2

Would this counter balance the patent well? So people know exactly what my invention is but but are very limited in work around cause my independent claim is so broad and hard to work around. Its Very hard to find that right balance between narow and broad so will this be a good fit?

3

No.


If you want to show people what you're invention is, use the description.


The claims are there to get you the protection you want/need. In most (or all?) cases, this is the broadest possible protection (because else, why would you even apply for a patent and not publish a paper?).

Granted dependent claims do not offer protection. Granted independent claims define what's protected.*

Why even have dependent claims then? Because you can't know exactly how much protection you can get granted. So you start with broader claims and have dependent backup claims. If your independent claims are rejected or fall later, you can use the dependent claims as a fall back position.

So how do you design them? Like an onion. Design the independent claims then think about how they might fall and what features you can add to have the broadest possible narrower protection. Scale inwards. The ultimate goal of claim design is to have a backup claim for any prior art that could turn up which excludes only that prior art and still protects everything else the broadest claims would have protected.

If that produces too many claims or is unpractical for another reason, focus on the most important parts and start adding layers of protection in that direction.


*Unless the patent is challenged and the independent claims fall.


Example:

You invented a mobile telephone. (Imagine this in a time where there where none). Your preferred emodiment (= your core invention) of the mobile telephone uses a satellite connection to send and receive data.

Claim 1: An apparatus enabled to receive and send data, using a wireless antenna to send data and the same or another wireless antenna to receive data. The apparatus is enabled to record sound via a microphone and convert this sound into said data which can be sent. The apparatus furthermore is enabled to convert said incoming data into sound via a speaker.

(Claim 1 is an independent claim.)

Claim 2: The apparatus from claim 1 where the wireless antenna is enabled to send data with /enough energy to reach something a few hundred meters away or more, preferredly something over thousand meters away, more preferredly something over 2 km away./ (this part would have to be elaborated saying for example with 5 watt or in the range of such and such frequency and with at least x watt or something like this, but I don't have any numbers for this).

Claim 3: The apparatus from claim 1 where the wireless connection is a satellite connection. (Of course there is no wireless connection which I am referencing here in claim 1 so in a real patent application this claim would fall, it would have to be something like "where the send data is send to a satellite enabled to receive and process it etc")

(claim 2 and 3 are dependent claims).

At the beginning I said imagine a world without wireless telephones. But maybe I was wrong and somewhere there is a wireless telephone which sends data to it's basis station in the same room. Then it has very low transmitting power and a mobile phone using a cell tower or a satellite phone would probably be inventive.

But claim 1 is anticipated by a phone which transmits data wirelessly over 2 meters to a station in the same room! Claims 2 and 3 are protective against such a disclosure. They offer a broad protection of my invention (a phone sending data wirelessly over a great distance). While claim 3 protects only the satellite phone which is actually what I invented, claim 2 would also protect mobile phones using cell towers and could be amended (by leaving out the first preferred with the few hundred meters) even if a home phone was known which sends data up to "a few hundred meters".

If I had had the idea of using cell towers, I would have written that in the patent. But even like this, I didn't know about them and still protected it. If I had, as you said, made a broad and a narrow claim, claim 2 wouldn't exist. In that case, I would have made some money on satellite phones after claim 1 fell, but wouldn't be one of the richest people in the world because every mobile phone pays for my patent.

Do you see what I did there? I tried to anticipate how claim 1 could fall and protect the maximum of what remains. Of course, in this case I knew what the prior art would be, because I just made it up, but in reality you have to try and formulate many of these around many possible prior art documents which you don't know. This is the art of claim design. Try to have claims which you can modularily add little details to (from the description or the dependent claims) combining yourself away from prior art the examiner found - but only in such a manner that you don't lose a lot of protection, only the little space that the prior art already occupies.

  • When you say your dependent claims should back up the indpendent claim can you elabrote a bit more? So they should explain more details just incase my indpendent fail? Or should I use my depend claims and find another way to make it broad but more understandable. That way, if my indpendent fail the dependent still offer me a cast amount of working room? – DeusIIXII Jul 26 '17 at 23:07
  • @DeusIIXII I added an example. – DonQuiKong Jul 27 '17 at 7:59

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