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[G8ZoST]

I often come across applications in the software field, usually by bigger companies, that have claim sets that are incredibly broad. I would guess that the chances of these getting allowed are pretty slim (even though it does happen - sometimes when reading allowed claims I wonder how anybody can sell software without constantly being sued over most of the features).

My question here:

- Do these companies just do this because the claims might go through, and, even though they probably wouldn't survive reexamination, they are then tools to scare the competion? The cost for a few more office actions / RCE may not matter much to them when they then have to amend.
(This would be backed up by how little they often end up with, claims that have so many limitations added that they are next to worthless, so that there may not have been much of a real invention initially.)

- Is this an attempt to hide what the claimed invention is going to be? After all, from the published claims this is not apparent, and it makes monitoring things harder for the competition.

Any thoughts on that?

[ME]

Some companies do not care what exactly the patent is for. They just want to have a certain number of patents in a particular area. Often once they find something patentable they will file a divisional in an effort to obtain a second or third patent from the same application.

[OMG IP]

Think of a claim around a single aspect of technology as a sphere.  If that sphere has value to Megacorp, they have no problems trying to get that sphere as large as possible and/or obtaining all the spheres in the area, whether it means filing really, really broad claims, and then amending toward the commercial embodiment, as may be necessary to get to allowance.

This analogy makes more sense if I can draw it on paper in front of you.

[Isaac]

(This would be backed up by how little they often end up with, claims that have so many limitations added that they are next to worthless, so that there may not have been much of a real invention initially.)

I find this observation somewhat paradoxical.  You are suggesting that companies file broad claims but are satisfied with narrow protection?

- Is this an attempt to hide what the claimed invention is going to be? After all, from the published claims this is not apparent, and it makes monitoring things harder for the competition.

Perhaps no search of the prior art has been done.

[G8ZoST]

Regarding the starting with broad claims and accepting narrow ones:
My impression is that they go for the maximum, just to see if they can slip things past the examiner, but then are content to accept whatever they get since this is at least another patent to increase the number in their portfolio. With really large portfolios, the mere size alone is a deterrent, since nobody has the time to analyze the entire portfolio properly.

And regarding the lack of a prior search:
From what I gather there are corporations out there (e.g. at least some parts of Microsoft R&D) that do not perform a search, possibly because they fear triple damages for willful infringement and consider ignorance the better defense.

[Isaac]

My impression is that they go for the maximum, just to see if they can slip things past the examiner

I don't believe that practioners typically try to sneak things past the examiner.  I don't do that.   If I submit a broad claim, I'm anticipating that the examiner will do a proper search and allow the claim because the claim is novel and non-obvious.

From what I gather there are corporations out there (e.g. at least some parts of Microsoft R&D) that do not perform a search, possibly because they fear triple damages for willful infringement and consider ignorance the better defense.

I don't believe post Seagate, that people have to act in this way anymore.  Applicants have a thousand reasons for not doing a search, and typically, when corporations do a search, they do not conduct the search in house anyway.

[JimIvey]

I'll just answer the question generally since I'm often accused of/known for writing broad claims.

There's no nefarious, clever strategy other than you try to claim as broad as you think you can when you draft them.  The declaration the inventor(s) must sign states under penalty of perjury that they believe they are the first inventor(s) of the claimed subject matter.  I never draft a claim that might get an inventor in trouble for perjury.

The simple reason is that people involved with the patent application aren't aware of anticipatory prior art for the broad claims at the time of filing.  If you honestly believe you've invented the wheel, you claim the wheel.  It's not uncommon for the examiner to come back with prior art in the first Office Action that makes me re-think the claims.  That's what the whole process of examination is about.

With respect to software applications, the growth of the technology combined with the reluctance of the PTO to recognize software as "technology" (making it difficult for software types to get registered as a practitioner) results in many practitioners without a lot of software experience writing software patents.  As a result, they might be less aware of the prior art that might be out there than practitioners with software experience would be.  Accordingly, the claims at filing might cover prior art that it probably shouldn't.  Those claims won't survive examination.

In short, we claim as broadly as we think we reasonably can.  We aren't always right in assessing how broadly we can reasonably claim.

Regards.