Intermediate- and Narrow-Scope Claims

• Author: Ronald D. Slusky
• Pages: 123-136

CHAPTER NINE

Intermediate- and Narrow-Scope

Claims

A patent application should be filed not only with claims defining the

invention at its broadest, but with claims of intermediate and narrow

scope as well. A claim of intermediate scope includes perhaps one, two,

or three limitations not required to define the broad invention. A claim of

narrow scope includes even more.

Intermediate- and narrow-scope claims serve a number of functions.

Most importantly, they implement a Planned Retreat for the invention

so that if prior art makes it necessary to retreat from the application’s

broadest claims, those that remain will have given up as little valuable

intellectual property as possible while providing a defensible position for

what’s left.1 They can also trigger application of the doctrine of claim dif-

ferentiation2 and expand the royalty base.3 That and other functions of

intermediate- and narrow-scope claims are discussed in this chapter.

Fallback Feature Claims

Fallback feature claims are the Planned Retreat’s front line of defense and

are a mainstay of patent-claiming practice. A fallback feature claim is

typically in dependent form and narrows the subject matter of the claim

from which it depends—its “parent”—by reciting a feature of the inven-

tion that may be relied on for patentability if prior art renders the parent

claim unpatentable.

Drafting a set of fallback feature claims is usually straightforward

once the fallback features have been identified. Identifying the fallback

features themselves is the heart of the matter. Chapter Six presents a

problem-solution-based process for doing so. Per that process, the broad

invention is regarded as being in the prior art for analysis purposes. A

1. See pp. 62–63.

2. See p. 124.

3. See p. 133.

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