This post is written from the perspective of a UK-based
European Patent Attorney.
1. The value of a
patent is of course very much related to the scope of its claims and the extent
to which they cover commercially important subject matter. Therefore when pursuing patent protection
applicants normally have the strategy of obtaining the broadest claims, and
most would have the view that there is little downside to having claims which
are too broad.
2. The claim
scope that is granted will be a balance between the degree of extrapolation
possible from the experimental work and the prior art available to the
Examiner. With the limited resources
available to an Examiner, in comparison say to a Court, it is easy for overly-broad
claims to be granted.
3. Normally
pursuing broader claims will entail using more complex arguments and there is
the likelihood of more examination reports issuing. In the case of European applications Oral
Proceedings are also more likely.
Therefore there is likely to be increased cost for an applicant.
4. Broader claims
are less likely to be valid, and thus there may be problems with enforcing
them. However there will normally be the
possible of amending claims in post-grant proceedings which should make it
possible to enforce the patent.
5. Broad claims
are a feature of certain technology areas, particularly in biotech where the
underlying concept for the invention can be very broad. In such areas applicants have little choice
but to pursue broad claims to adequately protect their inventions.
6. Not all
applicants wish to pursue broad claims, and so patent attorneys need to tailor
their advice accordingly. Some companies
will only want to protect their particular activity or product and see little
point in pursuing broader claims. The
company culture may see patents as serving this narrow purpose, and such a
culture may not be easy to change.
7. If one pursues
broad claims then prosecution of the case in different territories becomes more
complicated. It is more likely that different
scopes of claim will be granted in different countries, and therefore different
arguments would be used for defending validity.
That means a single uniform strategy for prosecution of the case cannot
be used.
8. Having broader
claims may cause third parties to take action against the patent. In the case
of a European patent parties may be more likely to file an opposition. A company needs to assess whether this is
likely when pursuing broad claims, and whether the commercial worth of broad
claims justifies defending them against attack by third parties.
9. Where the
claims of a patent cover more than what the company is itself doing there is
the option of giving licences for other technologies covered by the
patent. However many companies are not
geared up to do this, and thus will never fully exploit the broad claims of
their patents.
10. For the sake
of completeness patent monetisation entities should be mentioned which provide
an alternative way of exploiting claim scope which a company cannot do itself.
However this is clearly a controversial option.
You may also wish to see related articles Top
10 Uncertainties in Patents and Top
10 Tips for Getting Difficult Patent Cases Through.
