Fallback Features and the Planned Retreat

• Author: Ronald D. Slusky
• Pages: 61-77

CHAPTER SIX

Fallback Features

and the Planned Retreat

Prior art that comes to light after a patent application has been filed

may render its broadest claims unpatentable or invalid. This chapter

presents an invention analysis strategy—called the Planned Retreat—to

take account of that possibility. At the heart of the strategy is the use of

the problem-solution paradigm to identify the invention’s “fallback fea-

tures,” which ultimately translate into intermediate- and narrow-scope

claims for the patent application.

The Need for a Fallback (Retreat) Strategy

A patent application must include at least one claim.1 Limiting ourselves

to that one claim is not a good idea, however. We can never be sure that

all the relevant prior art has been found and that the problem-solution

statement—and any claim on which it is based—is not overly broad.

There’s a lot of prior art out there, including over 7 million patents issued

in the United States and tens of millions more issued in countries around

the world, not to mention all the journal articles and technical books ever

written.

A patent application therefore needs claims of varying scope. This

means not only claims that define the invention at what we believe to

be its broadest, but also other claims, either in independent or depen-

dent form, that stake out more modest parcels of intellectual property by

qualifying the broad invention definition.

We hope that the patent application’s broadest claims will survive

patent examination, as well as any subsequent attack on patentabil-

ity mounted by the Opposing Team. If the broadest claims do survive,

the presence of narrower claims in the issued patent is of little moment;

a patent is infringed even if only one of its claims is infringed. On the

other hand, we never know what prior art may surface after the appli-

cation is filed that will force a retreat from the invention boundaries

1. 35 U.S.C. 112(b).

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62 CHAPTER SIX

initially staked out. Nor can we predict the necessary extent of such a

retreat. Without a range of broad, intermediate-scope, and narrow claims

in the issued patent to fall back on, the patent owner might be left with

no enforceable patent rights whatsoever.

These are among the important reasons that a patent application

should be filed with a suite of intermediate- and narrow-scope claims at

the outset. Indeed, depending on (a) whether the patent is pending or

issued, and (b) what was or was not disclosed in the patent application,

it may be expensive or even impossible to secure the claims that best

define the invention in view of newly discovered prior art.

The Planned Retreat

The Planned Retreat is a strategy for formulating an array of successively

restricted fallback positions, each defined by a respective claim, to which

we can retreat if newly identified prior art forces us to do so. Which fall-

back position we retreat to depends, of course, on what the prior art does

or doesn’t show.

The underlying philosophy of the Planned Retreat is that there is no

point in surrendering an acre if, with a little thought and planning, a pat-

entability issue can be resolved by giving up a square foot or two. That

philosophy is implemented by selecting our successive stages of possible

retreat—that is, each successively narrower claim—so as to fulfill two cri-

B

A

FIGURE 6–1If the parcel of intellectual property

initially staked out is too broad (A), a well-thought-out

Planned Retreat enables us to give up as little valuable

intellectual property as possible while establishing a

defensible position for what’s left (B).