What are allowed or allowable claims in a utility patent application?

So, the examiner indicates that your utility patent application has allowable claims. Congratulations! The goal of filing a utility patent application is to get at least one patent with reasonably broad claims. If you have received a Notice of Allowance or Office Action identifying certain allowable claims, that is no small feat. Your patent journey, however, might not be over. Make sure you understand the scope of the allowable subject matter. What if the allowable claims are too narrow in scope? What if you want to pursue claims covering completely different features or combinations? Let’s look into your options when you finally encounter some good news in your patent application.

What are your options when you have allowable dependent claims?

A typical scenario occurs when a patent examiner reviews your utility patent application and issues an Office Action rejecting nearly all your claims. You then file an Office Action response containing both claim amendments and arguments. As a result, the examiner may issue a Final Office Action indicating that certain claims are rejected, but a few dependent claims may be allowable. It is at this point that you have a decision to make.

Should you take the allowable subject matter or fight for broader claims? Can you do both?

A helpful way to process this decision is to look at the scope of the allowable dependent claims. Would the scope of such claims provide you with some real firepower to block competitors? Or, would they be able to design around your claims quite easily? If the allowable subject is so narrow that it would not even cover your commercial product, then it may be worthwhile to fight for better claims.

For some clients, obtaining a granted utility patent holds some value even if the claims are less than ideal. If that is the case, then you can choose to take the allowable subject matter to obtain an earlier issuance of the utility patent.

Will agreeing to allowable subject matter forfeit your right to pursue further claims?

No, you may still file a continuing application to pursue more claims of differing scope. The decision does not have to be one or the other. You can have both! First file a response to take the allowable claims, and then file a continuing application to pursue different claims. This strategy leads to an earlier patent grant while reserving your rights for pursuing further patents. Ideally, you may end up with a patent family that make it difficult for others to avoid infringement.

What can block you from pursuing additional claims?

Failure to file a continuing application while your original application is pending will block you from pursuing additional claims. In other words, you must file a child application before the parent application is abandoned or granted. Some of the biggest regrets of patent owners involve the decision to forego any further patent filings, only to discover that competitors have found ways to avoid infringing their existing patent.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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