The claims are the numbered paragraphs at the end of the patent or non-provisional patent application. They define the legal boundary lines of the invention in the same way as lot-line descriptions in a deed for a house define the boundaries of real estate. The bottom line is that the more claims you have, the better off you are (assuming they were crafted intelligently.) Here’s why:
- a) Courts judge patent infringement claim by claim and require only that one claim of a patent be infringed to support a finding of infringement. Thus, the more claims you have the more chances you have to catch an infringer. Also, more claims generally mean that it’s more difficult for someone to get around or find a loophole in a patent, since that have to get around all the claims.
- b) Every patent is presumed valid over the prior art (existing patents and other technical literature) that the patent office was aware of when it granted the patent. The patent office is good at searching, and they have only limited resources to put toward each application based on the filing fees paid for the application. So they might miss something that could have been found if they’d spent more time and energy and money searching. In 3, 5, or maybe even 10 years after your patent is granted, and everyone can see that lots of people are buying products incorporating your invention, some competitors will consider “copying” it. Some will hire their own patent attorney and ask about their options. One of these options, if they can’t design around all your claims effectively, will be to spend $5-10,000 or more just searching for prior art in an attempt to “invalidate” your patent. “Invalidating” means to prove that your invention, as defined by each of your claims (at least the ones they’re infringing), is not really an invention because someone else invented it before you did. With that kind of searching effort, they will probably find something that neither we nor the patent office knew about. As a result, they could knock out or invalidate some of our claims, while others remain viable. By now, you can see that the more intelligently built claims we have in our patent, the greater chances we have that a competitor can’t knock them all out.
A good way to think of claims is like bullets in a gun. The more we have, the more shots we have at taking down infringers, and the more difficult time they’ll have trying to dodge or take down our patent.
If you’re looking at licensing your invention, you might think the number of claims isn’t your concern. However, it should be, because potential licensees prefer stronger patents to weaker ones. Indeed, weaker ones may not even be worth licensing, since the patent will be easier to get around, or invalidate. Moreover, potential licensees might even decide that they can design around or invalidate the patent themselves, and avoid dealing with you all together. Therefore, you’re best served to have as many intelligently crafted claims as you can get.
It’s generally easier to build these claims in at the beginning, or at least include as many variations of your invention as we can, so that we can build more claims later on covering these variations. Ultimately, the choice in the number of claims is yours; however, if you believe in the invention and it’s generally better to have spent a little more now than to figure out later what you should have spent.