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PATENT PROSECUTION SERVICES: Achieving Superior Patent Claim Coverage
Unlike some practitioners' advice, Aexius does not typically recommend seeking a notice of allowability with the first filing, since that probably indicates that the claims are too narrow. This type of "instant gratification" may mislead applicants and give false hope to inventors (and any investors) of the prospects of their potential patent's strength. When a patent examiner reviews the claims and compares each claim against the backdrop of the prior art, it may be found that the broadest ones should be rejected, and the narrower ones allowed. The United States Patent and Trademark Office (USPTO) recommends this approach in claim drafting. This is just one of many important legal implications when drafting patent application claims, but it can be especially important where a patent is likely to be the subject of litigation. When the claims in an issued patent are too narrow, this means that the patent will not be able to capture as many possibile infringing variations as it likely could have captured. It makes seemingly insubstantial variations a greater threat to the inventor / patent applicant. For this very reason, applicants should be wary of practitioners that sell guarantees of "Patent Allowance with First Filing" or "No Rejections," because the likely strategy used by such practitioners is to draft extremely narrow claims, resulting in a very thin patent that will not catch many infringers. In some cases, where a client does not care about claim breadth (i.e. just seeking "patent pending" status), the client should be wary of the possibility that competitors may easily design around a thin patent. Some clients prefer faster prosecution, and thus are willing to take this risk. Thus, unless the particular case warrants otherwise, or the client desires otherwise, we typically recommend a strategic "broadest claims first" approach to try to maximize the applicant's claims in a patent. Learn more.