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Author Topic: To claim a device including a novel feature or just the novel feature?  (Read 796 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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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

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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