Claim too much or too little IP (no. 39 in our list of IP mistakes)

I have stated often that the best simulation of IP strategy out on the market today is the 3,000 year old Chinese game of ‘Go.’  There are two key mistakes that open the door for opposing players to win.  One is to seek to claim too much space with given played pieces.  The second is to claim to little.  The winner finds the best balance between the number of pieces played and the amount of space claimed on the board.

The same principle lies with claiming too much or too little with IP, particularly when the IP merits claiming more or less.  If you claim more than your IP supports, then you are likely to attract challenges from those whose plans your IP blocks.  For example, if you take an invention for home entertainment systems and claim its application for wireless devices, you could open yourself to a challenge from wireless innovators that might otherwise not have emerged.  If that broad claim is not also balanced by narrower claims, a loss could be complete.  In this example, claiming too much becomes a mistake if you have not anticipated and prepared for the potential challenges that could arise.

The flip side, using the same analogy, could be to claim too little, for example not claiming wireless applications of an invention for home entertainment systems when you could have done so.  That could deny you the opportunity to reach the full value of your IP, especially if you had the wherewithal to enforce the claim if wireless innovators infringe upon it.

The core issue with claiming too much or too little IP rests with the uncertainty that can arise any time you either enforce or do not enforce the claimed IP.  Any time you enforce IP, you risk a challenge to its validity, and so you want that risk to balance the intended benefit of the enforcement.  Any time you do not enforce IP, you set a precedent or reputation for not enforcing IP that can lead to trouble later.

Your best position is to claim IP that your IP merits with a combination of broad and narrow claims where possible.  You neither want to lose everything if an opponent challenges a broad claim nor find yourself owning less IP than you merit.  Balancing the two can help to mitigate any mistakes in the one.

(This is number 39 in our list of IP mistakes and how to avoid them.)

(Image credit: Renato Ganoza)

One Comment on “Claim too much or too little IP (no. 39 in our list of IP mistakes)

  1. There are a few particular effects I’d also mention:

    1. Claiming too much leading to less protection that you would otherwise be entitled. Here I’m referring to the issue of prosecution history estoppel – broad claims are narrowed during prosecution leading to a claim construction (literal) which is narrower than one to which one would be entitled if the claims were somewhat narrower at the outset (literal + doctrine of equivalents)

    2. Claiming too little at the outset may limit the ability to later extend claim scope even if there is basis in the patent specification – see US  cases relating to “dedication to the public” such as J&J vs RE Services (Fed Cir 2002) where a number of embodiments were disclosed, but only a few claimed

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