Patent and Invention Help Forum

Not claiming all items ?

Not claiming all items ?
« on: January 14, 2017, 09:42:25 AM »
Hi Brad,

I am under the assumption that if a patented device claims
items A,B,C and D, then after which any device that has ABCD
or ABCD and E will infringe. But a product having ABC will not infringe.

Now I have invented a sports training device that has items ABCD, where
item D provides an extra unique functionality. However the device with
only ABC is a usable and (I think) a patentable device.

My worry is that if I claim items ABC and D another device can then have
items ABC, be a usable product, and be cheaper to produce and not infringe
my patent.

Now it seems to me I could only claim items ABC in the my device patent,
but actually produce and sell my device with ABC and D. So any device
with ABC will infringe. But in this case, a device could then be patented
as an improvement over mine by claiming ABC and D, with D being the
improvement !

As a solution could I claim items ABC in an independent claim and then
claim item D in a dependent claim ?

Please tell me where I have went astray in my thinking ?

Thank you for providing any answers to these questions.

Kevin

Brad

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Re: Not claiming all items ?
« Reply #1 on: January 14, 2017, 01:00:01 PM »
One option maybe to have multiple independent claims:

Independent claim 1 =  A, B, and C
dependent claims cover D

plus

Independent claim 2 = A, B, C, and D

You can try to put these both into the same patent application and some examiners may allow it while some examiners may ask you file your second independent claim as a "divisional" application. 
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Kevin

Re: Not claiming all items ?
« Reply #2 on: January 16, 2017, 11:08:26 AM »
Brad,

Thanks for the answer.

Was my thinking in the original post, in general correct ?

Thanks

Kevin

Brad

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Re: Not claiming all items ?
« Reply #3 on: January 16, 2017, 02:54:23 PM »
Yes.  If A,B, and C could form their own invention and D is only optional I would not include D into your broadest claim and instead put it as a dependent claim.

My free patent template: http://patentfile.org/free-provisional-patent-template/

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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.