Preparing a patent application is no easy feat, especially for first time inventors/applicants. It can be overwhelming to put everything down on paper and answer questions about every aspect of your invention. Then you ready through a twenty-page document that your patent attorney hands you to make sure that your invention was described accurately, sign some forms, pay all the fees, and you’re good… for now. Then one day, someone asks you, “What did you patent?” or “What are you patenting?” and all of a sudden, you’re not really sure how to answer that question.
This may not be as common for applicants who invent simple consumer goods, a single chemical composition, and other relatively straightforward inventions. But the question can get tricky for applicants who invent complex software, web and mobile applications, business methods, etc. Clearly, a lot of information is disclosed in a patent application (by this I mean a nonprovisional patent application), but does this mean that your patent rights encompass every aspect of your invention?
The main components of a nonprovisional patent application include: drawings; specification; and claims. The specification is where you disclose every little detail about your invention. The drawings section is where you show what your invention looks like. You can also include charts or diagrams of your invention in the drawings section. The claims section is where you tell everyone what you are “claiming” to be your invention, and therefore this is the section that tells you what you are patenting. So if you are not sure what is being patented, look at the claims, because these are what the patent holder can enforce.
A caveat with the claims section is that the body of the specification must support your claims, and every element of your claims must be shown in the drawings. For instance, if you are claiming a chair, you need to include a drawing of a chair in your drawings section, and you must talk about the chair in the specification.
At this point, you may be thinking, “Great, I know to look at claims now, but how do I read these claims?” Well, you may notice that there are two types of claims: ones that seem to stand on their own; and ones that seem to refer to other claims. We call these independent claims and dependent claims, respectively. Claim 1 is always going to be an independent claim. Independent claims are broader in scope than dependent claims because they lay a foundation for what your invention is. Then dependent claims add other elements or limitations to the independent claim, narrowing it in scope.
Let’s go back to the chair example, and say that you invented a chair with arm rests, which is the novel feature of your invention. Your independent can claim may read something like this:
1. A chair, comprising: a seat having a backrest extending upward therefrom; and a plurality of legs connected to an underside of said seat.
Then your dependent claim can read something like this:
2. The chair of claim 1, further comprising a pair of arm rests connected to said seat.
Why do we not claim a chair with arm rests in the independent claim? The primary reason is to broaden the scope of your patent rights. According to claim 1, you have the rights to make and use chairs having a backrest with legs. But if claim 2 was your independent claim, you have the rights to make and use chairs having a backrest with legs, AND armrests. So now, people who are building chairs without armrests are not infringing on your patent. This also reduces the burden on the patent holder when pursuing an infringement action.
What if we had to make claim 2 our independent claim, but you had another novel feature, wheels attached to the lower end of the legs of the chair? Now you can do one of two things. You can add another dependent claim, or add another independent claim highlighting the wheels, but not the armrests. Of the two choices, adding another independent claim is a better one. The reason for this is because if someone else came along and started making chairs without armrests, but wheels, then he or she would not be infringing on your patent. But if your second independent claim recited a chair with wheels, then you can pursue an infringement action.
This is a bit confusing, but it just shows you how the wording of the claim is important. Be strategic with your claims, and really understand what you are claiming versus what you are disclosing.