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.

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