A common misconception held by applicants or would-be applicants is that claim 1 needs to include an exhaustive list of the features of their invention, in order to protect their invention. However, this is neither true nor beneficial.
A common misconception held by applicants or would-be applicants is that claim 1 needs to include an exhaustive list of the features of their invention, in order to protect their invention. However, this is neither true nor beneficial.
Instead, your main claim wants to have the broadest scope possible, which is achieved by having the fewest limitations possible in claim 1. The rest of the claims include additional features that further restrict the scope you are claiming, in case claim 1 is too broad in scope. As such, the rest of the claims define fall-back positions, or further bites at the apple. However, these fall-back positions will only be looked at sequentially by the patent examiner if claim 1 is too broad.
An analogy may help to illustrate this.
Let’s imagine you have been of great service to a British monarch. To thank you, the British monarch would like to bestow upon you land and a title, but asks you which patch of land you would prefer. You are most interested in a particular street: Bayshill Road, in the town of Cheltenham. Cheltenham is located in the county Gloucestershire, in England, UK. The red cross on the map of the UK shows the location of Bayshill Road, Cheltenham, Gloucestershire, England, UK.
You want this particular street because a natural spring of mineral waters has recently been discovered there. The mineral waters are a rather lucrative source of income as they are rumoured to have healing properties.
However, land represents income and wealth, not to mention other undiscovered springs of mineral water that could be exploited for extra income. You therefore definitely want to get as much land as possible, in addition to Bayshill Road, Cheltenham, Gloucestershire, England, UK.
There is also another benefit in asking for more land: it keeps any threat from the invading French at a greater distance from your spring on Bayshill Road.
So you could try asking the British monarch for all of the UK. This would be equivalent to having a patent claim 1 that says:
- A territory having an area corresponding to at most the UK.
This corresponds to asking for all the area in red on the map below.
The term “UK” covers Scotland, Northern Ireland, Wales and England. England includes Bayshill Road, as well as every other road or street in England. This is true even if claim 1 doesn’t mention “Bayshill Road” explicitly.
However, you suspect the British monarch is never going to agree to giving you their entire realm.
So as a fall-back option, your second request would be to ask for just England. This covers much less land so is more reasonable than asking for all the of UK. Your fall-back option would be the equivalent of having a patent claim 2 that says:
2. A territory as claimed in claim 1, wherein the area corresponds to at most England.
Requesting England means that out of the four nations covered by claim 1, you are selecting only one (England, the area shown in red above) and giving up on the other three nations (Scotland, Wales, and Northern Ireland).
Your fall-back claims ultimately still need to cover your preferred location, regardless of whether you get granted additional land. Therefore, you definitely don’t want to claim Scotland, Wales or Northern Ireland because none of them contain Bayshill Road, Cheltenham.
Incidentally, claim 2 is called a “dependent claim” because it depends on a broader claim, here claim 1. This means that the claim 2 has all the features of claim 1, plus additional restrictions. Dependent claims are always more restricted in scope (or here area) than the claim they depend on.
Now – the British monarch may still have an issue with granting you all of England. So your next fall-back proposition would be to limit your land to just Gloucestershire (the county highlighted in red below).
This would be the equivalent of having a patent claim 3 that says:
3. A territory as claimed in claim 2, wherein the area corresponds to at most Gloucestershire.
In other words, amongst all the English counties covered by claim 2, you are asking for just Gloucestershire. You are renouncing all other English counties.
As further fall-back options, you could have the following patent claims:
4. A territory as claimed in claim 3, wherein the area corresponds to at most Cheltenham.
5. A territory as claimed in claim 4, wherein the area corresponds to at most Bayshill Road.
Claim 5 covers the exact location you want: Bayshill Road, Cheltenham, Gloucestershire, England, UK. In patent terms, this is equivalent to requesting patent protection for only your exact product.
However, claim 5 is very narrow in area (scope) so you would only request that as a last resort, in case the monarch refuses all your previous requests. Otherwise, you miss out on potential land (scope) the monarch might have granted you, which might have included the other, undiscovered springs of mineral waters (corresponding to lucrative viable alternative versions of your product).
Even worse, the invading French (your commercial competitors) are not kept at an arm’s length but instead, they could come very close Bayshill Road indeed. On their way, they might even discover the other, undiscovered springs of mineral waters, such as other springs in Cheltenham. If the French start selling their own mineral waters, you lose potential customers.
Fortunately, the monarch accepts to grant you a title and Gloucestershire (claim 3) on the condition that restrict your claim 1 by inserting into claim 1 the additional limitations mentioned in dependent claims 2 and 3. Your new claim 1 becomes:
1 . A territory having an area corresponding to at most Gloucestershire, in England, UK.
As for your title? You are a newly anointed “Patentee”.
Hopefully, the above analogy helps clarify how a set of independent and dependent claims works.
Nevertheless, if you still have any questions about IP, please feel free to contact Albright IP by email, phone or by visiting us at our offices located in Bayshill Road, Cheltenham, Gloucestershire, England, UK.
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