1

I don't have access to patent attorney or professional patent drafter and I need to file an application. After that I plan to publish the invention and, if there will be some interest from any investor, seek to expand the protection by means of 12 months priority under Paris convention. I have a (presumably) good description and drawings but claims are really difficult to write. I am left with a choice to either write myself (being amateur):

  1. only omnibus claim and add more claims later (when and if there will be some investor interest)
  2. only one broadest claim and add more claims leter (when and if there will be investor interest)
  3. all the claims

In option 1, I believe that omnibus claim may be rejected as not defining the invention and, thus, leaving the invention undefined and any applications in foreign countries claiming priority over the first application. In option 2, I might be able to use professional service for drafting new claims and add them later on in future applications claiming priority over the first one, but some offices (e.g. EPO) will not allow adding broader claims (or maybe even new claims that are not dependent claims?) even if they are supported by description. In option 3, I might get some or all claims wrong, because I am an amateur. If I'll get them wrong, the same problem as mentioned above will occur - the invention will be undefined and it will be impossible to use this application to claim priority and file subsequent application abroad. Which of these options is wisest in my situation and what are the benefits and pitfalls involved?

  • You might also want to ask whether a patent attorney would be willing to only draft and prosecute claims. Depending on the state of the specification, I could see why one might decline. – Eric S Aug 24 at 15:53
  • You also might want to ask about which country is being pursued. My understanding is that in Europe, software patents are near impossible to get. – Eric S Aug 24 at 15:55
  • @EricS Nowadays it is easier to get a software patent in Europe than in the US, even though we call it a computer-implemented invention. If it solves a technical problem then it may be patentable. – the Europeist Aug 24 at 19:04
  • @theEuropeist Thanks for that. Please be encouraged to answer this question if you’re interested. – Eric S Aug 24 at 19:20
  • Often when a patent practitioner drafts an application they start with claims. Thinking about claims is the way you think about what the invention really is. Before you can write a good description that supports good claims, you need to conceptualize those good claims. I understand that you do not see how you can approach it that way but be warned that without an understanding of what the invention is at its heart, the description may not be adequate. – George White Aug 24 at 19:41
1

If you cannot get the assistance of a patent attorney, which you should if possible at least for drafting the claims for you or review the application before filing the same, then my suggestion would be to come up with all the embodiments that you can and have them included in the description (on a personal note, I draft patent applications like George White explained: I draft the claims first, and afterwards I draft the description). Then, try to come up with a claim set in which you have at least one independent claim per category (device and method) that encompasses most if not all the embodiments, and define the different embodiments in dependent claims. Accordingly, my advice is to proceed according to your option 3 because options 1 and 2 may give you problems in the long run.

You want to have all the claims from the start because not all patent offices allow you to modify them whenever you feel like it. You mentioned the EPO, well that is one good example. In fact, if you were to file a European patent application at the beginning, it makes sense to have the claim set with all the claims because then you can benefit from the early Search Report drawn up by the EPO, in half a year or so, which not only cites the prior art that the EPO could find but also other possible objections. For instance you can be informed of a lack of clarity issue in the claims, or a lack of sufficiency of disclosure, or a lack of unity of invention. This opinion by the EPO is really valuable for improving the patent application if you were to file a final patent application by the end of the priority year, for example a PCT. This is specially important if you are to draft the application because you may not be aware of certain things.

An omnibus claim will not be examined by most patent offices, and a broad claim will likely be found not novel or obvious. You do not get any valuable information on other possibly patentable embodiments, so you might end up spending money in the prosecution of one or more patent applications which relate to a non-patentable invention. If you were to add further claims during prosecution, some patent offices will not accept them if their scopes are not contained within the scope initially claimed; this can happen at the EPO for example, but also in China, in Brazil, etc. You can protect those embodiments in divisional or continuation applications.

Lastly, bear in mind that most of the investors are interested in inventions that can be protected in some way. If you were to show a patent application with negative search reports, or office actions that reject all the claims, and the expectations of getting a patent granted seem to be minimal, or it is possible to get a patent for embodiments that are not commercially feasible or are not really valuable for some reason, you will have a hard time to find investors interested in your invention. The same holds true when the claims do not protect the invention from the party in the value chain that you may want to enforce your rights against, or when not a single party infringes an entire claim (divided infringement).

| improve this answer | |
1

One solution is to file your application as a provisional U.S. application without claims. This avoids an issue with any concern that claims are broadened from initial claims since there are no initial claims.

| improve this answer | |
  • I think there might be problems with claiming priority over that provisional application in subsequent applications abroad, when the foreign IP office will decline the first provisional application as "not defining the invention" and thus not being fit for giving priority right. Because without even one claim an invention is not defined. I guess best option in my case is to try to write claims to the best of my capabilities and amend them when needed. – Leandro Aug 24 at 20:21
  • And I think only an application in my country is within my reach now and that's not U.S. so this option, I believe, isn't available to me now. – Leandro Aug 24 at 20:23
  • I do not disagree with your choice but the idea that a U.S. provisional without claims will not be viewed as a proper priority application under Paris in some unnamed hypothetical exotic country (Thailand?) is a very persistent, but to my knowledge, inaccurate rumor. I have never seen an actual case cited. And anyone from anywhere in the world can file a US application on line. – George White Aug 24 at 22:10

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.