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Why don’t my patent claims sound like what my invention actually is?


So here’s a situation… You have an invention all worked out, with all the parts and processes and figures. You contact your patent attorney and decide that you’d like to have them prepare your application for examination by the USPTO.

A few weeks or months later, you receive a draft. You read through it. The description is very well written, everything you discussed seems to be clearly explained and described... There are drawing and flowcharts to support your invention and your actually quite impressed by the amount of detail and perhaps some aspects that you may not have even considered. Great!

Then you read the patent claims…

And you don’t understand why the claims only speak to a very small section of your invention. Does this attorney not understand your invention? It was all so clear in the description, so why are the patent claims only talking about a small section of the invention?

There could be a number of reasons for this and it not does necessarily mean that a narrow construction of your claims is the best approach for your invention. It’s a fine balance. 

On the one hand, your patent claims need to be broad enough so that the wording is giving you appropriate scope for your invention. If, however, your claims are too broad, it’s very likely that an examiner will object to your claims because it is not adequately pointing to what the invention is. On the other hand, if your claims are too narrow, this may be unnecessarily hindering your invention because it will only give you exclusionary rights to a very specific version of your invention.

Sometimes a particular style is chosen because the reality is that the invention (being the part that is novel) is only a very small component of your whole idea. It’s very rare these days that an idea or product in its entirety is completely new. Many of the products that you use every day have multiple patents over every part that makes up the product. A cell phone, computer, lighter, app, device or treatment. More often than not, other patents exist that have already been allowed over some part of your idea.

So the question you need to focus on is – what part of my idea is novel?

The answer to this question may become narrower during the patent prosecution process as an examiner responds to your application with other inventions in your field. Depending on your idea and budget, you may choose to start broad then only start to narrow once prompted by an examiner.

The way that your attorney words what it is that you are claiming is what your patent will actually cover. So it’s important that you understand why the attorney decided to claim it in that particular way. Don’t be afraid to ask!


More patent filing questions? Call one of the MU Patents professionals today, we're happy to answer your questions or concerns. 858.263.7554.



The materials in this blog are not for the purpose of providing legal advice and are provided for informational purposes only. By using this site you are not entering into an attorney-client relationship with MU Patents. If you need legal advice you should contact an attorney directly.


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