If I claim a specific method in a utility patent, do my more general methods also get protected?

Question

I'm considering patenting a method (a business model + software + UI, for use on personal computers). The method itself and the functions included in the method can be accomplished in various ways, and I can get into specifics to prove that I can accomplish this method and these more specific functions (I can detail algorithms, describe inputs and outputs, etc.), but I'd like to also protect the more general method (and the more general of the functions) from being stolen (down the road) if they are not part of the prior art. (I don't want to steal other peoples' or the public's property.)

Is it a fine line to walk? How specific can/should I get in order to maintain my rights to the more general claim(s). I don't want to seem like I'm just trying to claim everything. I simply have never filed a patent before and don't know what's already out there.

Finally, if there are other ways of performing the method or the more general functions I'm claiming (which I'd estimate that there probably are), do I still have rights to the more general functions if those functions are indeed new and non-obvious? Will the patent protect against reverse-engineering of those more general functions? (I'm using "function" in a broad sense, not a strictly computational or mathematical sense.)

Answer 1

Attorney and Inventor can draft broader claims provided it has sufficient basis in description, have novelty and non-obvious. Broader claims provide the inventor with a more valuable patent. Excessively broad claims run a greater risk of being rejected by USPTO.

MPEP 608.01(i)(d)(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description (See § 1.58(a).)

To satisfy prescribed requirement, the claims “must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.”

The lack of specificity in broad claims provides patent examiners with more room for claim interpretation and a more expansive wealth of prior art that anticipate the claims. Regardless of how broad the claims may be, their scope cannot extend beyond what is disclosed in the rest of the specification.

The MPEP states step for examiner that MPEP 2173.01

.....a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art.....

Broader claims should be more carefully drafted they eventually covers the specific features. A inventor need not worry about specific feature if it is possible to secure broader claim.

If any how inventor wish for specific claims he can go for dependent claims. in case broader claims get objection from examiner inventor can fallback to dependent claim and include features in independent claim.

Patents claiming process are vulnerable for reverse-engineer and modifications. but if broader claim covers product itself then inventor has a game.

Answer 2

Registered patent attorneys and agents include in just about every patent application a number of narrower (dependent) claims, which incorporate by reference and layer additional elements or further limitations onto the broadest (independent) claims. In the US Patent Office, the basic utility patent filling fee entitles you to file up to three independent claims and up to twenty claims total. An increasing additional fee applies to independent claims in excess of three or total claims in excess of twenty. In addition, you will have the opportunity to modify the claims during the examination (also called "prosecution") of your application, by amending, canceling, and/or adding new claims to the listing. To provide support for such amendments, it is also important to submit a detailed and thorough description of a wide range of embodiments of the invention at the outset, as you will not be allowed to claim embodiments that you did not adequately describe in the original application.

This answer is not intended to be legal advice in your particular case or to form an attorney-client relationship, and I highly recommend that you consult a patent attorney or agent.