However, drafting a claim that is too narrow can significantly reduce the value of any granted patent. Such a claim will offer a greater chance of a competitor being able to identify a useful workaround, and a claim that is too narrow to start with risks being left with a scope of protection that is more limited than is justified by the invention.

It is therefore important to get the scope right and to establish useful fall-back positions, should an amendment be required, when drafting claims to allow an efficient grant of a commercially useful patent.

Example: a fitness tracking watch

One temptation is to simply claim the product that you are looking to protect, after all, that is the product that you wish to prevent others from copying. However, this may be a missed opportunity to increase the scope of your protection and future-proof your intellectual property portfolio. Considering a fitness tracking watch as an exemplary technology, a possible claim 1 for a fitness tracking watch having a new sensor which provides more accurate measurements could be:

1. A fitness tracking watch comprising:
a wrist strap;
a display; and
a [new sensor].

On the face of it, this may appear to be a useful claim; it clearly covers the product being marketed, and doesn't seem excessively ambitious or limiting. However, considering the activities of possible competitors and any future products may lead to a different conclusion.

Is this claim bold enough?

The technical area of fitness tracking hardware is a good example of an evolving industry. While early trackers were relatively limited in functionality, such as clip-on pedometers, over time the capabilities of such devices have improved significantly to include tracking biometric data, such as heart rate, and other data such as location. Many devices now include displays so that a user can view their data without an external device (as well as allowing other functionality, such as receiving messages or seeing the time), and audio inputs/output to enable phone calls or device control via voice commands.

However, while many devices do include displays and audio capabilities there is a growing trend for devices which do not. The WHOOP® band has been well-received, with other devices also generating a lot of interest (such as the recently-launched Fitbit Air® and the highly-anticipated Garmin® Cirqa®). There is also a significant market for smart rings which provide biometric tracking in a similar fashion. Such devices would not fall within the scope of the claim 1 provided above, as they do not include the required display, indicating that the claim may in fact be too narrow, despite covering the product that has been developed.

Had a broader approach to drafting the claims been adopted, claim 1 may have looked different. For example, an alternative claim 1 could take the form:

1. A [new sensor].

This is undoubtedly a more useful claim, as it would cover products independent of whether or not they comprise a display. The more generalised claim language also does not require that the sensor is worn by a user, or even present in a device that is intended to be worn by a user. As such, the goal of covering a wider range of products is achieved by this alternative wording.

Are there any drawbacks?

However, in some jurisdictions this claim may in fact be considered too broad due to the lack of detail. For example, an objection could be raised at the European Patent Office (EPO) based upon a lack of technical effect; the technical effect is at the core of the EPO’s approach to assessing the inventiveness of the claims. The technical effect is the advantage associated with any features of the claims that are not found in the closest prior art. In order for an invention to be recognised (and a patent granted), the technical effect must represent a non-obvious solution to a technical problem.

When considering whether a technical problem is solved, the EPO Guidelines state (G VII-5.2) that: “A technical problem may be regarded as solved only if it is credible that substantially all claimed embodiments exhibit the technical effects on which the invention is based.”

In other words, each embodiment which is covered by the claims should provide the technical effect that has been identified. The new sensor is considered advantageous in that it provides more accurate measurements (this is the technical effect); however, it is arguable that embodiments are covered that do not provide this effect. For instance, those embodiments in which the sensor is not worn by a user, or those in which there is no additional hardware for actually obtaining measurements collected by the sensor. In other words, a more accurate measurement is only advantageous in the case that the measurement is both obtained and able to be used.

A lack of specificity about the use case may also allow a greater range of prior art to be cited, such as the use of a similar sensor in a different technical area. This can lead to unnecessary objections being raised in prosecution based upon only tenuously related products. While not terminal for the application, as amendments can be made, this would add a delay to the grant process which may be undesirable. Another associated drawback is in the case that the results of an early search by a patent office is used to inform foreign filing decisions – without a suitably specific search, it can be hard to derive any conclusions about the long-term patentability prospects of an application.  

Where is the middle ground?

It is clear that a claim that is too restrictive has little value, and that a claim which is all-encompassing is likely to cause issues in prosecution; so how do we find an appropriate scope for the claims?

Typically, the starting point in the claim drafting process is to identify the technical effect associated with the invention and to determine the minimum set of features that are required to achieve that effect. This can reduce the risk of a claim being considered too broad, as by including each of the features in this set it can be demonstrated that the technical effect is able to be achieved across the entire scope of the claim.  

A suitable claim could simply be to a device, configured to be worn by a user, comprising the new sensor. Further to this, an additional limitation could be added relating to how the sensor is worn, such as in contact with the skin if this is required for a useful measurement to be obtained. Such a claim would be expected to avoid the issues that have already been discussed in that it is implicit that the device would be able to access the sensor’s outputs, and that it is explicit that the device should be worn by a user.

Once the scope of claim 1 has been determined, any additional benefits or specific features can be used as the basis of dependent claims. The dependent claims are typically drafted to ensure that a specific product is being covered, as well as to ensure that fall-back positions are able to be easily identified should an amendment be required during prosecution. Examples of dependent claims in this case include features relating to the form factor (such as a device to be worn on the wrist, or more specifically a watch), variations for the sensor (such as an operating frequency or size), or uses for the sensor data (such as a specific denoising process to be applied, or combining the data with other measurements). 

Conclusion

This simplified example demonstrates the importance of ensuring that the features in your claims are essential to the invention, and that the features essential to the invention are in your claims. Without this focus, there is a risk of an extended prosecution time and cost, and/or that any granted patent is of limited commercial value. It may be the case that claim 1 as drafted does not particularly resemble your product or idea, but this is not a reason to be concerned as the overlap between the core features of a product and the features which contribute to the technical effect is rarely a complete one.

This is one area in which a patent attorney can add value to your application during the drafting process, working with you to identify how to obtain effective protection for your business and not just your product.