Covering the IP Bases with
Different Types of Patent Claims

by Jonathan D. Hurt, PhD and Steve McDaniel, JD, PhD Technology Litigators

Once in a while, you may decide to try to turn your trade secret coating formulation into a pat-
ent despite the various issues (e.g., slug-
gish time to issuance, appeal or filing a
request for continued examination) pre-
viously discussed in this series. Most in-
ventors of a new coating formulation or
coating component will seek issuance of
what is commonly considered a strong
type of claim to assert: the composi-
tion of matter claim. However, there are
other statutory types of claims and vari-
ants that you should give strong consid-
eration toward filing, as the nuances in
claims language and prosecution among
the various claim classes may get you to
a more rapid issuance of these less glam-
orous but still commercially relevant
claims to protect your product. Because
patent prosecution is like opening a box
of chocolates, you never know what type
of claim structure will be allowed by the
examiner – so claim your invention as
many different varieties of claim types as
you can!