I asked Donald Grant Kelly of the PTO to answer two patent questions I get all the time from inventors.
Q:What types of patent claims are best for the inventor to pursue?
A: Broader claims are best. Claims that are narrow can easily be patented but are of little use, since a competitor can simply eliminate or alter small details and circumvent the claim. Of course, courts occasionally find that certain claims are too broad and hold the claims invalid. The inventor should include in his/her patent application the broadest claims that the invention will support and the narrowest claims the inventor can accept.
Q:Are there any clues in the wording of claims that would tell inventors that their patent claims will not offer much protection?
A: Yes. Claims that include superfluous information or details are definitely in trouble. A careful analysis of the claim should be made to see if any element could be eliminated or altered and still perform the inventive function. If so, the claim is weak and can be circumvented by another structure or design. Savvy competitors do this every day.
Don Debelak (firstname.lastname@example.org) is a new-business marketing consultant who has been introducing new products for more than 20 years. He is the author of Bringing Your Product to Market (John Wiley & Sons, $19.95, 800-225-5945).
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