Though the realm of patent claims is fraught with complex legalese, all inventors should have at least a surface understanding of it. That’s because the claims identify the invention that is subject to protection and are the most important part of a patent. Using claims the right way is the best way to protect your invention.

 

The big question is: how many claims does a patent really need? To answer that, let’s go over what claims are for, why it’s better to have more of them, and how to draft them.

 

What Are Patent Claims?

 

The main purpose of a patent claim is to define the scope of legal protection provided by your patent application. Patent claims come in two types: independent and dependent. An independent claim defines the invention’s key component. A dependent claim combines the independent claim definitions with additional limitations for the invention’s implementation.

 

Each patent claim consists of three components: a preamble, a transition, and a body segment. All three sections require a lot of research to prepare and draft, which is why inventors should usually consult a patent practitioner to help them throughout this process.

 

How Many Claims Should You Include?

 

In general, the more claims a patent has, the more likely it is to withstand challenges in an adversarial setting. A good way to think of patent claims is as soldiers in a battle; many won’t survive, but you only need a few of them to make it to win the battle.

 

For a popular example, consider the LG v. Mondis trial. In 2014, Mondis Technology took LG Electronics to trial for infringing claims of their plug-and-play technology patent. LG challenged the lawsuit, successfully overturning 26 of 29 claims. However, the three remaining claims were enough for Mondis to proceed with the case and eventually win $45 million in damages.

 

From a practical standpoint, of course, each claim will cost a bit more to draft and file. Also, 20 total claims up to which three can be independent claims are allowed to be filed without incurring additional fees beyond the initial filing fee with the United States Patent and Trademark Office (“USPTO”). Th and typically are encompassed in the dependent claism e key, then, is to ensure your claims cover as much ground as possible in a relatively efficient manner.

 

Good Practices for Drafting Patent Claims

 

The best practice for drafting a patent claim is to include a good mixture of narrow claims and broad claims. A narrow claim focuses on a particular use case, a specific product or a certain feature for example, and are typically encompassed in the dependent claims. A broad claim covers a wide range of aspects of your invention and are typically encompassed in the independent claims. By combining them, you’re making it more difficult for opponents to invalidate all the claims in the patent at once.

 

You should also file several claims that describe the scope of your invention in different ways whereby such variations are typically embodied in the independent claims. That way, you’ll have a backup if the phrasing on one claim is too unclear. Of course, you should only use this tactic for the key features of your invention to prevent unnecessary expenses.

 

Finally, you should draft as many key claims as you can before filing your application. This will give you support for additional claims in case you need to file continuations in the future.

 

Prosecuting the Claims Before the USPTO

 

In the event the Examiner with the USPTO rejects any or all of the claims in the first office action, you will then have an opportunity to argue against why the Examiner believes the claims are not patentable. However, it is more typical to amend the claims to attempt to overcome the rejections raised by the Examiner. This is known as the “prosecution” phase of the patent application and it is somewhat tedious many times requiring recitation of the support of law for why the claims should be allowed. It is highly recommended that a patent practitioner be engaged to both draft the claims initially and amend the claims over the course of prosecution of the patent application.  Any amendments that may eventually need to be made to the claims must be “fully enabled” in the specification meaning that they were initially disclosed in the patent application or the Examiner will not allow such amendments.