My Claim Is Broad, So I Can Use Any Material, Right?
To broaden the specification, Patent Attorneys often ask inventors for information on how they implement certain features. Sometimes we get the response that, you can do it with “anything”. The question is what does “anything” get you in a specification?
Not much really. Patent claims are interpreted in light of the specification. If the specification doesn’t have any details of how an element is implemented, then
the claims are interpreted using a narrow scope. However, if the patent specification has alternate examples of materials, or alternate connections, or other
the claim element is interpreted in view of those broadening descriptions in the specification. One school of thought in Patent Law is to use a “rule of threes”. This means
that having three alternate examples of how to implement something as a good rule of thumb. The idea is that if a potential infringer tries a fourth way, then
the broad interpretation of that element, in view of the previously disclosed three ways of implementing the element, leads to a broad enforcement either under
literal infringement or the doctrine of equivalence.
So, when we ask for additional information in the drafting process of the patent specification, it really is a good idea if an inventor at least takes a shot at giving us some alternate examples. Even if these examples are not spot on for what we are looking for in the specification, that could possibly spur additional discussion on our part. Drafting a Patent Specification is a colaborative effort. In general, the more details in the specification, the better. In general, the less words in the claims, the better. The claims should have enough information to distinguish over the prior art.
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