Q: Based on the "All Elements Rule" How do I draft an independent claim to prevent designing around my patent?

Consider the independent claim format.

1. An apparatus comprising:

Element A;

Element B; and

Element C.

Assume my invention is a house with:1. a bedroom, 2. a kitchen 3. and a toilet. It's common knowledge that a house can functionally exist without one or two of the the above-mentioned "elements". Please I will appreciate a simple independent claim format that can prevent others from designing around inventions like my "house." Thank you.

2 Lawyer Answers

J.D. Houvener

PREMIUM
Answered
  • Patents Lawyer
  • Mountlake Terrace, WA

A: There are a lot of things you may not be considering here. Have you done a prior art search? Is your specification enabling? Claim drafting is a true art - akin to a Dentist filling a cavity, a Doctor casting a broken bone, a CPA filling out a detailed depreciation schedule.

Hire a patent attorney! :)

Peter D. Mlynek

Answered
  • Patents Lawyer
  • Moorestown, NJ

A: I am not sure if I understand your question. Let me try to answer it.

Suppose that your claim reads:

“1. An apparatus comprising: element A; element B; and element C.”

If someone makes the apparatus with elements A, B, and C, then he would infringe on your patent.

If someone makes the apparatus with elements A, B, C, and D, then he would infringe on your patent.

If someone makes the apparatus with elements A and B only, then he would NOT infringe on your patent.

One way of making your patent claim harder to get around is to put your claim into the disjunctive form instead of conjunctive, to get a much broader patent

“1. An apparatus comprising: element A; element B; or element C.”

or, typically (though not always) equivalent Markush form:

“1. An apparatus comprising an element selected from the group consisting of A, B and C.”

In the disjunctive or Markush formats if someone would make the apparatus comprising any of A, B or C, then your claim would be infringed.

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.