PTO Clues
Our expert answers your common patent questions.
By Don Debelak
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.
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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 (dondebelak@uswest.net) 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).