Should a patent claim (all) possible applications?

Question

Do I have to claim future applications of an intervention? Do I need an application at all?

In this article it is written:

Zwar wird in Patentanmeldungen üblicherweise nur eine Erfindung beschrieben, jedoch werden in den Patentansprüchen (englisch: claims), speziell wenn eine grundsätzliche Idee beansprucht werden soll, oft alle möglichen Implementierungen und (auch erst in Zukunft entdeckte) Verwendungen der Idee beansprucht.

Although patent applications usually describe only one invention, claims, especially when a basic idea is to be claimed, often claim all possible implementations and (even future discovered) uses of the idea.

I thought only for medical applications like the use of drugs it is possible to claim an existing patent for a different application. But for a, let's assume some mechanical component or whatsoever, I have to foresee all possible applications? Otherwise it is free to use (for a specific non-claimed application) for everyone?

Answer 1

I'm not a lawyer, but here is my take. A patent only protects what is in the claims. If you don't claim it, you don't own it. Thus, it is usually a good idea to attempt to claim useful permutations of the invention. This doesn't mean you will get every claim awarded, but you certainly won't get what you don't attempt to claim. Now the rest of the application needs to support the claims which is why some, if not most, patent attorneys draft the claims first when writing an application.

But for a, let's assume some mechanical component or whatsoever, I have to foresee all possible applications? Otherwise it is free to use (for a specific non-claimed application) for everyone?

If someone finds a use for your invention that isn't protected by a use/method claim and you do not have a device claim, then that application may be free for them to use. With a device claim all uses of the device would be protected. They might even be able to get a patent on that new use and keep you from using your own invention in the new way. Having a claim publish in an application, even if it doesn't get granted might help protect against this. This is one reason I always council inventors to work with a patent attorney or agent, especially with inventions that have potentially a wide range of uses. Patenting often is best pursued with strategic thinking which might mean several patents that complement each other.

Answer 2

The comments have gotten confusing. First, something fundamental that often gets misunderstood. Your patent doesn't entitle you to do anything at all. Patent owners can only (attempt to) stop others from practicing the patent. Patents are a right to exclude, not to perform. There may be patents of others that would be infringed by practicing your patent or even laws that would be broken in the process.

Second, there is a difference between a claim to a thing, a device for example, and a particular method of use of a thing. If you claim the device as a thing then any future system that contains that device will infringe your device claim regardless of the purpose/use of that future device. This is the case in all patent jurisdictions. If you patent a widget then no one can make, offer for sale, sell, import or use a widget without your OK.

A granted apparatus claim might be - "I claim a device that has the following structure . . . ". That claim wording does not claim any specific method of using the device but the physical device itself. Anyone with a novel use of the device in the future might get a patent on that novel use. But, in using it, they need to physically have a device. That's how you get them.

A different claim type is a method claim. "I claim the method of (a) putting a widget under a board (b) balancing on the board . . . " this does not protect making, selling, importing the widget or protect uses of a widget in general - only the specific use.

If you patent the thing and someone later patents a specific novel use for your thing they can't practice their patent without your OK if your patent is still in force becasue it involves a use of your thing. Neither can you practice their patent.