Applicants Need To Choose Their Battles Carefully

Patent claims do not have to cover all possible embodiments of an invention to be valuable. They only need to place enough of a roadblock in the path of the competition that the applicant will prevail in the marketplace.

Consider, for example, an invention to a PDA, cell phone or other portable telephony device that provides translation services (English to French, German to Japanese, etc) by sending the translation to a nearby device. A patent attorney could try to broaden the claims to cover all local devices, rather than just (a) telephony devices (b) that are portable. But by opening up the claim to any local device, he dramatically increases the enormous amount of prior art. Yes, perhaps the patent attorney could find clever ways of overcoming the art cited by the examiner, but that would take a lot of time and money, and the applicant would still always worry that the claims could be invalidated by prior art that the examiner didn't find. The better strategy is to limit the claims to portable telephony devices from the beginning of prosecution. The reason is that the vast majority of the market is for portable telephony devices. Relatively few people would want to use a kiosk or other stationary translation center if they could simply use their PDA or cell phone. Similarly, relatively few people would rant to carry around a dedicated, non-telephony device for translation purposes once the PDA or cell phone that they already carry can do the job.

In short, the goal of claiming broadly doesn't always mean reaching for the broadest claims. As discussed elsewhere in this book, the goal is to write claims from a marketing perspective. Determine what the inventor wants to stop the competition from doing, and then claim that. This simple distinction is often what allows me to secure broad claims from the patent office when others have failed for several years. Moreover, the strategy doesn't preclude issuance of even broader claims down the road. Such claims can always be pursued in a divisional.