Drafting claims that balance patentability and enforceability is both an art and a science. The stakes are high as claims not only define the scope of protection, but also determine the difference between a valuable patent and an invalid/unenforceable one.
Know Your Target
The first step in claim drafting is to understand your client’s goals and market realities. Whether the aim is to deter competitors, support marketing efforts, or attract investments, tailoring claims to target specific infringers is crucial. Globalization calls for consideration of complex supply chains, e.g., who is the end-user, manufacturer, suppliers, distributors, and where does the competition fit; what do they infringe; and where are they located. Complex technologies such as client-server-based technologies further complicate enforcement as the claims should be drafted for direct single party infringement, rather than indirect and/or divided infringement which are more burdensome and difficult to litigate.
Strategic use of continuation applications may be useful when protecting complex technologies and developing markets. For example, continuations may be used as a “safety net,” allowing for adaptability as markets evolve, new developments arise, or competitors pivot. This flexibility ensures that claims remain relevant, even in rapidly changing technological landscapes. However, a successful continuation strategy requires a well written specification and careful consideration of a client’s goals and resources. For example, the new USPTO fees pertaining to continuations make lengthy continuation practices more costly and some foreign jurisdictions have significant limitations for filing continuing applications. Accordingly, more nuanced approaches may be necessary for clients that have global aspirations or more limited budgets.
Creative Claim Drafting
Diverse claim scope is a cornerstone of enforceable patents. Under some circumstances, it may be desirable for independent claims to span apparatus, compositions, systems, and/or methods, while dependent claims can introduce nuanced variations. In many instances, apparatus/compositional claims are preferred, however, method claims, may offer unique benefits such as no marking requirement under certain circumstances. As another example, strategic use of preamble variations and claim differentiation may be powerful tools in developing diverse claim scope throughout a claim set.
Further, broadening the scope of an independent claim to cover an embodiment that lacks express support through the use of a narrower dependent claim directed to an express embodiment may be a useful technique for diversifying claim scope and targeting infringers. Adding claims during prosecution to maximize claims is also a preferred practice in most circumstances (e.g., in the U.S. 3 independent claims and 20 claims total requires no additional USPTO fees). However, practitioners should ensure creative dependent claims adhere to the requirements of 35 U.S.C. § 112(d) and MPEP 608.01(n). Ensuring proper dependency strengthens patents against invalidity challenges.
Inferentially claiming features, e.g., using functional limitations, is another powerful tool. Although functional language comes with its own challenges, functional limitations, provide greater versatility while preserving the necessary breadth. Such language can also trigger the application of 35 U.S.C. § 112(f), and prompt indefiniteness challenges, when used inadvertently or improperly.
Bridging the Divide: Tackling Divided and Indirect Infringement
Examiners are primarily focused on distinguishing prior art and are less conscious of enforcement issues such as detectability, divided infringement, and indirect infringement. Here, direct, clear, collaborative (and non-adversarial) communication with the examiner is key. For example, interviews with the examiner may be particularly effective to convey background context and reach a middle ground. To spot these issues and clearly discuss them with clients and examiners, patent practitioners should be familiar with real-world implementations of inventions, which is often obtained through clear and direct communication with inventors and/or company representatives.
Leveraging Examiner Dynamics and Analytics
Understanding examiner motivations (e.g., the count system and an examiner’s historical behavior of achieving counts) as well as examiner deadlines may also be useful to streamlining prosecution and encouraging collaboration between the practitioner and the examiner. Many examiners prioritize quick disposals to maximize counts, while other examiners rely on RCEs (Request for Continued Examination) to meet quotas. Tailoring your strategy accordingly, such as timing submissions around quota deadlines (e.g., end of December, March, June, and especially September), can expedite favorable outcomes.
Continuation practice and Track I prioritized examinations are additional tools that may be effectively used to attain desirable patent scope.
Conclusion: Strategic Claim Drafting for Enforcement Success
Strategic claim drafting can make or break a case. It is not just about securing a patent—it is about securing a patent that works in the real world in view of a client’s business goals, withstanding scrutiny from competitors, courts, and examiners alike. This often means drafting claims with an eye towards litigation; and close relationships and collaboration between prosecutors and litigators may be invaluable.
This article underscores some techniques and strategies to achieving creative, adaptable, and market-aware drafting. By embracing these practices, practitioners can better serve their clients’ goals, safeguard innovation, and maximize enforceability.
