A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and include both picture claims, tailored to those embodiments, and broader claims, to encompass groups of embodiments. But when prosecuting the application, one may choose to put aside the broader claims in pursuit of claims tailored to a product. A thoughtful strategic decision should be made.
Counterintuitively, we often advise our life sciences and pharmaceutical industry clients to prioritize picture claims over broader claims—at least in early patent filings. Here are our top 10 reasons to prioritize picture claims over broader claims:
- Venture-Capital Fund Raising: While venture capital funds and other early stage investors do prefer to see a broad dominating patent position, sophisticated investors recognize the value of having at least one issued patent covering each of a company’s lead products, regardless how narrow the claim.
- Public Offerings: A company’s Registration Statement (S-1) will typically describe the company’s patent protection for each product. Having a picture claim issued for a product is enough to allow the S-1 to state that an issued patent covers the product. Since many S-1’s focus on product coverage, having issued picture claims is often more important than having a broad claim.
- Picket Fence: Each picture claim need not stand on its own. By obtaining parallel picture claims, the patent strategist can construct a fence. Each picket (picture claim) is slim, but collectively they block broadly.
- Enforcement against Regulated Products: Generic drug and biosimilar competitors must copy a reference product. This requirement makes design-around more challenging than in non-regulated fields. A well-drafted picture claim covering a reference product can effectively exclude competition.
- Patentability: Picture claims in a patent application are more likely to be deemed patentable. To reject a claim as unpatentable for lack of novelty or obviousness, a patent examiner must generally find each-and-every element of the claim in the prior art. Picture claims have more elements and therefore are more difficult to reject. Moreover, a patent examiner may reject a broad claim for lack of adequate written description or enablement. Picture claims directed to a product experimentally tested in a patent application rarely face such rejections.
- Validity: Relatedly, picture claims in issued patents are less likely to be deemed invalid if challenged, and they are more expensive for a challenger to attempt to invalidate. Broad claims may be vulnerable to invalidity challenges for lack of adequate written description and/or enablement, as seen in the last decade of case law from the U.S. Court of Appeals for the Federal Circuit (CAFC).
- Speed: Picture claims tend to grant quickly. With a request for prioritized examination, one can often obtain an issued patent within about 18 months. When seeking broader claims, each round of rejection and response can delay grant by 4 to 6 months.
- File History: Since both an examiner’s reasoning and an applicant’s response create file history that can be used against a patent owner to argue invalidity or non-infringement, a short, clean file history makes a strong patent.
- Expense: Each round of rejection and response might cost thousands of dollars. In fact, one difficult office action response might cost more than drafting an entire patent application. If a picture claim is allowed with fewer rejections, the patent will cost less.
- Continuation Practice: The patent system provides a routine mechanism to seek picture claim coverage and then expand to broader claims—the continuation application. During the pendency of a patent application directed to picture claims, a continuation application directed to broader claims may be filed, and this can be repeated serially. Early pursuit of a picture claim does not prevent filing a continuation with broad claims later.
In short, early pursuit of picture claims can be an effective strategy for life science and pharmaceutical companies. However, this blog post is not intended as advocating a one-size-fits-all approach to patent strategy. Misuse of continuation practice has attracted political criticism in recent years; and the doctrine of prosecution laches may limit continuation applications when an applicant has engaged in an “unreasonable, inexcusable, and prejudicial” delay (Hyatt v. Hirshfeld, 998 F.3d 1347, 1369 (Fed. Cir. 2021)). Applicants should carefully weigh the benefits of a picture-claim strategy against these and other considerations.