Doing claims checks of your Patents are essential because they define the scope and boundaries of the Patent.
Claims are Legal Boundaries
As previously indicated in this Blog on Patent Infringement: “A deed for real property determines the real property’s boundary and what constitutes a trespass. In a similar vein, Patent claims define the intellectual property boundary of the Patent and what establishes an infringement.”
Approximately five years ago, our company filed three Patent Applications for three separate products that our company continues to market and sell to our national and international customers.
Our attorneys and the USPTO examiners had several rounds of arguments regarding the patentability of claims of our three Patent Applications. Over this timespan, some of the as-filed claims of the three Patent Applications were amended, canceled and/or re-amended by our attorneys. Before the end of the patenting process, our attorneys also added some new claims not previously set forth in the as-filed claims. Even the examiners made some examiners’ amendments to the claims.
After all the arguments, the USPTO issued Notice of Allowances. We paid the Issue Fees and we eventually received the three granted Patents.
The claims of two of the Patent we received were perfect. However, the claims checks revealed that about half of the claims of the third Patent were incorrect.
What should we do?
Actions: When a Claims Check Reveals Errors
- Although not recommended, a few Patent owners do not attempt to correct the incorrect claims.
- Review the USPTO file wrapper and your files to determine where and when the claims errors occurred. If the errors were caused by the USPTO, the USPTO requires no additional fees to correct the incorrect claims. If the errors were caused by the Applicant(s), the USPTO requires the payment of a government fee to correct the errors.
- Sometimes, other parts of a Patent contain errors that need correction.
- Submit a Certificate of Correction (PDF) to the USPTO.
Claims can be considered the heart and soul of the Patent, so it’s essential that yours be correct.
Need More Information?
If you have a question about Claims checks, please get in touch with Business Patent Law, PLLC.
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