Planning Your Retreat: Using Narrower Claims as a Backup Strategy

When the Wright brothers patented their groundbreaking airplane design in 1906, they claimed broadly the concept of a fixed-wing aircraft with warp-able wings. But with aviation still in its infancy, they also included narrower claims to key components like the rudder and specific wing designs as a fallback. This allowed the Wright brothers to retain meaningful protection even when their broadest claims were challenged. Like the Wright brothers, all inventors should consider: what narrower claims can serve as my fallback positions?

According to a recent study, over 60% of patents end up narrowing their broadest claims during prosecution with the patent office. Losing your broad claims to prior art doesn’t have to be the end though. Savvy applicants also include incrementally narrower dependent claims as insurance policies when the mother claims fail.

The patent experts at Global Patent Solutions LLC (GPS) recommend having a plan B (and C and D) with claims that:

• Progressively limit broad claims to key elements and eventual specific embodiments
• Capture important singular components, subsystems, and steps of processes
• Combine prior art references in new ways unanticipated in the field
• Focus on overlooked aspects earlier inventors did not claim
• Take advantage of specificity by claiming exact measurements, ranges, configurations etc.

Like retreating army forces, relinquishing ground with narrower claims is sometimes necessary—but each fallback claim still holds valuable territory. Coordinating with patent experts ensures you maximize coverage, with broad claims covering wide ground and narrow claims protecting assets.

Don’t leave your intellectual property exposed. Be sure to supplement bold broadside claims with supporting narrower ones, giving your invention layered protection. Because the only thing worse than narrowed claims…is having no claims left at all.

This article is part of a series entitled “A Guide to Protecting Your Innovations”.  To start the series at the beginning, click here.

Next up in our series, we answer the question: “What claims are likely to be allowed by the patent examiner?“