by: Joseph Page
Topic Views: 1995

Long Patent Claims

Long claims are generally very easy to avoid infringing

Long Claims

    When you finally have your draft patent application from your patent agent or patent attorney, you should read the claims carefully. This is where the definition of your property lies – the scope of protection either broad or narrow is found in the claims.
    In general, if the claim is quite lengthy, the scope of protection is likely to be narrow. Shorter claims (i.e. claims having fewer words) tend to be more broad and less likely to have possible traverses. Often times, a 'traverse' exists because of an inadvertent inclusion of a term which seems innocuous. When many, many words are used in a patent claim, there is a likelihood that one of them will be limiting in ways which are difficult to anticipate.
    A patent writer must always remain mindful of possible alternative meanings some words might carry. Many of patents have finally failed for inclusion of a word which easily could have been avoided without changing the meaning of the claim. A first step to writing a good patent claim is keep it short. If your patent claim is very long in number of words – consider the possibility of shortening the claim. You might be making the claim more durable and broader in scope if you do.
    Here is a patent claim which might be too extensive:

"A retractable boat rudder system for a boat, said boat comprising a bow or forward portion, stern or rearward portion, transom, hull, and steering interface such as a tiller, steering wheel or other device; said retractable rudder system comprising: a rudder with a first end and a second end, said rudder comprised of an elongate planar member containing a pivot hole in the first end of said rudder; said rudder having a first edge and a second edge; said first edge facing rearward from said boat and said second edge facing forward and adjacent to said hull of said boat when rudder resides in a generally down position; one or more mounting bearings, said mounting bearings configured to attach to said boat with fasteners; a rudderpost, said rudderpost oriented generally parallel to said transom of said boat, said rudderpost attached to said one or more mounting bearings, said mounting bearings allowing the left and right motion of said rudderpost with said rudderpost attached to said steering interface; one or more rudder brackets attached to said rudder post, said one or more rudder brackets attached to said rudder post and extending generally rearward, said one or more rudder brackets having pivot holes corresponding to said pivot hole of said rudder; a fastener passing through said pivot holes of one or more said rudder brackets and said pivot hole in said rudder such that rudder is mounted to said rudder brackets and free to rotate in a plane parallel to the plane of one or more said rudder brackets; an uphaul line, the upper end of said uphaul line passing from the top end of said rudderpost, down said rudderpost, through a pulley fixed to the first edge periphery of said first end of said rudder, and the lower end of said uphaul line being fixed to said rudderpost; one or more compressible resistance members, a first end of said one or more compressible resistance members attached to said rudderpost and a second end of said one or more compressible resistance members attached to said first end of said rudder; wherein said rudder is configured to move between a said generally down position and a generally up position, with said one or more compressible resistance members configured to push said rudder down in said generally down position and to hold said rudder up in said generally up position".

    That is a lot of words to define a sailboat rudder! I am sure somewhere in there we can find a few words which are unnecessary and limit the scope of the claim. If you look closely, you will see that the rest of the claims appear quite short. However, don't let that fool you, since the depend upon claim 1, they too include all the limitations of claim 1. They are actually even longer than claim 1.
    Be careful with patent claims. Only include the words which are necessary to distinguish the claim from the prior art and no more. This is the foundation of a good claim with sufficient scope.

Copyright IIP 2011
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Patent Services Header Intellectual Property Patent Agent, patent attorney, patent law Patent Topic: "Long Claims" Patent Attorney Invention HOME IP Tip: #10
Sometimes the essence of an invention only comes out during the course of writing a patent application.  As the application is prepared, we often ask 'what if this element were [alternate]…?' which leads to alternate versions and even altogether new inventions.  It is not necessary to wait until an idea is firmly defined and rigorously developed prior to initiating a patent application – indeed, it is often better to being the patent application early.  In this way, the patent practitioner and engineering staff working together can produce excellent results both engineering and intellectual property. Patent Attorney, Patent law Initiating an Application
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