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Claim Scope Matters

by N. Paul Friederichs III

Claim scope is critical to the commercial significance of a patent. In this article, I thought I would use an actual case study, having permission from the inventor. The inventor wants this situation to be a lesson for other inventors to better understand their need for due diligence in seeking competent legal counsel. This article illustrates how claim breadth creates opportunities for a competitor to design around one's patent. Designing around is where one carefully copies the invention in a manner avoiding infringement of the claims. Designing around occurs where claims are competitively too narrow.

An inventor approached me after having worked with another patent attorney. The patent application was pending and the client was dissatisfied. The claims had narrow terms and contained more limitations than necessary to obtain allowance. I redrafted the claims, making them much broader, stronger and commercially significant. Immediate allowance was obtained. The "before" and "after" claims are presented below, using bolded text for illustration.

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BEFORE
(The broadest of the original claims.)

7. A shoulder, arm or hand cushion for cushioning the shoulder, arm or hand relative to a structure having a first portion, with the cushion comprising, in combination:

a) a fabric piece having an opening for receiving at least the first portion of the structure, with the fabric piece being absorbent to moisture;

b) a pocket in the fabric piece such that at least a portion of the pocket is disposed between the structure and the portion of the hand or arm against which the structure may apply pressure;

c) a viscoelastic gel filled envelope which is insertable through the opening and into the pocket such that the gel filled envelope is disposed between the first portion of the structure and the portion of the arm or hand, with the viscoelastic gel filled envelope being removable from the pocket such that the fabric piece may be separately washed; and

d) another pocket, with a portion of the viscoelastic gel filled envelope being engaged in one of the pockets and with another portion of the viscoelastic gel filled envelope being engaged in the other of the pockets.

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AFTER
(Other broader claims were also allowed.)

21. A cover comprising:

a structure;

an outer portion, the outer portion being selectively attachable to the structure, the outer portion being formed of a flexible material;

means for selectively attaching the outer portion to the structure;

pad means, the pad means being selectively attachable to the outer portion, the pad means having a compressibility factor; and

means for selectively attaching and removing the pad means from the outer portion.

Notice how easily a competitor could design around the old claim. A competitor simply needed to change the material that formed the pad/envelope from viscoelastic gel to foam or other material to manufacture a non-infringing copy of the invention. In the actual situation, the inventor made a change in pad materials after the revised claims were sent to the patent office. The change was made as a result of clinical studies that showed the viscoelastic gel secreted an oily permeation through the envelope. The "before" claim would have provided absolutely no protection over the new version. Broader claims anticipated the design change would be made either by the inventor OR HER COMPETITOR. The added breadth should give this inventor a commercially significant monopoly well worth the cost of the patent.

A set of patent claims needs to meet three criteria: 1) Breadth, 2) Strength, and 3) protection of something wanted in the marketplace. Broadening the claims, working with the Patent Examiner and directing the claim scope at the factor that motivates sales are necessary techniques for obtaining optimal patent protection. Seek counsel that has a proven track record and has strategies for achieving each of these three goals.

About the Author:

N. Paul Friederichs, founder, started practice as a patent attorney in 1992 at a major Minneapolis, Minnesota law firm where he was the highest performing associate. In 1993, he started and developed Friederichs Law Firm with his father. Throughout this time Paul�s experience was heavily weighted toward litigation. He served such clients as Tonka Toys, American Harvest and Boston Medical.

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