Author: Adriana L. Burgy
Editor: Leslie A. McDonell
As former Chief Judge Giles Rich proclaimed, “The name of the game is the claim.” In Part II of “Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics” (link to Part I can be found here), we will look at claiming strategies.
Often times, the number of claims that protect an invention is overlooked and not necessarily a discussion point when drafting a patent application. And, gone are the days of 100 plus claims due to excess claim fees, but that does not mean applicants should be limited to three independent claims and a total of twenty claims, i.e., the number of claims allotted with the basic filing fee; definitely not. In an earlier post, we discussed examining the number of claims that protect an invention; the post can be found here. The number of claims should also be a strategic tool when addressing Section 101 rejections. Continue reading