Occasionally during patent
prosecution, a patent examiner will indicate to an applicant that while they
are not willing to grant an independent claim, they are willing to grant a
narrower dependent claim. The applicant then has two choices: take the narrower
dependent claim or continue in prosecution.
Taking the narrower dependent
claim gives the applicant a valid granted patent. The applicant can now market
products covered by the granted patent, as patented. The applicant can inform potential
investors of the granted patent. The downside is that once the patent is
granted, it may be very difficult if not impossible to change the scope of the
claims. In effect the applicant has to “live with it.”
Continuing prosecution exposes
the applicant to the risk of increased spending without much more to show for
it. However there is a chance that the applicant may get claims of broader
scope than the narrower claim.
As with many things in business, the
answer to this question depends on many factors. These factors include:
- Motivation for obtaining the patent,
- Resource factors,
- Competitive factors,
- Examiner attitude, and
- Jurisdiction.
The impact of each of these factors on answering this question are detailed below:
Motivation for obtaining the patent
What is the motivation of the
applicant in pursuing the patent? This should be the first question asked. If
the motivation is to, for example, facilitate marketing of the product or
convince investors, then it may be advantageous to accept the narrower claim
instead of delaying it in prosecution. If however the aim is to get the
broadest protection possible, then the applicant should consider continuing
prosecution.
Resource factors
In addition to money, continuing
prosecution will consume an applicant’s time and energy. The applicant should
consider whether there are enough resources to continue prosecuting the patent.
On the other hand, obtaining a granted patent may open the door to an increased
flow of resources. Having a granted patent may facilitate investment or
partnership which may lead to increased resources available to the applicant.
Competitive factors
Sometimes, the narrower claim may
cover a feature that is either commonly used or improves the functioning of a
product owned by the applicant. If so, then taking the narrower claim may be
attractive to the applicant. It then makes it difficult for a competitor to
design around the feature without significantly reducing any associated value
proposition of a competing product.
Having a patent may also be
valuable for marketing. Patents are useful to, for example, a company pursuing
a product differentiation strategy. The company can, for example, market itself
as innovative or cutting edge.
Examiner attitude
An important indicator of the
success of continuing in prosecution is the attitude of the examiner to the claimed
invention. If the examiner seems to be intransigent on the independent claim or
minor modifications to the independent claim, but is willing to grant the
dependent claim, then it may be best to take the dependent claim.
One way to gauge examiner attitude
is by requesting a telephone or face-to-face interview with the examiner to discuss
the independent claim. This will enable the applicant to get a “read” on
examiner attitude.
Jurisdiction
The answer to the question also
depends on the jurisdiction. For example, the United States (US) allows
applicants to file continuation and continuation in part applications.
Therefore, an applicant can take a narrower claim, then file a continuation
application and try to get claims of broader scope. Other jurisdictions may not
have the same rules in place, so it may be worthwhile to continue prosecuting
the application.
Also, the relationships between
jurisdictions may be important. For example, assume that an applicant has two
applications from the same family in the US and jurisdiction X. Assume that
jurisdiction X is of lower priority strategically to the applicant compared to
the US. Then the examiner in jurisdiction X poses the above choice to the
applicant.
If there is a patent prosecution
highway (PPH) agreement between jurisdiction X and the US, it may be in the
applicant’s interest to take the narrower claim in jurisdiction X. This enables
the applicant to accelerate grant of the application in the US using the PPH
agreement. Once the US application is granted and before the patent is issued,
the applicant can then file a continuation or a continuation part application in
the US to try to get claims of broader scope.
