Scope of a Patent

by Phil M. Fowler

Federal patent laws constantly evolve, mostly in federal courts that apply statutory laws to unique circumstances that arise over time, with the consistent goal of balancing the patent holder's rights without limiting the rights of other inventors of similar, but slightly different, inventions. The scope of a patent provides the basis for that precarious balance.

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Patent Claims

The scope of a patent arises from the claims described in the patent application. The patent claims are simply the bullet point descriptions of the various elements of the patented technology. Most patents include several claims. For example, a patented business method that implements a specific software code will include claims relating to the software itself, the business methodology and the integration of the methodology and the software. The patent claims are a required part of every final patent application.

Evaluating Claims

Patent enforcement actions require careful analysis and application of the patent claims included in the patent application. Generally, a patent violation occurs only if a nonholder of the patent uses all of the various claims. A person who uses only or two, but not all, of the claims does not violate the patent. For this reason, it is vital that a final patent application accurately describe all of the claims.

Balancing Interests

When filing a final patent application, the applicant must balance two competing interests when it comes time to draft the patent claims. Claims that are too broad in description are more likely to be rejected by the U.S. Patent and Trademark Office, mostly because broad claims are likely to violate existing patents. On the other hand, defining patent claims too narrowly provides less protection from future inventors of similar technology. The patent applicant must carefully define the claims to be broad enough to provide sufficient protection but narrow enough to avoid violating existing patents.

Judicial Determination

Ultimately, U.S. Federal Courts bear the burden of determining the scope of patents. In the event of patent enforcement litigation, the Federal Courts will have to review the patent claims and make a final decision as to whether the claims have been violated. In other words, Federal Courts make the final decision regarding the scope of patents, and they make these decisions based on patent claims included in the patent application.