Have You Really Covered Everything?
November 15, 2022
By Robert Cantrell - Registered Patent Agent
A few months ago, I received a call from an engineer concerning a new valve he invented for a medium-sized enterprise involving fluid control. We had filed his patent application only twenty minutes earlier when he sent a sketch of another embodiment and wanted to know if it was covered in the claims. It was, but not because the claims were broad, but because they accounted for the idea of “moving the other object”—an element of working backward noted by my previous post—and a part of our inventor team and patent team opening discussion.
Patent practitioners often view claims in terms of broadness and narrowness, but another avenue to develop a claim set is open around invention comprehensiveness. Practically, invention comprehensiveness involves accounting for other ways a function can work, for example, adding fluoride instead of chloride, using convection instead of conduction, and swinging outward instead of inward. Even if these other ways are so different as to describe a separate invention, the other ways can at least be presented in the specification.
Invention comprehensiveness can be more important for your patent claims than a granted broad claim because invention comprehensiveness may determine how easily a competitor can design around or leapfrog those claims. If, for example, swinging outward is a perfectly viable option for a function in addition to swinging inward, a broad claim on only one of those options may leave the patent holder exposed if a competitor simply uses the other.
The easiest way to develop invention comprehensiveness is to ask, “How else?” You should be asking this question anyway regarding any new development as a part of your business strategy, to stay ahead of competitors. From answers to how else, you can fill in gaps with better claims, more comprehensive specifications, and possibly additional patent applications.
Do your patents have ample comprehensiveness? Have you really covered everything? How exposed are your patented inventions to design-around and leapfrogging?
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