It Depends

A few years ago, a university professor told me about a patent he was trying to get for his invention. He said, “Claim 1 was rejected, but Claim 2 might get approved.”

I looked at his patent documents. Claim 1 was very broad — too broad to be allowed. Claim 2 was full of detailed conditions. It was narrow, and yes, probably would get allowed.
But Claim 2 was so narrow that even if it got allowed, it probably wouldn’t lead to any patent infringement.


From an outsider's point of view, Claim 1 was too greedy and Claim 2 was too weak. There had to be a better, more balanced option somewhere in between.

I thought about telling the professor, “You could aim for a broader claim than Claim 2, even if Claim 1 doesn’t work.” But he seemed really happy about maybe getting a patent at all.
Maybe saying more would just cause trouble.

For the professor, just getting a patent was an achievement. If we tried for something harder and failed, it might hurt his record.

But from the university’s perspective, they spent time and money, and they might end up with a useless patent. That’s a loss for them.

If the goal is to make money or keep out competitors, then yes, it’s worth trying to make the patent claim as broad as possible. But that’s not always the goal.

Different Reasons for Filing Patents

Startups often want to show investors that they are strong in technology. So, they try to file many patents or own many patent rights. This makes them look impressive from the outside.
Most investors don’t really check how good those patents are (which is a problem on its own). I once heard someone working in a private equity fund say, “Patents are like a black box when we make investment decisions.” That means they don’t understand them well and can’t tell if they are useful or not.

A president of a small company once told me honestly, “We filed this patent to make it easier to get a loan from the bank.”

Sometimes, patents are filed not to protect the invention, but to make sure no one else can patent something similar. It helps raise the level of what is considered known technology (called prior art), so others can’t get a patent for the same thing.

Other times, companies say, “We’re going to use the patent document as a technical manual inside our company, so please write it like that.” (They don’t care much if it gets allowed)

There are also cases where someone wants to get a patent quickly. In that case, we write very narrow claims that are likely to be allowed with no rejections.
Once they get the patent, they can file a divisional application later and try for a broader claim.
 
Patent attorneys usually want to make the patent as strong as possible. That’s part of our job. But if we push too hard, we might miss what the client really wants.

Quality and Quantity

Some people want to focus on quality. They want to spend enough time and money on each patent application to create a high-value patent right.
Others care more about quantity. They want to have as many patents as possible, even if they don’t spend much time or money on each one.
Which is better — quality or quantity — depends on the client. Even for the same client, their approach may change over time as their business grows or the market changes.
Some clients say they care about quality, but in reality, they care more about quantity. Others leave the decision to their patent attorney.

Even if you have a strong basic patent, you might still lose in the market if your competitor has a big “army” of smaller patents. So focusing on quantity isn’t always a bad idea.
Even a master swordsman can’t win when attacked by a hundred people.

It’s important to guess what the client really wants and be flexible. What works well for one client might not work at all for another.

In theory, there are basic rules. But in real life, there is no one-size-fits-all answer. The best way often depends on the situation and the client.