Broader patent claims: when less is more
Before we dive into this discussion, let’s make sure we’re all on the same page about what we mean by broader patent claims. When it comes patent claims, broader does not necessarily mean more. In fact, it’s the opposite. Narrow claims state several elements, or claim limitations. Broad claims state little. The less that is recited in a claim, particularly in an independent claim, the broader the scope. Here’s a detailed explanation of how patent claims work.
Non-final Office Action vs. Final Office Action: timing matters
The non-final or final nature of the outstanding Office Action will play a significant part of your strategy in pursuing broad claims. If the Office Action is non-final, you have more leeway to argue for broader claims. If the Office Action is final, you might still be able to pursue broader claims although a Request for Continued Examination (RCE) will likely be required.
How similar is the prior art found by the examiner?
Everyone wants broad patent claims, but this desire will not matter to patent examiners who believe they have found similar prior art references. The goal is to persuade the examiner to allow claims through a combination of well crafted claim amendments and arguments. Not all differences, however, hold the same weight.
I often hear clients commenting about how certain prior art patents are used in a different industry for a different purpose. Such arguments will generally be unpersuasive to examiners. We need to dive into the structural differences between your invention and the cited references. If you are pursuing method claims, then focus on the procedural differences of your invention. What are structural steps or features are recited in your claims that are not shown or suggested by the cited prior art references?
Make sure your differences are actually recited in your claims
It’s a common pitfall for applicants to argue for a bunch of distinctions that are absent from the claims. You must make sure that your claims actually include whatever unique features that set apart your invention from the prior art. For example, if you believe that your invention of ABCD is new compared to the prior art reference showing ABC, make sure that your claim actually recites ABCD. If your independent claim recites merely ABC, your argument about the point of novelty (D) will not matter.
What if the Office Action rejects broader claims but accepts narrower claims?
This is a frequent occurrence where the examiner indicates that certain claims are allowed or allowable (e.g., dependent claims), but rejects the broader claims (e.g., independent claims). Should you take the allowable subject matter? If so, do you give up on the broader claims?
My general recommendation in these circumstances would be to take the allowable subject matter now and delete the broader claims. Notice I did not say forego or surrender. The reason for deleting the rejected claims is so that you can get your first patent granted sooner. Meanwhile, you can file a continuing application to pursue broader claims. Make sure you file your continuing application before the parent application is granted.
If allowed/allowable narrower claims are so narrow that they hardly provide any value, then you might consider fighting for broader claims instead of filing a continuation.
What if the examiner issues multiple Office Action rejections?
At some point, you may have to decide on whether you should abandon the application or appeal. This is not an easy decision, and I certainly could not provide a one-size-fits-all approach in this post. Some key factors will be the closeness of the cited prior art and the logic of the examiner’s rejections, especially if obviousness is the basis for the claim rejections.
Keep in mind that filing an appeal will not always lead to an appeal decision, as the examiner may reopen prosecution. We’ve had cases where we filed two appeals in the same application before finally getting the examiner to issue an allowance! The end result was worth it for the client, but it took a protracted battle to finally prevail and get meaningfully broader claims.