(For the purposes of this question, assume the application is free of syntactical errors that would obviously lead to an office action.)

I have corporate experience preparing patent applications. Invariably, we have started broad, received office actions, tightened up the claims, and if we have experienced success it has been after many back-and-forth rounds resulting in something more narrowly defined than in the first pass.

Now, I am wondering what would happen if we submit an application with claims that are very, very narrowly defined on the original submission, and which thus avoid prior art objections? Assuming we are happy with the scope, have you ever seen a narrow set of claims be approved without an office action?

Another way of considering this question is do you think we need to purposely start a little bit broad just so we have something left over for debate? In business negotiations, one would do that. I just don't know if you have to play that game with patent applications.

1 Answer 1


It is possible to get a first action allowance (FOA), i.e. without any rejections to the claims. As you state, that generally implies you left claim scope on the table, but it can be subsequently argued in, e.g., a continuation application. Just be aware that if you narrow claims (esp. in response and/or to overcome an office action on the merits), you may be subject to estoppel; i.e. you may not be allowed to renegotiate forfeited scope.

I believe it is generally advisable to start broad with your first application and narrow from there, as it will be quicker to obtain the broad scope one ultimately wants and avoid any estoppel/support issues. However, if you would like to get something through quickly (e.g. scope that is limited to an embodiment you plan to sell for enforcement purposes), a first application with narrow claim scope may achieve that. In this case, the broad claims should be determined ahead of time and supported in the spec.

Edit: I should add, you may be able to get a fast and broad patent by requesting prioritized/expedited examination (e.g. TrackOne). However, this article makes some great points regarding the potential cons of doing so.

  • 1
    Claiming less broad and therefore getting a patent faster also lowers your prosecution costs (assuming no broader additional application). It's a little risky, but if you know your market and don't expect game changing innovations you might be able to predict the needed protection well.
    – user18033
    Commented Dec 16, 2017 at 15:07

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