For emerging companies, a patent application should combine legal skill with technical and business knowledge to produce a document that will serve as a foundation to the company’s valuation and future profitability. Unsurprisingly, patent applications improve when the people who best know the company’s technology and business strategy (e.g., the company’s founders, technical directors, or in-house counsel) are meaningfully involved in drafting and reviewing the application.

The most important part of a patent application is the claim section. This is the section that defines the scope of the patent-holder’s right to exclude others from practicing its technology. If there is any section of a patent that should be meticulously aligned to a company’s technology and business objectives, the claims are that section. Yet, a patent’s claims are also the section that is most burdened by legal complexities, and, for this reason, this is often the section that clients scrutinize least closely.

To provide helpful, substantive input on claim strategy, founders do not need to become experts in patent law. But they should, at a minimum, understand the objectives that a well-drafted set of claims aims to achieve.

Background on Patent Claims

Before discussing strategy, some background on claim structure may be helpful.

• Claims are generally structured as lists of components (or “elements,” in patent parlance).
• A patent application can have any number of claims. The US Patent and Trademark Office (USPTO) permits up to 20 claims without charging extra fees.
• The “independent claims” are generally the broadest claims in a patent application, and the “dependent claims” refer back to the independent claims and recite additional elements.
• Although the dependent claims refer to and incorporate the elements of an independent claim, each claim stands on its own for purposes of infringement and validity.
• Most claims are drafted as non-exclusive (i.e., “open”) lists. The word “comprising” is used to trigger this effect. Provided that your claim is drafted in open format, a competitor’s product will infringe your claim if the product contains each and every recited element. It does not matter if the competitor’s product also includes unclaimed features because the claim does not exclude additional elements.

Claim Strategy

Due to these structural considerations, independent and dependent claims may be drafted to serve different objectives.

Independent Claims

For a company’s initial patent filing, at least one independent claim should generally be drafted so that it is as broad as it can possibly be without sacrificing strong arguments for patentability. Ideally, the claim set will be drafted such that it would be impossible for competitors to achieve the benefits of your technology without infringing at least one of your independent claims.

A reasonable way to frame your thinking is to first consider what benefits your technology achieves relative to the prior art (e.g., almost everything that predates the filing of your patent application). Then, ask what are the novel and nonobvious structures or steps in your technology that are most essential to achieving these benefits. Finally, consider whether it is possible to achieve the same or similar functionality by other means.

Your objective is then to ensure that your independent claim recites the structures or steps that are essential to achieving your technology’s benefits but does so using language that is: (1) sufficiently broad to cover all other possible means of achieving the same or similar functionality; but (2) does not encompass the prior art. Where your technology has multiple novel structures that independently contribute to your technology’s benefits, you may wish to draft multiple independent claims or file multiple patent applications.

To provide a simple example, consider the inventor who first developed the spinning plate in a microwave oven. This invention beneficially allows the microwave oven to heat food more evenly. This benefit is achieved by moving the food relative to the energy source. A spinning plate is one way (in this case, the best way) to achieve the benefit, but a determined competitor could develop alternative mechanisms. In this example, an independent claim could be directed to a microwave oven comprising a support that moves relative to an energy source. The spinning plate embodiment could then be recited in one or more dependent claims.

In some cases, it may be advantageous to recite background structure in the independent claims so that a key feature can be more precisely recited or situated in its operating environment. In these cases, the background recitations should include only what is strictly necessary for the invention’s operation. If there is even a single claim element that could be omitted by a copyist, that element should either be removed from the claim or it should be drafted more broadly so that it cannot be omitted.

Dependent Claims

Dependent claims are, by definition, narrower than independent claims. This means that a competitor cannot infringe a dependent claim unless it also infringes an independent claim. For this reason, dependent claims are best used to improve a patent’s strength, rather than its breadth.

From a strategic perspective, dependent claims serve two principal objectives.

First, dependent claims can be used to expedite a patent’s issuance by encouraging the patent examiner to review many different potentially patentable features in a single office action. Even if the examiner concludes that the independent claim is too broad, one or more of the narrower dependent claims may nevertheless be deemed allowable.

Second, dependent claims can be used to prevail in an infringement lawsuit in the event that an accused infringer is successful in showing that the broad independent claims are invalid as encompassing the prior art. Dependent claims can thus be productively considered as tools to support a litigation strategy.

Under this framing, a key objective in drafting dependent claims is to identify elements in your technology that satisfy the following three conditions:

• Could reasonably be found to be novel and nonobvious, even if there is prior art teaching the subject matter recited in the independent claim;
• Would likely be infringed by a competitor practicing a technology similar to yours; and
• Contributes materially to the benefits achieved by the technology.

In many cases, the independent claims should recite the broadest form of the invention, and the dependent claims should layer in additional inventive features, each of which adds meaningful value to commercial embodiments of the invention. If your claim set is drafted in this way, even if the independent claims are deemed invalid, you will still have a path to prevail in an infringement lawsuit by relying on a series of strong and valuable dependent claims.

Conclusion

A foundational patent application is one of the most important legal documents that technology-focused emerging companies create. You can expect your patent attorney to be an expert in the law, but she or he will not know your business strategy or your technology as well as you do. We believe client involvement makes for better patents, and we endeavor to provide our clients with enough legal background that they can be meaningful, productive partners in the patent process.