Patent attorneys are notorious for using archaic and overly technical language. While efforts are underway to modernize patent jargon, some of the old terminology remains entrenched, and certain attorneys still insist on using it. This can make understanding patent law unnecessarily complicated for inventors and business owners. One such term is “anticipation.”
What Does Anticipation Mean?
In patent law, anticipation means that the claims of a patent or patent application are fully disclosed by a single prior art reference. It also means that your invention is not novel or new. For example, a patent attorney might say, “Your claimed invention is anticipated by the X reference.” The X reference and the X reference only discloses all of the limitations of the claimed invention.
If multiple references are needed to show that all of the limitations are disclosed in the prior art, the issue transitions to obviousness, which also requires a suggestion or motivation to combine those references to reject the claimed invention.
Anticipation vs. Obviousness
Anticipation is distinct from obviousness in that it focuses solely on whether one prior art reference discloses the claimed invention in its entirety. Obviousness, on the other hand, requires combining multiple references with a rationale for why someone skilled in the art would combine them to arrive at the claimed invention. Because anticipation requires only a single reference, it is typically easier to overcome than obviousness.
But, it’s still challenging to overcome anticipation yet retain the breadth of the claim.
Strategies for Overcoming an Anticipation Rejection
Anticipation rejections can often be addressed by amending claims to distinguish them from the cited prior art. However, crafting these amendments requires balancing the need to overcome the prior art while retaining broad claim coverage that prevents competitors from designing around the invention.
1. Adding a Key Limitation
One strategy to overcome an anticipation rejection is to simply introduce a feature or limitation into the claim that is not disclosed in the single prior art reference. For example, consider a patent claim for a chair with a specific ergonomic design. If a prior art reference anticipates this claim because it describes a similar chair, you could add a feature like “a foldable mechanism integrated into the backrest.” If this feature isn’t disclosed in the prior art reference, then you’ve overcome the prior art reference.
2. Preserving Claim Breadth
While adding limitations to overcome an anticipation rejection is simple, it’s crucial to ensure the claims remain broad enough to protect your invention from competitors. This is the hard part of the equation. For example, in the chair example, adding a limitation like “the foldable mechanism consists of a titanium-alloy hinge” might unnecessarily narrow the claim. A competitor can use a different material to make the chair strong enough.
Instead, generalizing the feature as “a foldable mechanism configured to support weight in excess of X pounds” could provide sufficient breadth to cover various materials, making it harder for competitors to design around.
3. A Balancing Act: Breadth vs. Overcoming Prior Art
The goal is not just to overcome the anticipation rejection but to do so strategically. A narrow claim might result in a patent that is too easy for competitors to work around, reducing its commercial value. On the other hand, a broad claim would simply be rejected again by the examiner. You always have to look at both sides of the equation to see if your claim amendment is worth it.
In my point of view, there are a thousand ways to claim a feature. You just need to find the right one that strikes the right balance. You can do it.
Call to Action
Overcoming anticipation rejections requires a careful strategy that balances overcoming prior art with maintaining robust claim coverage. Good advice is crucial. Schedule a consultation with us to develop a strategic approach for your patent application. Our patent prosecution services can help you navigate rejections and craft strong claims. Call us at (949) 433-0900 to discuss how we can protect your invention effectively.