Don’t Look a Gift Horse in the Mouth.


We have been working with our U.S. associates in an attempt to achieve issuance of a U.S. patent for one of our clients. The latest official communication from the patent examiner set out that a number of the patent claims were allowable. As the reader may know, a patent specification includes a series of patent claims that define the invention. The patent claims are in the form of numbered paragraphs that are divided into what are known as independent claims and dependent claims. An independent claim defines the broadest scope of protection sought by the applicant. The dependent claims are paragraphs that are of narrower scope than the independent claims. The dependent claims take their respective definitions from the independent claims. For example, if claim number 1 defines a widget with components A, B, and C, then dependent claim 2 can be written in the form: “The widget as claimed in claim 1, which includes D.” Claim 2 is then interpreted as defining an invention with components A, B, C and D.

So, in this case, the U.S. examiner was prepared to issue a patent that defined, most broadly, an invention described in one of the dependent claims. Thus, it was possible for our client to amend the claims to provide an independent claim that included the components of any one of the claims identified by the examiner as being allowable in order to have a patent issued to the client. We worked with the client to identify the allowable claim that would define a product that most closely aligned with that being commercialised by the client.  It was conceivable that an infringer could work around the claim and the client was somewhat concerned about this.

Fortunately, in most jurisdictions, it is possible to file what is known as a divisional application at any time before the grant (or issuance in the case of the U.S.) of the patent. This allowed us to propose a strategy that would allow the client have a patent issued and also to pursue broader protection by way of the divisional application. In the event that we are successful with the divisional application, the client will have two U.S. patents. This can add significant value to the client company since both those U.S. patents will be owned by the client company. Furthermore, infringement of one patent would likely result in infringement of the other. Both of these factors can be attractive to investors.

Rejecting the examiner’s proposal can be disingenuous. Examiners are human and are often subject to confirmation bias. Given the high cost of filing a response to an office action, particularly if the response includes significant argument, our recommendation is that clients do not look a gift horse in the mouth, particularly if the allowable claim(s) defines the product being commercialised. At the very least, the client will own an issued patent that covers a commercialised embodiment of the invention. The pending divisional application can form the basis of a further issued patent that covers potential work-arounds.