Reviewing Claims for Design Arounds and Product Coverage
Every non-provisional (i.e., regular) patent application must include at least one claim. The claim set is located at the back of the regular patent application and typically starts with the phrase “I Claim“ or “We Claim“. The claim set defines the metes and bounds of your claimed invention – the extent of your potential rights to exclude (i.e., stop) others from competing with you. As such, the claim set is an important part of your patent application.
The claims of your patent application should be reviewed for:
1) Design Arounds: A design-around is a change in a product or process that would avoid infringement of your patent, if and when your patent matures into an issued patent. The purpose is to determine how difficult it would be for a competitor to avoid your patent and still provide a competitive product. Major changes are those that would significantly increase cost, reduce functionality, etc. These changes would cause your competitor’s overall offering to be inferior to your patented product or process. Minor changes are those that allow your competitor to avoid infringement yet provide a competitive alternative. Preferably, the claims should be broad enough to require your competitor to make major changes.
2) Product Coverage: A product’s configuration and features may evolve from the time a patent application is filed till issuance of a patent. When major changes to a product are implemented, the claim set of your patent application should be reviewed to ensure that the claims still cover the improved product. If not, the claims to the extent possible should be amended to sufficiently cover the improvements to the product.
I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. 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.