Maiorana, P.C.

What is an Alternate Embodiment?

When preparing a new patent application, we often ask inventors to provide alternate embodiments. There are several levels of alternate embodiments.

The first level is just an overall different way to do the same thing. We are thinking on a component level, or more of a big picture. Like swapping velcro for tape or glue. On another level, we are looking for things that are a similar way to implement the very same thing. For example, how many different types of glue would be appropriate in a certain application? Are there certain types of glue that are not appropriate? These are basic examples. In an electronics case, we are always interested whether a hardware or software implementation would be preferred, and whether the other would be possible. If there are transistors, which types of transistors work the best, which are the next best. If there are transistor types that might be possible, but not exactly practical on a commercial implementation at this time (due to expense, reliability, etc.), including them in the patent application now would be a good idea.

For important elements, it is a good idea to have three alternate examples. If we have three examples, and the claim structure supports a broad reading, we might be able to enforce potential infringement against a fourth example under the “doctrine of equivalence”. The idea being that we provided three examples, so the fourth example is only an equivalent. Alternate embodiments can include things like operating in a different architecture, ecosystem, platform or standard. This can be a powerful tool in patent litigation.

In drafting a broad claim element, we pay close attention to the types of things that could be considered covered by the element. This could also be very important when modifying the claims during a potential amendment. “File wrapper estoppel” [1] prevents a patent holder from enforcing a claim against something that was previously “given up” during the prosecution. A classic example occured in the semiconductor industry when one company had an element of a claim directed to metal. They went on in prosecution to change the element to copper. They later tried to enforce against aluminum. Once they narrowed the claim to copper, it is not proper to enforce against aluminum. A more preferred approach would be to have left the element as metal, then amended some other portion of the claim.

We ask for alternate embodiments, even if something seems like there are not alternate embodiments. If an inventor explains the thought process, we can sometimes envision additional text that we can write in the specification.

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