What to include and claim in a patent
application?

The most important part of a patent is the claims. These describe what is covered by the patent protection.

The claims relate to a product or a method. Examples of technical products that can be claimed in a patent include medicines, dialysis membranes, vacuum pumps, scaffolding, and even entire factories. Methods relate to a specific working method or application. Examples include making yogurt, analyzing a soil sample, or running software on a computer.

The aim is usually to obtain the broadest possible claims within the legal requirements, so that the largest possible area is protected from competition. However, a broader patent is generally easier to challenge than a more specific one. It can therefore also be a sound strategic choice to hold a specific patent.

By claiming more broadly than is ultimately commercially useful, a patent holder can make things unnecessarily difficult for himself. Moreover, a specific patent application allows more scope for claiming further developments in a later patent, and specific patent applications are often granted more quickly. On the other hand, a broader patent better anticipates unforeseen circumstances. Developments or competitors that only become relevant during the term of the patent are more likely to be covered by a broad patent than by a specific patent.

It is therefore strategically important to carefully consider what you want to claim in a patent application and how broadly you want to claim it. A good balance must be found between the limits imposed by law on the breadth of the claims and the patent holder's own commercial interests.

If you are considering applying for a patent, you may want to ask yourself in advance which products or services you want to bring to market and whether these products and services will change in the future. If so, you may want to ask yourself: when do I expect to market this change? Do I want to have separate patents for these new developments? Or should all aspects be mentioned now because, for example, there is no budget for an extensive patent portfolio? It may therefore be useful to consider how your competitors would answer these questions. This will enable you to respond as effectively as possible to future developments in the market.

The patent attorneys at V.O. can help you find the optimal balance and advise you on a suitable patent strategy.

Want to know more?

Read the webpage ‘A detailed look at a patent’