The US patent system was initiated within the US Constitution: “The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”¹ The exclusive right of inventors was then codified in the patent system.² In exchange for an enabling disclosure of an invention,³ a patentee is granted the exclusive right from issuance to a term of twenty years from the original filing date.⁴ Patents are assets⁵ for inventors and businesses to protect their technology with a limited monopoly while commercializing their inventions. The patent system provides this limited monopoly in exchange for inventors publicly disclosing their inventions, thereby promoting the future development of technologies.

Patents vary in scope and strategy, and not all patents are created equal. Before seeking patent protection, an applicant should understand their goals for a patent. A patent’s goals may be tailored based on an understanding of the applicant’s business strategies and objectives. Some patents are obtained as commodities on developing technologies, which may be employed for protection of future products, as potential licensing strategies, or as assets on a balance sheet. Other patents protect a particular product that has an expected commercial success and a high risk of copying by others. When protecting a product, it is beneficial to also obtain protection on potential alternative designs. Patents may also be obtained as a defense (or counter-offense) against a competitor’s patents. Patents are often effective marketing tools with consumers — patents are associated with innovation, ingenuity, authenticity, and government-certified exclusivity.

Utility patents conclude with claims, which define the scope or metes and bounds of the exclusive property right.⁶ Patent claims are drafted with an eye toward the goals or strategies for the patent and underlying business. In 1892, the US Supreme Court acknowledged the complexity of drafting patent claims: “claims of a patent … constitute one of the most difficult legal instruments to draw with accuracy.”⁷ During examination at the United States Patent & Trademark Office, a patent examiner examines the claims, conducts a prior art search, and issues an office action rejecting or allowing the claims.⁸ The patent applicant is given an opportunity to amend the claims and argue for the patentability of the claims.⁹

An invention (and the corresponding patent claims) may be directed to a process, a system, an article of manufacture, or a composition of matter.¹⁰ Many inventions may be protected by more than one of these statutory classes. While preparing a patent application, an initial determination is to identify which of these categories to pursue. Article and composition claims may be more financially beneficial — permitting a patentee to seek royalties on an entire article, product, or composition. In contrast, patent royalties for method claims may be potentially limited to a portion of an overall process, such as a subset of steps to manufacture a good or provide a service. System claims often include method steps, which may face the same enforcement limitations.

The patent applicant should consider the potential detectability of their claims. For example, a competitor’s apparatus (product) may be readily available to obtain and inspect to detect whether the competitor is infringing a patent. Conversely, with method and system claims, it may be difficult to detect infringement. For example, if the patent claims are directed to a method of manufacturing, a competitor’s manufacturing process may not be publicly available for inspection. Likewise, if the patent claims are directed to an internal system, a competitor’s internal systems may not be available for inspection.

A patent applicant may desire to pursue claims of varying invention categories or statutory classes. Apparatus claims and composition claims may permit larger financial returns and facilitate detection of a competitor’s infringement. Depending on the state of the art, method claims or system claims may permit a different scope of patent protection, which may be broader than the protection afforded by the apparatus or composition claims. Pursuing claims of varying scope should result in various layers of protection.

In order to obtain a utility patent, the invention must be useful,¹¹ novel,¹² and nonobvious.¹³ The novelty and nonobvious nature of the invention are examined in view of the prior art. In order to seek broad patent protection, it is advantageous to pursue broad patent claims. Conducting a prior art search in advance of preparation of a patent application can be useful in obtaining patent protection that can withstand challenges. An understanding of the state of the art permits a patent applicant to seek a scope of protection that is reasonably broad in view of the prior art but does not inadvertently seek to claim the prior art itself or an obvious variant thereof. Conversely, an understanding of the state of the art may also avoid a pursuit of claims that are too specific or narrow in view of the prior art to avoid surrendering the breadth of protection that is otherwise available to the applicant. Generally, the applicant should pursue claims of a broad scope while also pursuing claims to narrower features. Narrower claims bolster the claim set and help justify the broad scope while also providing claims to rely upon when faced with a rejection or validity challenge.

As the study of the prior art reveals which features of an invention may be novel over the prior art, the applicant can focus on claiming these novel features. The applicant can also disclose in the specification alternatives, benefits, and advantages of the novel features over the prior art. The alternatives may be relied upon to avoid narrowing the claims to a specific embodiment of the invention. The benefits and advantages may subsequently be relied upon to overcome an obviousness inquiry during examination or during a validity challenge by a competitor.

Another caution is to draft claims directed to a single party for infringement. For example, if a claim would require multiple parties to infringe, then enforcement, while possible,¹⁴ may be difficult or undesirable. The applicant should take into consideration the condition of the article at the point of sale and draft the claims accordingly. Any claim that requires a customer or end consumer to infringe is unlikely to be enforced. If claiming a method, the applicant should target method steps practiced by a competitor and avoid method steps that are performed by others or by multiple parties. When claiming a system, the applicant should consider that different assemblies, or subassemblies, may be provided by separate parties.

In today’s global market, it is common that many articles are assemblies with subassemblies or components provided from various suppliers. For an enforceable patent against a supplier, a broad claim should focus on the subcomponent, subassembly, or relevant method step(s). To maximize damages against the entire product, system, or method, additional claims should be drafted toward the product/system/method at large. Claims of varying scope provide the applicant with protection against both suppliers and end manufacturers with multiple options for leveraging the patents.

In the context of certain technologies, (e.g., software and biotechnology), the applicant should avoid claiming the invention as a law of nature, a natural phenomenon, or an abstract idea¹⁵ to avoid rejection or invalidation. If claims are drafted that may be broadly interpreted to risk one of these categories, the applicant should consider additional narrowing claims that further avoid these risk categories.

While patent claims with a broad scope of protection may be the goal, if these claims are interpreted as vague or indefinite, then the Applicant may face a rejection or invalidity challenge.¹⁶ As discussed with other strategies, the Applicant should identify potential risks associated with broad wording and add further specific claims narrowing these limitations to withstand a challenge of indefiniteness.

Broad claim terminology can also be interpreted as nonce words if a claim limitation is generic and has is “no specific structural meaning”¹⁷ and “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof,”¹⁸ which may be a narrower interpretation than an ordinary meaning in view of the specification and file history.¹⁹ The applicant should use claims of varying scope to obtain an interpretation under the ordinary meaning.

The applicant should employ care in word selection when preparing the patent claims and the patent specification. Understanding a client’s business extends beyond their intellectual property and marketing goals. The applicant should also understand the product liability concerns of the business to avoid terminology in the patent application that is inconsistent with product liability efforts.

Careful word selection is a caution to be applied throughout the prosecution of the patent application as well. Remarks that are made during the prosecution of the application may be relied upon to limit the scope of the patent.²⁰ Likewise, a goal of patent prosecution is to keep remarks to a minimum to avoid prosecution history estoppel.

Finally, and once a patent is obtained, the patentee should properly mark the product with the patent number to optimize potential patent royalties.²¹

Various strategies for obtaining enforceable patent protection are outlined herein. An appropriate strategy coordinates with the applicant’s business and goals and is sufficiently flexible to be updated with evolving law and procedures.