Aligning Patent Claims with Product Reality - Stratford Group Ltd.

Patent applications and product development often run on parallel tracks — but they don’t always reconnect. The result? Patents that fail to protect what actually reaches the market. In this blog, we explore how to avoid misalignment between claim scope and product reality — and why treating claim alignment as a strategic discipline is critical to IP value.

Does Your Product Infringe Your Own Patent Claims?

It may seem like an odd question - but are you confident your patent claims actually cover the product or process you’re bringing to market?

Many organizations assume the answer is yes But somewhere along the line — in the back-and-forth with examiners or amid design iterations — it’s possible your claims and your product drifted apart. Taking a closer look early can save time, money, and frustration down the road.

Why Can Patent Claims Drift Away from Product Reality?

Your patent agent diligently drafts your patent application to describe and claim multiple embodiments of your invention. They liaise with your inventors, battle with patent examiners in numerous jurisdictions to secure the broadest possible protection, and ultimately obtain a granted patent. Finally the application has become a granted patent in several jurisdictions! On paper, that sounds airtight, but things rarely stay static.

Patent applications are, by necessity, typically filed early in the product development cycle, often before the commercial version even exists. By the time a patent is granted, years may have passed and the product product may have evolved. Manufacturing realities, cost constraints, or scale-up challenges (this applies particularly to chemical companies since a laboratory process to produce grams of a chemical rarely scales up to produce kilograms) often mean the market-ready version looks quite different from the original concept.

Meanwhile, the scope of your claims often narrows during prosecution. Examiners may cite prior art or raise objections, forcing your agent to limit the breadth of protection initially sought.

These two forces — early drafting and narrowing during prosecution — are why patent claims can drift away from product reality. The result? A patent that may technically be valid but no longer meaningfully protects the commercial product.

Is Your Patent Agent the Last to Know About Product Changes?

In an ideal situation, your patent agent is kept in the loop as product designs and/or processes evolve. The timing of those conversations matters, because the options available to protect your updated embodiment depend on where your application is in its lifecycle (this underscores the importance of continuation practice in the US):

• If the application is still pending — claims can often be amended to capture the new version of the product before the patent is granted.
• If the application is allowed but not yet granted — the window to file a continuation may still be open. Filing one ensures you can pursue claims that cover the changed embodiment.
• If a continuation is already pending, or another can be filed — this provides a strategic safety net, allowing your agent to adjust claim scope to match product evolution.

Unfortunately, in many organizations, R&D, product, and legal functions don’t communicate consistently. The outcome can be a patent portfolio that looks impressive on paper but fail to protect the product that actually drives your business.

How Can You Keep Patent Protection Aligned with Products?

So, here’s some good advice to patent owners. The most practical solution is surprisingly straightforward: treat alignment as an ongoing discipline rather than a one-time event. Consider these steps:

• Periodically review your patents. Ensure that your products and processes do indeed ‘infringe’ your patent claims.
• Audit during development milestones. When significant product changes occur, evaluate whether pending applications or claims should be updated.
• Use U.S. continuation practice strategically. Continuations are not just for backup plans — they can expand scope, capture improvements, and defend against design-arounds.
• Ensure consistent communication across teams. Encourage regular touchpoints between product leaders, R&D, and patent advisors.
• Engage your advisors proactively. An experienced patent agent can help course correct with continuation practice, divisional filings, or complementary IP strategies.

Why Does This Matter for Your Business?

Misalignment between claims and products isn’t just a legal technicality — it’s a strategic risk. A competitor could design around your claims, investors may question the defensibility of your IP, or you may lose leverage in licensing and enforcement. On the flip side, ensuring that claims match reality can:

• Strengthen your competitive moat.
• Enhance valuation during fundraising or acquisition.
• Generate licensing opportunities that actually track with market-ready technology.

In short, reviewing whether your own products “infringe” your patent claims isn’t just a clever thought experiment — it’s a necessary business practice.

Want to avoid costly assumptions in your IP strategy?

👉 Download our updated IP Myths & Mistakes resource and learn how to close gaps before they cost you protection, value, or credibility.

This blog post was originally published in 2016 as "Does Your Product Infringe Your Own Patent Claims?". It has been updated with new content.