In my previous post regarding patent valuation (“What’s My Patent Worth?”), I listed a number of questions to answer in order to arrive at a theoretical value for a patent. The initial question was: What is the scope of your patent?

The scope of the patent affects its value in a number of different ways, such as the potential to assert it against infringers, benchmarking against competitor’s patents, and potential monetization through licensing or sales.

From the time the patent application is filed to the time it issues (assuming it does issue), it’s more likely than not that the scope of the patent will have been pared back to some extent. This happens as a result of the patent examination process.

The Patent Examination Process

When the patent application lands on a patent examiner’s desk, he or she conducts a search for “prior art,” including prior patents, published patent applications, and technical literature to determine whether the subject of the application was taught previously, or would have been obvious. If so, no patent will result. If not, but certain aspects of the claimed invention were taught or obvious, the patent attorney and examiner begin to haggle over the “claims” language.

The “claims” portion of a patent defines the scope of your legal right, particularly excluding others from making, using, selling, or offering to sell the invention.

Basically, it is the patent examiner’s job to allow the patent while ensuring that it is not overly broad in view of the prior art identified during the search. In contrast, it is the patent attorney or agent’s job to ensure that the patent examiner does not unnecessarily limit the scope of the claims. In determining a compromise, it’s likely that the claims language will change during the examination process. As a result, the scope of the patent coverage deviates from the originally intended form, to some extent.

Understanding the Changes

So the question then becomes, what does the patent cover — i.e., what is the scope?

Each time the claim language is changed during the patent examination process, your patent attorney or agent needs to explain what the changes mean in terms of potential patent protection.

Frankly, if you have gotten to the point of issuance and your patent attorney or agent hasn’t communicated what the change in scope means, you’ve got other problems. Personally, I recommend that you start looking for another patent attorney or agent at this point!

Understanding these changes, and therefore the scope of the patent itself, is essential. Does the patent still cover your commercial product? Does it still let you preclude others from entering the marketplace by asserting the patent? These and other questions can only be answered by understanding the scope of your patent.

Make sure your patent attorney or agent explains what the wording changes mean every time changes occur to the claims language. Ask them. Don’t just assume they’ve done their job. You know what they say about the word “assume”? (If not, e-mail me — I will tell you.)

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Bob Siminski runs a legal practice concentrating on obtaining, enforcing and licensing patents, trademarks and copyrights. In addition to having obtained hundreds of patents for clients, he provides litigation support, due diligence, intellectual property portfolio analysis, strategic counseling, valuation support services, opinions, and other legal business services. You can e-mail Bob at rmsiminski@hdp.com.