By: Dan Pierron
Claim drafting ain’t easy. On top of having to concisely describe a quite-often complicated invention, there are all the strategic implications on word choice, independent-dependent relationships, and too many others to recite here. However, one overarching strategic decision to be made when drafting claims prior to filing an application is this; should one draft claims that are likely to receive a first Office Action allowance, or draft claims that are broader and much less likely to be allowed? This is a very important strategic decision that has many implications, turning mostly on the immediate need for an allowable patent and the intellectual property budget of the owner.
In contrast, broader claims come with their own advantages and disadvantages. One of the most immediately obvious differences is the time it will take in order to sufficiently narrow the claims so as to be deemed allowable by an examiner. Depending on the field of the invention and the… tenacity of the examiner, this could range from a few months to a few years. Also, this most likely means the cost for getting allowable claims will be greater, as described above. However, once an allowance is received, you can have greater confidence that the claims are about as broad as was feasibly obtained.
Ultimately, it all comes down to choice and what the purpose is behind filing the application. As always, one is well served to consult with an attorney early in the process not only to draft an application, but to develop an over-arching IP strategy to determine what are the most valuable IP assets to pursue, and to leave no stone unturned and unexamined.
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