Claim drafting is one of the harder aspects of preparing a patent application. The reason is that the patent attorney must balance broad claim langauge and avoiding the prior art. A broad claim is desireable because competitors will have difficulty designing around your patent, should one issue. However, broader claims are also subject to rejection as being so broad to encompass the prior art. As such, claims must be broad enough to prevent others from designing around your patent but narrow enough to survive an invalidity attack. The following case illustrates a claim that was narrow enough to mature into a patent but was not broad enough to encompass the design around implemented by a competitor.
In order to infringe a claim, every element of the claim must be found in the accused product. Otherwise, there is no literal infringement. For example, if a claim lists elements a, b and c but the accused product incorporates elements a and b but not c, then the accused product does not infringe the claim. The accused product must incorporate elements a, b and c to infringe the claim.
In Becton v. Tyco, the asserted claim related to a syringe including four separate elements (1) a needle cannula, (2) a guard, (3) a hinged arm and (4) a spring means connected to the hinged arm. During litigation, the Court held that the claim requires four separate elements. In order for the accused product to infringe this claim, the accused product must incorporate all four elements. Unfortunately for the patentee, the accused product incorporated only three elements. The first two elements were found in the accused product. The third and fourth elements were combined into a single component, namely, a hinge member which flexed so as to provide a spring force. Since the claims required two separate components for the hinged arm and the spring means but the accused product only had one component that served both functions, the Court held that the accused product did not infringe the patent. Becton v. Tyco, 2009-1053 (Fed. Cir. 2010).
To help prevent others from designing around your patent, a continuation patent application could be filed. The continuation patent application maintains pendency of the parent patent application and allows the applicant to redraft claims against their competitors. Additionally, during the patent preparation stage, patent attorneys and inventors should analyze the invention as to the basic inventive concept and seek claims directed to such concept without any extraneous elements.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.