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Author Topic: To claim a device including a novel feature or just the novel feature?  (Read 3632 times)

Patentstudent

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Let's presume that someone invented a novel 'feature' (comprising an LED and a small printed circuit board) for flaslights that can be incorporated in any type of flaslight during manufacturing of the flashlight.
What is the best way to go about claiming it?
Is it better to claim the 'feature' on its own or to claim a flashlight comprising the 'feature'?

Thank you.
« Last Edit: 04-20-17 at 02:41 pm by Patentstudent »
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MYK

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Claim the new thing all by itself.  That way your patent, assuming it issues as written, would apply to automotive headlights as well as to flashlights, searchlights, medical gadgets that include lighting, and so on.

If you only claim a whole device that happens to have the novel feature, then your patent would mostly apply to that whole device.

I've sometimes heard these two strategies called "novelty claiming" and "picture claiming".
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Patentstudent

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MYK, thank you. This is very helpful information.
Since I had never heard the term "picture claiming" before, I looked it up.
I found a short paragraph in Slusky's book 'Invention Analysis and Claiming' that discusses picture claiming.
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dgymboh

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While the feature alone will likely give you the broadest coverage, as MYK indicated, there is certainly nothing stopping you from also claiming a device (or class of device) that includes the feature.  You could go pretty broad with that too, actually - not necessarily limiting it to a flashlight.  This will give you a range of claim scopes to work with, and may increase your likelihood of getting something allowed quickly (and thus less expensively). 
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bartmans

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You should also Always include the commercial products that would harbour the invention. If your invention was on an improvement for a flashlight, then you should certainly claim the flashlight. If it was for a headlight of a car, you should, next to claiming the headlight, also claim a car comprising such a headlight.

Further, be aware that the commercial value may not lie in the product itself, but in the sales of utensils or spare parts for the device. Such as coffee cups for a coffee machine or new brushes for an electric toothbrush. If possible, also try to claim these, if not in a device claim, then in a method claim: method of pouring coffee comprising a step of putting a coffee cup in the new machine.
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Patentstudent

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Bartmans, thank you for this very helpful addition. It helps me look at inventions from as many angles as possible.
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smgsmc

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You should also Always include the commercial products that would harbour the invention. If your invention was on an improvement for a flashlight, then you should certainly claim the flashlight. If it was for a headlight of a car, you should, next to claiming the headlight, also claim a car comprising such a headlight.

Further, be aware that the commercial value may not lie in the product itself, but in the sales of utensils or spare parts for the device. Such as coffee cups for a coffee machine or new brushes for an electric toothbrush. If possible, also try to claim these, if not in a device claim, then in a method claim: method of pouring coffee comprising a step of putting a coffee cup in the new machine.
I'm coming in on this a bit late, but there are some issues I would like to pursue.  To avoid confusion, I'll refer to the inventive element as a "component", rather than as a "feature".  The component (such a control board) is typically integrated into a device or apparatus (such as a flashlight).

(1) From an infringement perspective, where possible, you would always want (at least) a claim to the component alone, correct?  For example, suppose A manufactures a knockoff of the component.  If you have a claim to the component itself, you could sue A for direct infringement.  Now suppose B buys the knockoff component from A and integrates it into a device.  If you have a claim only to the device, then you could not sue A for for direct infringement.  For example, A makes knockoff control boards, and B makes flashlights integrating the knockoff control board.  If the claim is for:

A flashlight comprising:
a novel and nonobvious control board;
a light bulb;
a switch;
...
and other stuff

then I couldn't go after A for direct infringement.  Is this correct?

(b) Is the reason for including device claims (where the component is the inventive element) the potential to collect more damages on infringement of the device claim?  E.g., a headlight is more expensive than the control board, and a car is more expensive than the headlight?

(c) In the EPO, can the claims for the component and the device be filed in a single app.  For example, EPO allows a dependent claim format that can be problematic in the US:

1.  A control board comprising:  ...

8.  A light assembly comprising the control board of claim 1 and ....

9.  A car comprising the light assembly of claim 8 and ....

Or would you need separate apps?

How broad could you go with this?  The light assembly can be used in a boat, train, house, practically anything.  Can you simply claim

10.  An apparatus comprising the light assembly of claim 8.
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Patentstudent

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smgsmc, thank you.
It is never too late for such a helpful reply.
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Lopp

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Claim the "feature" by itself if it is novel alone.  This will ensure you have coverage for more potential devices beyond a specific device that includes the feature.  List a few possible alternate devices in the specification to make sure you are not limited to the one device.

Also claim the device, either in a dependent claim or on its own.  This can give you more royalties upon infringement.  I.e., if you only claim the feature and the feature is only a few dollars, you would only royalties on the feature regardless of the device that uses it.  Whereas if you claim the device and the infringing device is a hundred dollars you can get royalties on the whole device.
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bartmans

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Quote
(c) In the EPO, can the claims for the component and the device be filed in a single app.  For example, EPO allows a dependent claim format that can be problematic in the US:
1.  A control board comprising:  ...
8.  A light assembly comprising the control board of claim 1 and ....
9.  A car comprising the light assembly of claim 8 and ....
Or would you need separate apps?

How broad could you go with this?  The light assembly can be used in a boat, train, house, practically anything.  Can you simply claim
10.  An apparatus comprising the light assembly of claim 8.

In the EPO you could go as broad as you wish but the element that links the claim should be the new and inventive feature/element (otherwise there would be lack of invention). In my field of technology you could claim:
1. A new DNA sequence
2. A protein derived from this new DNA sequence
3. A vector comprising the new DNA vector
4. A cell transformed with the DNA of claim 1 or the vector of claim 3.
5. A plant comprising a cell according to claim 4
6. A method for expressing the protein of claim 2 by transforming a cell with the vector of claim 3...

and so on and so on.
There is a Rule in the EPC that says that you may have only one independent claim in a claim category, but this does not apply to the situation where you have a plurality of interrelated products. Thus, claims 1-5 of my above example, though they would be regarded as independent claims in the same (product) category, would be acceptable.

[And fortunately, European examiners do not think that DSNA and the protein encoded by the DNA are two different inventions where restriction is required. ]
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Patentstudent

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bartmans, thank you for this information.
I also like the example.
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Pianist

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If I file two RPA, one for device and one for feature, how should I show this feature on device RPA?
Assume I have valve for car. How should I describe and show this valve in RPA for car with valve if I don't have patent for valve yet?
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still_learnin

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If I file two RPA, one for device and one for feature, how should I show this feature on device RPA?
Assume I have valve for car. How should I describe and show this valve in RPA for car with valve if I don't have patent for valve yet?

First question: what's an RPA?

When the novel feature is the valve, it is not common to file a separate patent application for the car with a novel valve. Instead, it's typical to file one patent application that fully describes the inventive aspects of the valve, mentions the use of the valve in a car (and describes any special interoperability with the valve), claims the valve with inventive aspects, and also claims the car plus valve with inventive aspects.

Is there some reason why you wouldn't use this approach?
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Pianist

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RPA - is regular patent application.

How should I claim car with valve? With dependent or independent claim?
I can use this valve in different places in the car. Can I just claim car with valve without positioning?
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still_learnin

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How should I claim car with valve? With dependent or independent claim?

I don't think you can claim the car in a dependent. Generally, the preamble of a dependent claim should refer to the same article as its independent:
Quote
1. A valve comprising: ...
2. The valve of claim 1, further comprising ...
What you're proposing would read like:
Quote
2. A car including the valve of claim 1.
Although it refers to independent claim 1, I don't think claim 2 is a dependent claim.

smgsmc mentions this in his earlier comment when he notes that the EPO does allow this practice.

I can use this valve in different places in the car. Can I just claim car with valve without positioning?
You don't necessarily have to claim positioning. But you shoud claim some relationship -- structural and/or functional -- between the valve and the car.
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