Legal Definitions - shifting ground

In patent law, "shifting ground" refers to a situation where an applicant attempts to broaden the scope of their patent application during the amendment process.

Specifically, it occurs when an amendment introduces new claims that cover a feature or aspect of the invention that was described in the original patent application but was not initially included in the claims seeking legal protection. While the feature was disclosed (meaning it was described in the application), it was not originally claimed as part of the invention for which a patent was sought. Introducing claims for such a feature later is generally not permitted, as it would unfairly expand the scope of the patent beyond what was initially presented for examination.

• Example 1: A Novel Bicycle Pedal

  Imagine an inventor files a patent application for a new bicycle pedal. The original application describes in detail both a unique material composition for the pedal's body and an innovative quick-release mechanism that allows the pedal to be easily detached from the bicycle crank arm. However, the inventor's initial claims for patent protection only focus on the material composition of the pedal, seeking to protect its durability and lightweight properties.

  Later, during the patent examination process, the inventor realizes the quick-release mechanism is a highly valuable and distinct feature. They then attempt to amend their application to add new claims specifically covering this quick-release mechanism. This would likely be considered "shifting ground" because, while the quick-release mechanism was fully disclosed in the original application's description, it was not initially claimed as part of the invention seeking protection. Adding it now would broaden the scope of the patent beyond the original claims.

• Example 2: A Smart Home Security System

  Consider a company that applies for a patent on a new smart home security system. The initial application describes a comprehensive system including motion sensors, door/window contacts, and a central control unit. It also mentions, within the detailed description, an optional feature: a unique algorithm for predicting potential intruder patterns based on historical data. However, the original claims for the patent only focus on the physical components and their basic connectivity, not the predictive algorithm.

  After receiving an initial review from the patent office, the company decides to amend its application. They attempt to introduce new claims that specifically protect the predictive intruder pattern algorithm. This amendment would be an instance of "shifting ground." Even though the algorithm was described in the original application, it was not part of the initial set of claims defining the invention. Adding claims for it now would broaden the scope of protection beyond what was originally sought.

• Example 3: A Specialized Plant Fertilizer

  An agricultural chemist files a patent application for a new fertilizer composition designed for specific crops. The original application thoroughly describes a blend of three primary nutrients (nitrogen, phosphorus, potassium) in precise ratios. It also includes a paragraph mentioning that the fertilizer could optionally include a trace amount of selenium to boost growth in selenium-deficient soils, but the initial claims only specify the three primary nutrients and their ratios.

  During the patent prosecution, the chemist discovers that the selenium additive significantly enhances the fertilizer's market value. They then try to amend the application to include new claims that make the selenium additive an essential component of the patented fertilizer. This would be an example of "shifting ground" because, while the selenium additive was disclosed in the original description, it was not initially claimed as a core part of the invention. Adding it now broadens the scope of the patent to cover a feature not originally claimed.