suffer, this limited pendency means less scrutiny by the examiner, which should require more diligence by the patent attorney as to scope of protection.
Since patent claims are the “metes and bounds” of the invention, which define the extent of the protection, patent attorneys are faced with the task of making sure that original drafted claims and amendments are value added; the appropriate scope of protection should be tailored only narrow enough to overcome prior art. The value of a patent claim depends on the patent’s ability to stand up in court against an accused infringer's right to challenge the validity of those claims. As the prosecution period becomes shorter and more expedited, claim drafting may require a more scrupulous review of patentability.
In general, narrow claims are more limiting, requiring an infringer to practice more limitations recited within the claim language. More limitations make it more difficult to assert patent rights against a known infringer. Additionally, patent claims that are too broad may read on undiscovered prior art, which may compromise the validity of patent. Therefore, it is recommended that prosecuting attorney focus on the value of the claims - as limitations may narrow the coverage an issued patent has over potential infringers. Additionally, it is recommended that patentability opinion work be performed prior to the filing of an application. A thorough review of the invention in light of search results should develop the appropriate scope of protection.
