Thanks for your input. I’m still waiting for a response from my attorney. (Maybe he’s waiting for my check to clear.)

I’ll let you know what he says.

Try to keep your patent claim as broad as possible you might have to explain to examiner in more detail. If you put an eraser on then someone can invent around with no eraser

IANL, but I have been through this back and forth a few times.

Definitively less is more when it comes to independent claims. Adding more stuff to them just makes the claim more and more narrow and less and less useful. To your question, if the claim is for a pencil with an eraser, a pencil without the eraser will NOT be covered under it. A pencil without an eraser might become obvious given your claim, thus not patentable, but not covered either.
 
What I question is that the ‘Patent Office added stuff to the claim’ AFAIK the patent office never does that. The most it does is suggest possible avenues for solving the issues they found, with no guarantees that they would not find more. It is normally the patent attorneys that would add the stuff to the independent claims, as it is the easiest way to get around any objection (and get paid). I have seen in many cases that they go so far as to make the prototype you have on your hand not to be covered by the patent!!!

Hi Susan,

No expert here and it has been a while since I have delved into this myself…but often is the rule of thumb that less is more when it comes to an independent claim. The independent claim (or claims) are stronger or “broader” when they lean towards a basic description. In other words, greater detail will limit your ability to protect your idea/invention against another product or patent that can eliminate specific details found within an independent claim. Specifics are better suited for the included dependent claims. Having said this, it is easier said than done.
The patent office will almost always counter a claim that might appear too broad. Finding the middle ground between what you want and what the examiner will allow, is where it all happens…hopefully that middle ground is solid enough to build on. Of course every case will entail it’s own unique set of circumstances…
Not legal advice just my opinion and I’m sure that there are others here that will chime in…good luck!

Wow Sue, even my first patent attorney wasn’t that bad when it came to cost. It sounds as though you’ll be okay, but I’ll be keeping my fingers crossed for ya! I look forward to hearing the result. Thanks for sharing!

I think everything will be fine the way it’s written. I’ll email my patent attorney to see what he says. (An email that may set me back $45).

I suppose another example would be a patent for a pencil. Claim #1 describes the pencil and says it further comprises an eraser at one end. Would there be a problem if you manufactured your pencil without an eraser? What if someone else started to manufacture your pencil without an eraser?

I’ll let you know what my attorney says.

I’m not the knowledgeable one either but I am fighting my own patent battles. I’m curious to know what your patent attorney has to say about this Susan. Other than the bill he sent you, have you spoken to him about it? I’d be very curious to hear what he has to say.

The patent process can be extremely frustrating because of their rigid rules. I seem to be having the opposite problem. I was forced to switch attorneys recently and only just discovered that some critical language that SHOULD have been in one of my other applications was omitted by the FIRST attorney!

As a “non-attorney spokesperson” it sounds as if having a little extra information in there may not be such a big deal as you say. Even if it makes the design appear a bit more complicated. That shouldn’t have any effect on the manufacture of the product.

The charge for the aforementioned information is exactly two cents! ;)

Hey Susan,

Glad to see you back! I don’t know that I really have the answer to your question, but it was my understanding that once the language is in there, you can’t remove it, only add to it. I’m sure someone more knowledgable will chime in, but I’m pretty sure someone warned me of that when I was about to file my patent app.