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Can one claim of the patent have greater impact (legally/commercially) than the whole patent?

Example: Let's imagine we want to apply for a patent of certain hydroponic system. Claim 1 describes the container design. Claim 2 uses certain material as growing medium. That material itself is not novel and is known for many decades, but it seemingly has not yet been used as hydroponic medium.

The whole patent (claim 1 and 2) seemingly protect very specific hydroponic system, while claim 2 alone might prevent all possible hydroponic systems from using that material which is much more general and has much greater impact legally and commercially.

  1. Can such scenarios indeed happen in general?
  2. Is a hydroponic growing medium patentable (for all possible hydroponic systems)?
  3. If yes, - are there any advantages of patenting the growing medium with a separate patent?
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  • I’m not sure I understand. How can a claim cover more than the patent that contains that claim?
    – Eric S
    Commented Dec 26, 2022 at 1:01
  • @EricS - see the example I've provided. It might be wrong of course. That's why am asking... The answer heavily depend on the question #2 - "Is a hydroponic growing medium patentable (for all possible hydroponic systems)?" - do you know the answer to it? Commented Dec 26, 2022 at 18:34
  • I read your question hence my comment. A patent covers the entirety of its claims. No one claim can be more important than the whole patent. The answer to question 2 is probably yes, but the actual claim language is important and hypothetical questions can never be answered authoritatively.
    – Eric S
    Commented Dec 27, 2022 at 0:13

2 Answers 2

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A patent covers the entirety of its claims. No one claim can be more important than the whole patent. Each separate independent claim stands by itself. It is certainly possible for a claim other than the first claim to offer greater commercial value. I'm inferring that you are wondering if a claim might cover more broadly than the specification intends. This might be possible though I'm guessing it is uncommon. As for your specific questions.

  1. Can such scenarios indeed happen in general?

As I said, a specific claim might be applied in a broader sense than the specification intends, but hopefully the examiner is careful about this.

  1. Is a hydroponic growing medium patentable (for all possible hydroponic systems)?

If the growing medium is novel unto itself then this is certainly possible. The specification needs to enable the claim so is certainly depends on the specifics of the specification and claim wording.

  1. If yes, - are there any advantages of patenting the growing medium with a separate patent?

I hesitate to answer this question as I am not a patent attorney and aren't an authority on patent strategy. I will say that it is quite possible that the examiner might force the applicant to split the two aspects of the invention into separate patents. I've had this happen to me. A patent is intended to cover a single invention.

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If the question is “can one aspect of a patent become more important than the rest of the patent including what the patent, nominally, seems to be focused on”, then yes.

In the example you generate, a claim can be to a composition of matter independent of the use of that substance. So a growing material, as a composition of matter, could be claimed. If granted, anyone making, selling, etc. that substance would infringe.

Less broadly, a method that was specific about a growing medium and very broad on what was grown, how it was irrigated, etc. could be claimed.

As a patenting strategy it can be important to have claims to various aspects of an inventive system.

I worked with an inventor who had a novel way of extracting moisture from the atmosphere to make drinkable water in an energy efficient manner. These systems often have a descant material that absorbs (or adsorbs) moisture and then, in a different phase, releases moisture. The whole thing was very clever and novel but, at the time of drafting, he thought the key was the specific desiccant he developed.

By the time the application was being examined he found better desiccants so claims were added to focus on the rest of the system. By coincidence I also filed an aeroponic application with claims to several different aspects of the system.

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  • Here is a patent of charcoal as hydroponic subtrate. How can the owner practically protect his rights against infringement by private gardeners? Will he go around looking into people's pots and then sue them? And even if he does - what kind of damage can he claim? The estimated price of the charcoal that he would have sold to the infringer for the purpose of his hydroponic farming?... Commented Mar 18, 2023 at 21:08
  • How a patent owner enforces a patent might be a new question - feel free to post it as such. Good patent strategy and claim drafting do factor in enforcement . Possibly a patent owner could focus on volume makers and users and indirect infringement via advertising products for this purpose.
    – George White
    Commented Mar 19, 2023 at 16:57

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