What are claim amendments?

What are patent claim amendments?

Claim amendments are a natural part of the utility patent process. A typical utility nonprovisional patent application will receive at least one Office Action rejecting the claims. It is highly likely that your Office Action response will contain a combination of claim amendments and arguments in order to overcome the rejection. Amendments are, therefore, common and to be expected in the normal course of patent prosecution.

The issue is not if claim amendments will be required, but how such amendments should be written. What is at stake is the scope of the claims that will ultimately end up in the utility patent you’re hoping to obtain. If your claim amendments are too narrow, the competition will find easier ways to design around your patent.

How to amend patent claims

At the outset, I would not recommend doing this yourself. Most Office Actions will contain rejections that require precise and detailed responses. If you mess it up, you will waste time and risk getting on the Examiner’s nerves. So have your patent attorney prepare the response, but here are some things to look out for.

Most Office Actions will cite prior art patents and other literature. The goal of amending the claims is to include one or more features not disclosed or suggested in the prior art. Balancing a tightrope is the name of the game here. Add too many features, and your claims will become too narrow. Add too few features, you may risk another rejection.

Each time you amend a claim, you are potentially giving up some scope of protection in order to gain the rights to a granted patent. Think of the patent process as a negotiation with the US government. You start off by asking for a wide scope of protection, which may be arguably broader than what you’re entitled to. The Patent Office rejects your broad claim, so you go back with a modified lesser request. This back-and-forth process is basically what happens when you get an Office Action from the patent examiner, and respond with amended claims.

Amend independent or dependent claims?

As you contemplate a strategy for a response, you’ll need to consider whether to add the features to the independent claims or dependent claims. Generally, patent owners prefer to keep any specific and limiting claim language to the dependent claims so as to maintain a broader scope of protection with the independent claims.

While your patent attorney or agent can deal with the strict format on how claim amendments must be presented, it would be helpful to provide them with your feedback on what you hope the independent claims will accomplish. In other words, what features would you prefer to leave out of the independent claims so that competitors will not find an easy way out of infringement?

Would potential claim amendments be too narrowing?

Be careful of adding too much to your independent claims. Sometimes, it’s necessary and you can’t help it. Other times, you might get away with adding fewer features. Less is more when it comes to claiming your invention, especially in the independent claims.

There is an inverse relationship between claim scope and allowance. The narrower your claims, the greater chance of an allowance. The broader your claims, the greater risk of rejections. Ideally, your claims should cover the sweet spot.

How will your accompanying arguments affect your patent rights?

Keep in mind that arguments and remarks made in conjunction with claim amendments can serve to limit the scope of protection if and when you enforce your patent. Again, such commentary may be unavoidable due to the prior art cited against your patent application. Just be mindful of the consequences of your arguments made with respect to your claim amendments.

Need to respond to a patent rejection?

Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can amend your patent claims to overcome prior art rejections.

How useful was this post? (Did you find the information you needed?)

Click on a star to rate it!

Thank you for rating my post!

We want to do better.

Could you tell us what was missing in our post?

Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

Follow us

Copyright © Vic Lin 2023