Filled with complexity and legal jargon, the patent system can understandably be confusing for non-experts. As patent attorneys, we focus on communicating these topics effectively to ensure that clients understand “what they are getting”.
My colleague, Suzanne Oliver, recently wrote a blog post on a decision by the European Patent Office’s Enlarged Board of Appeal, relating to claim interpretation. This got me thinking about how we communicate what a patent ‘claim’ is in the first place.
Claims are commonly described as defining the scope of protection provided by a patent. To help explain more precisely what this means, consider the following example claim set for the invention of “a chair”:
- A chair, wherein the chair comprises a first leg.
- The chair of claim 1 comprising a second leg.
- The chair of claim 2 comprising third and fourth legs.
Claim 1 is an example of an “independent” claim: it stands alone and does not reference any other claims. Claims 2 and 3 are known as “dependent” claims due to their dependency on the preceding claim(s). As claim 2 is dependent on claim 1, it may be interpreted as a chair with two legs. As claim 3 is dependent on both claims 1 and 2, it may be interpreted as a chair with four legs. The dependent claims function as ‘back up’ positions to the main independent claim, so for now, we will focus on claim 1.
Returning to the concept of “scope of protection”, claim 1 covers a chair with one leg. This means that if the above claim 1 is included in a granted patent in a given territory, a chair having one leg which is the subject of infringing acts (for example manufacturing or selling), without consent of the patent owner, and within that territory, would fall under the scope of claim 1. The patent owner may then enforce the patent against the infringer.
Therefore, when we draft patent claims, we try to consider a client’s strategic aims, and this may include halting or hindering such third-party activities.
Putting forward a claim with the fewest features possible can broaden the scope of protection and may catch more infringing products than a narrow (usually longer) claim. The above claim 1 is particularly broad because it will cover a chair with any number of legs despite only reciting a “first leg”. For example, a chair with six legs will include a “first leg”, in addition to five additional legs, thereby falling under the scope of claim 1.
However, a patent claim must also be novel, amongst other requirements. This novelty requirement means that the claimed product or method must not be publicly known prior to the date of filing of the patent application. Returning to the above claim set, let’s assume that we live in a world of one-legged chairs, with these being well known prior to the filing of the patent application. One-legged chairs would therefore be “prior art”. In such a world, claim 1 as presented above would not meet the novelty requirement and would have to be altered.
So, let’s suspend disbelief for a moment and assume that in this one-legged chair world, no one has even considered adding a second leg to a chair. In such a world, the following claim set could restore novelty:
- A chair comprising a first and second leg.
- The chair of claim 1 comprising a third and fourth leg.
Ideally, we would be aware of the one-legged chair prior art prior to filing. This would enable us to draft the claims accordingly. However, it would be possible to amend the claims to the second claim set after filing, as may be necessary to overcome prior art identified during the examination process. It is therefore quite common for broad claims to be put forward in a patent application and then narrowed during the examination process to overcome arising (ie previously unknown) prior art.
The need to overcome the one-legged chair prior art means that the scope of protection provided by the new claim 1 is narrower than that of the previous claim 1. Now third parties manufacturing or selling single legged chairs would not infringe the patent. However, the inclusion of one or more additional legs would then be infringing.
It will be appreciated that the above discussion relates to a simplified example. Once the novelty test has been passed consideration must be given to inventive step (some information on inventive step is included in a previous blog post). Additionally, claim interpretation is also critical (as considered in the blog post about claim interpretation mentioned above).
This is why we choose our words very carefully during the patent drafting process to ensure that the claims will be interpreted as intended, and that clients understand the scope of protection provided by their claims.
If you have any questions relating to the above, do not hesitate to contact us, we’d be happy to discuss the matter further!
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