I was meeting with a client last week and going over a proposed claim amendment. He felt that one of the independent claims would be too narrow. So, I asked him, “would it still cover your product?” After some discussion we were both comfortable that it would. Then I asked him, “does it still cover the way your competitors would most likely try to do this?” again, we both felt it did. Finally I asked him, “as an inventor, if you saw this claim and it belonged to a competitor, how would you design around it?” We spent a quite a bit of time talking through alternatives. We focused on the feasibility of each relative to his claimed product. All of the various alternative either wouldn’t work as well or would cost significantly more than his claimed invention.
The lesson here was that while broad claims can be great when you want to accuse someone of infringement, you will have to defend the patentability of those broad claims if the issue goes to court. Typically, this defense will be against prior art you don’t know exists before the lawsuit. Conversely, drafting narrow claims can lead to an issued patent, but the questions above are important to ask to make sure you don’t cede so much ground that your competitors can easily design around your claims.
These narrow claims are also helpful in those cases where a competitor can design around them. While their competing product may not infringe your claim, that competing product will, hopefully, be at a competitive disadvantage due to performance or cost.
One example for this concept is the rubber-band effect for scrolling on Apple iOS devices that was patented and litigated in the Samsung case. Those claims are very detailed and correspondingly narrow. They have pushed many phone manufactures to not include the feature or provide a modified version of it. However, exact copying of the way Apple implemented the concept was still protected by the claims.
Don’t only try for the broadest claim you can. Sometimes, in the long run, narrow claims can be very powerful. Their value isn’t just in the damages an infringer may pay, but also in the competitive disadvantage non-infringing product will have.