What is your strategy for dealing with overly broad patent claims during prosecution?

Understanding the Question

When an interviewer asks, "What is your strategy for dealing with overly broad patent claims during prosecution?" they are probing into your practical skills and strategic approach as a Patent Attorney. This question targets your ability to navigate the complexities of patent law, particularly during the patent application process. Overly broad claims can lead to objections from patent offices, increase the likelihood of rejections, and potentially weaken the enforceability of a patent if granted. Therefore, understanding how to refine and negotiate claims is vital for a Patent Attorney.

Interviewer's Goals

The interviewer's primary objectives with this question are to assess:

Your Knowledge of Patent Law: Understanding the balance between broad and narrow claims is fundamental. Broad claims can cover a wider range of infringements but are harder to get approved. Narrow claims are easier to get approved but offer less protection.
Strategic Thinking: The ability to develop a strategy that navigates between making claims broad enough to provide valuable protection while ensuring they are not so broad as to be unenforceable or rejected by the patent office.
Communication Skills: Your capability to effectively negotiate with patent examiners and persuade them on the validity of your claims, along with your ability to communicate with clients about the need to possibly narrow their claims.
Problem-Solving Skills: How you handle challenges and objections during the patent prosecution process, including your approach to amending claims to satisfy both the client's objectives and the patent office's requirements.

How to Approach Your Answer

Your response should highlight your understanding of patent law, your strategic thinking in crafting and adjusting claims, and your problem-solving abilities. Here are key points to include in your answer:

Demonstrate Knowledge: Briefly explain the importance of claim scope and the potential issues with overly broad claims.
Outline a Strategy: Describe a step-by-step approach for how you would review and adjust overly broad claims. This might include conducting a prior art search to understand the novelty of the invention and consulting with inventors to pinpoint the innovative aspects that need protection.
Show Communication Skills: Mention how you would discuss these issues with your client, explaining the risks of overly broad claims and the benefits of a more tailored approach.
Present Problem-Solving Examples: If possible, provide examples from your experience where you successfully negotiated claim amendments with patent examiners or persuaded clients to adjust their expectations.

Example Responses Relevant to Patent Attorney

Here are example responses that incorporate the above elements:

Example 1:

"In dealing with overly broad patent claims, my first step is to conduct a comprehensive review of the prior art and the claimed invention to identify the truly novel aspects. Understanding the landscape helps in crafting claims that are broad enough to be valuable yet specific enough to be defensible. I then discuss these findings with the client, highlighting the importance of focusing on these novel aspects to ensure both approval and strong protection. Throughout the prosecution process, I maintain an open dialogue with the patent examiner, using their feedback to further refine the claims."

Example 2:

"My strategy involves initially drafting claims with a reasonable scope that balances broad protection with the likelihood of approval. When faced with overly broad claims, I work closely with the client to narrow them, focusing on the invention's core innovative features. This involves explaining the potential legal and commercial implications of overly broad claims, including the risk of rejection and future enforceability issues. I also prioritize clear, persuasive communication with patent examiners to address their concerns and negotiate claim amendments."

Tips for Success

Be Specific: Use specific terms and examples that show you're knowledgeable about patent law and the prosecution process.
Stay Client-Focused: Emphasize your dedication to protecting the client's interests while navigating the complexities of the patent system.
Highlight Teamwork: Mention how you collaborate with clients, inventors, and examiners to achieve the best outcome.
Reflect on Experience: If you have prior experience, share how it informed your approach and contributed to your success in managing overly broad claims.

By carefully crafting your answer to showcase your expertise, strategic approach, and problem-solving capabilities, you'll demonstrate to the interviewer that you're well-equipped to handle the challenges of patent prosecution effectively.