Tag: Patent Claims

The 66 Claims - A Patent Infringement Case

66 Claims: A Tale of Patent Infringement

The 66 Claims

This is a tale of what happened to the 66 claims.

A, B and C were officers and engineers for ABC company located in Cincinnati. In 2022, A, B and C assigned their interests in their joint invention to ABC company. In 2022, ABC company filed the Patent Application in the United States Patent and Trademark Office (USPTO). The original ABC Patent Application had 66 claims.

What Happened With the 66 Claims

In 2024, A and B were playing a best ball golf tournament in Louisville. The other twosome happened to be X and Z, who were officers of XYZ company located in Indianapolis. Before starting the back nine, all players took a break at the clubhouse. By the thirteenth hole, A and B were talking about their joint invention.  X and Z listened closely.

In early 2025, ABC company became aware that XYZ company was selling an XYZ invention that appeared to be identical to the ABC company’s invention. ABC had yet to receive regulatory approval for use of its invention. Somehow, XYZ received regulatory approval and made it to market before ABC.

The 66 Claims of the ABC Company’s Application

In the summer of 2025, ABC received the First Office Action from the Examiner regarding the 66 claims. In the Office Action, the Examiner rejected the first 60 claims of the 66 claims but indicated that the last six claims were allowable if some of the language of those six claims was tweaked. Since A, B and C were engineers and not patent attorneys, A, B and C opted to seek legal assistance.

What Did the Law Firm Do With ABC’s Patent Application?

  • First – the firm determined what product XYZ sold.
  • Second – the firm tweaked the last six claims to make them allowable while at the same time ensuring that those six claims read on XYZ product.
  • Third – the firm filed a Response to the Office Action cancelling the first 60 claims and requesting the Examiner allow the last six claims to mature into a Patent.
  • Fourth – the firm prepared another five Patent Applications claiming priority/benefit to the first ABC Application. Each of those five Patent Applications contained 20 claims.  Three of the Applications were Continuations, and one of those included less structures to achieve the same result. Two of the Applications were Continuation-In-Part Applications that included additional structures that ABC had invented since the filing of the first ABC Company Application.

35 U.S.C. § 120 allows an Applicant to claim the benefit of an earlier Patent Application if the earlier Patent Application is still pending.

What Was the Outcome of the 66 Claims?

  • Before the first ABC Company Application was abandoned, the original first 60 claims morphed into five additional Patent Applications having a total of 100 claims.
  • Original claims 61-66 were the basis for the first Patent. ABC sued XYZ for infringement.
  • Before going to trial and because of the distinct possibility of intentional infringement and treble damages, XYZ agreed to allow ABC to select the infringement damages calculation, e.g., ABC’s losses, such as lost profits or a reasonable royalty, or an accounting of the infringer’s profits.
  • XYZ ceases to use, offer for sale, sale, or make ABC’s patented invention.

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Patent Offices are Different

Not All Patent Offices are the Same

Patent Offices around the world will likely have different rules of practice.  In other words, how you obtain your Patent can require different legal procedures and strategies.

Patent Office Characteristics

  • The United States Patent and Trademark Office (USPTO) allows an Applicant to file an Original Patent Application, a Continuation Application, a Continuation-in-Part Application and/or a Divisional Application.
  • The Canadian Intellectual Property Office (CIPO) allows an Applicant to file an Original Patent Application or Divisional Application.
  • The European Patent Office (EPO) allows an Applicant to file an Original Patent Application or Divisional Application.

Types of Patent Applications

  • A Divisional Application is a Patent Application that is “divided out” from an Original Patent Application.
  • A Continuation Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation Application is filed before the prior Pending Patent Application is patented. A Continuation Application is supported by the Specification and Drawings of the prior pending Patent Application.
  • A Continuation-in-Part Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation-in-Part Patent Application is filed before the prior Pending Patent Application is patented. A Continuation-in-Part Application includes “new matter” that was in included with the Specification and/or Drawings of the prior pending Patent Application.
  • Divisional Patent Applications, Continuation Patent Application and Continuation-in-Part Patent Applications can be utilized by the owner to extend the scope of the Patent’s limited monopoly.

The Scenario

Our Louisville company filed original Patent Applications for the “gadget” in the USPTO, the CIPO, the EPO and other Patent Offices around the globe. After filing the Patent Applications, our engineering department invented our new and improved “gadget” that was similar to but slightly different than the original “gadget.”  Management decided to file additional Patent Applications claiming the improved “gadget.”

Potential Patent Offices’ Strategies

United States – USPTO

In the United States, your company could file any of the above Patent Applications for the improved “gadget.”

According to 37 C.F.R. 1.53, “a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c) or 386(c).”

European Union – EPO

The only potential option in the EPO is to file a Divisional Patent Application.  However, your improved “gadget” claims would only be allowed by the EPO if you can meet the conditions of EPO Rule 3.1.

EPO Rule 3.1 – Replacement or Removal of Features from a Claim 

“The requirements of Art. 123(2) are only met if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority according to Art. 89, from the whole of the application documents G 3/89, G 11/91 and G 2/10).

Art. 123(2)

If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2):

(i)      the replaced or removed feature was not explained as essential in the originally filed disclosure;

(ii)     the skilled person would directly and unambiguously recognize that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H-V, 2.4 and G-VII, 11); and

(iii)    the skilled person would recognize that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).”

Thus, in the EPO, it is unlikely than an Applicant can meet the strict conditions of Art. 123(2) for an allowable amendment to the claims of a European Divisional Patent Application.

Need Help With Your Patent Application?

If your company needs assistance with filing Patent Applications in United States and foreign jurisdictions, please contact Business Patent Law, PLLC.

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, we are here to help.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.