Sometimes those who file a draft claims get a little too cute for their good. The patent abstract includes main details of the invention is a concise format. To save time and money you should write your rough set of the patent claim to start the patent writing process. Then you should prepare patent drawing with element list, flow diagram or flowcharts to explain the best mode of performing the invention. Once done, contact a patent expert attorney to finalize a patent draft. The patent attorney will have to spend less number of an hour if you provide proper information in a paper format. However, this might be not the case with every invention. While writing a patent claim to protect invention by capturing novel and inventive feature of the invention is skilful task. The main problem for an inventor is to write a strong patent application by developing patent claim drafting strategy to claim different aspect of the invention in a set of a patent claim.
Let’s use a specific patent as an example to illustrate the problem, which is one I see all too frequently when inventors represent themselves. US Patent No. 6,360,693 is simply titled Animal toy. If you look at the illustrations contained in the patent you realize this patent covers a great many things, including things that are obviously in the prior art. So, yes, on March 26, 2002, the United States Patent Office issued a patent on a what can be described as a stick.
Claim 1 specifically reads:
1. An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and (b) at least one protrusion attached at one end thereof said main section and extending a predetermined distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section; and wherein said animal toy is adapted to float on the water.
Firstly how is it possible that someone could have obtained such a ridiculously broad claim in the first place? Sometime when you ask for a ridiculously broad claim on what a patent exmainer considers ridiculous invention they will give you what you seek. Secondly, was there anything here that could have been patented? The answer is perhaps but the drafting of the claim was so broad that that nothing survived.
Let’s take a look at some of the dependent claims filed. Claims 2 through 15 read
- The animal toy of claim 1 wherein said main section is formed of a rubber.
- The animal toy of claim 1 wherein said main section is formed of a plastic.
- The animal toy of claim 1 wherein said main section includes a wood.
- The animal toy of claim 1 wherein said main section includes cellulose.
- The animal toy of claim 1 wherein said main section includes a flavoring.
- The animal toy of claim 1 wherein said main section includes a scent added thereto.
- The animal toy of claim 1 wherein said main section is rigid.
- The animal toy of claim 1 wherein said main section is flexible.
- The animal toy of claim 1 wherein said main section is chewable.
- The animal toy of claim 1 wherein said main section includes a material that is lighter than water.
- The animal toy of claim 1 wherein said animal toy includes a fluorescent coating.
- The animal toy of claim 1 wherein said animal toy includes a camouflage coating.
- The animal toy of claim 1 wherein said animal toy is formed of wood particles.
- The animal toy of claim 1 wherein said animal toy is formed of wood chips.
A dependent claim incorporates by reference a previous claim and builds upon that previous claim to add additional specificity. Notice how each of these dependent claims refer back to and therefore depend on claim 1. Thus, claim 2 is to stick covered in claim 1 where the main section is made of rubber. Claim 3 is to stick covered in claim 1 where the main section is plastic. Claim 8 is to stick covered in claim 1 where the main section is the grid. Claim 12 is to stick covered in claim 1 where the main section has a fluorescent coating.
If the broadest independent claim is not allowable what is the likelihood of that claim with 1 addition being allowable?
When you do this and claim 1 is ridiculously broad there is very little reason to suspect any of yours dependent claim will be anything other than ridiculously broad, and therefore unpatentable or ultimately invalid. The other problem with this type of patent drafting which is extremely common among inventors is that you do not get any useful information form the patent examiner who is doing your job will simply reject your claims. If you make it easy for patent examiners to reject your claims. If you make it easy for the patent examiners to reject your claims after having done a quick or shallow research this is what will happen. Then if you amend your claim to overcome the prior art located by the examiner in that quick, shallow search they will do a more comprehensive search and almost certainly reject you again. The problem is second rejection will be made final, which means you are going to need a file a continued examination both of which essentially cost you a new filing fee, to get further consideration.
When you file an application you absolutely want to include a claim that you believe at the time of filing could be allowed by the examiner. Indeed file a claim of varying scope, from broad to very narrow and everywhere in between.
You want to draft every independent claim so that:
- The most generic version of your invention is defined.
- All of the pieces and parts are connected.
- There is at least some difference when compared with the prior art.
A strong patent always has a good, valid, broad claims, but will always have layers of claims with more specificity. This is true because while the narrower the claim the easier it is not to infringe, the narrower the claim the harder it is to b invalidate later. So a patent with only broad claims that are obviously invalid is completely worthless. A patent that has only very specific claims that are easy to get around is similarly not worth much. But a patent that has multiple claims at various levels of specificity can be quite strong.