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
J.D. Houvener
  • 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
Peter D. Mlynek
  • 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.

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