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 should you amend patent claims?

Most Office Actions will contain rejections based on 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. You are balancing a tightrope here. Adding too many features will cause your claims to become too narrow. Adding too few features 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.

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.

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.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com