Claiming Strategy for a Patent in Real Business Applications

One of my clients was complaining about how difficult and expensive their last patent was when it was handled by a big firm. Sadly, this is not an uncommon story, where the inventor had to suffer through several revisions of the initial application because it was technically incorrect and was missing many essential elements of the invention.

The problem was exacerbated when the response to an Office action was handed off to someone unfamiliar with the case, and the inventor essentially did all the background work to present their case to the Examiner. Oh, and by the way, over $180,000 was spent prosecuting the patent. (The Big Firm billed by the hour, too.)

Not only is this story one of utter incompetence, clearly excessive billing, but it is one of poor claiming strategy.

In many of my recent cases, I have been revising my claiming strategy. Along with some reasonably broad independent claims, and some diverse dependent claims, I have been incorporating a rather narrow but very reasonable independent claim. The theory is to get the narrow independent claim allowable in the first Office action. This gives the client a much better business decision to make: should we take what we got or should we press on for more.

Assuming that the narrow claim is allowable and the broad ones not, the examiner has made an argument that can be evaluated in a much different light than if no claims were allowed. The business owner can see at least some breadth of their patent coverage and decide how much money, if any, to invest in seeking more breadth.

At this stage, the business owner has a couple choices: one is to take the allowed claim(s) and spend no more money. Another choice is to try a response to the Office action and see if the breadth can be expanded. A third choice is to take the allowed claims and let a first patent issue, but also file a continuation or continuation-in-part to keep the prosecution alive.

If a claiming strategy has only broad claims, and they are all rejected, the business owner is faced with a choice of abandoning the application or facing a large cost to argue with an uncertain result. This is the approach that the Big Firm took in the above story, and the strategy makes sense only to the extent that the inventor is backed up against the wall to pay a hefty fee for a response. This is a kind way of saying extortion.

This discussion emphasizes that the way claims are tailored can lead to increased billings for a lawyer, but the practice does so at a disservice to the client. Because clients are often not able to understand exactly what is going on, they can be unwittingly moved into Gold Mine status from the Big Firm point of view without even knowing it.