The claims of a patent are immensely important to the patent, and they are a topic we have not discussed on PatentDirection! So here we go. Please take a minute to read our 4 reasons why your patent’s claims will make or break your patent.
1 | The claims define the invention
In patent law, we define the boundaries of an invention using patent claims. At the end of every patent there are about 20 one sentence claims. These claims define the boundaries of what the inventor is claiming as her invention. Please let me emphasis this point. Claims are the most important part of the patent! The claims of a patent can be likened to the boundary line of a parcel of real property. In the same way that a boundary line of real property peripherally defines the limitations of the property holder’s plot of land, the claims of the patent peripherally define the limitations of the invention. These limitations are interpreted and given meaning by reading another part of the patent called the detailed description. If you have ever heard someone talk about how narrow or broad a patent is, they are referring to how broad or narrow the claims are. Broad claims are much more valuable to the patent holder than narrow claims because a competitor’s product is much more likely to infringe a broad claim than a narrow claim.
Consider this patent for a motorized skateboard. Claim 1 of the patent, located on the top right corner of Google Patents, describes a motorized assembly. As you can probably tell, claim 1 is a fairly broad claim. It describes a motor mount and torque transfer mechanism. This is a great claim! Now read claim 1 of this patent for a motorized skateboard. Can you tell that the second one, while claiming a different invention, is much more narrow? They even had to include a rechargeable battery in the independent claim! If a competitor used a replaceable battery, they probably would not infringe the claim! A broad claim, like the claim in the first patent, would not have included the battery in the independent claim at all. It adds no value because using a rechargeable battery is not a new idea and unnecessarily limits the claim.
2 | In litigation, your claims will be compared to the competitors product
In patent litigation, the trial court will determine whether your competitor’s product infringes your patent by comparing to the competitor’s product to your claims. In other words, a product will only be infringing your patent if every line of your claims can be found in the competitor’s product. This gets us back to why broad claims are much more valuable than narrow claim. If there are less features in the claim, it will be easier to find those features in the competitor’s product. If your claim recites a skateboard assembly powered by a rechargeable battery and your competitor’s product uses AAA replaceable batteries, you’re going to have a much more difficult time proving that they infringe your patent. Pay close attention to the claims of a patent and ask yourself how well they embody the broad features of your invention. If a competitor comes out with an identical product, you’re going to have to prove that your claims can be read onto their product.
3 | Using the wrong words in a claim can invalidate your patent
There are judicially defined words in patent law that have specific legal meaning. I’m not going to go into what some of those words are in this blog post but you should know that using these legally defined words incorrectly can be a bases for invalidating claims in your patent. Moreover, patent law is constantly evolving and giving special meaning to more and more words. When these words are legally defined, every patent is held to the new meaning of that word, even if it was granted prior to those words receiving special meaning. As a result, there have been many cases where patents are held invalid in court for incorrectly using these legally defined words. When we draft patents, there are some words that best practice dictates we avoid using completely. Some of these words can be found in a lot of older patents. Be mindful of these words!
4 | Investors want to know how narrow your patent is
So we’ve established that broad claims are more valuable than narrow claims. Why do we care if we never plan on litigating our patents? Well, savvy investors know what to look for in a patent. They know the difference between a broad claim and a narrow claim, and big time investors can probably value patents on the spot as well as anyone can. They won’t be impressed that your startup has a patent until they have read the claims to determine if the claims are sufficiently broad.
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