Drafting Patent Applications: Writing Patent Claims

I am frequently asked if it is a good idea for inventors to file their own patent applications, and every time I am asked that question I suspect the person doing the asking already knows the answer, but is hoping that they might find someone who will tell them what they want to hear.  You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife.  The guy asks: “shouldn’t you be doing this?”  Well, writing your own patent application is a little like taking out your own appendix.  You won’t die if you screw it up, which is almost inevitable, but you will not likely be pleased with the outcome.

Having said this, it is not at all uncommon for inventors to want to attempt to draft and file patent applications on their own.  The cost of hiring an attorney to draft a patent application can price some inventors out of the market, so they are left with the choice of doing nothing to pursue their invention and dreams or trying to do something on their own.  Inventors who are going to attempt to draft their own patent applications need to go into the process with their eyes wide open, realize that the resulting patent application will be better if a patent attorney is involved in the drafting, and most importantly understand that there are a good number of things that you can and likely will do that will lead to a resulting right that is compromised or completely worthless.

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So those who are unable to pay a patent attorney to draft a patent application must be willing to educate themselves to the greatest extent possible in order to have any chance at a modestly successful outcome.  Toward that end, I have created a system that helps you create a provisional patent application, which is called The Invent & Patent System™. Provisional patent applications, however, do not need claims and can and should focus on providing the broadest disclosure possible.  Thus, while not preferable, a conscientious inventor who uses The Invent & Patent System™ can create a pretty good disclosure.  What would be best, however, is to use this as a draft and then get professional assistance.

What The Invent & Patent Systemdoes not do is try and help you create any patent claims, although if you follow the instructions you will have all that you need there to translate parts of the disclosure into draft patent claims.

Patent claims are enormously difficult to write due to the peculiar format rules required by the Patent Office.  So most inventors should focus on trying to make sure you have an adequate disclosure and all the ingredients necessary, and do the best they can with these peculiar rules.

First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. It does not matter that the claims won’t be in perfect format, with appropriate being defined as the format the Patent Office will ultimately require. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific.  By starting to write these two claims you will “bookend” your invention. By this I mean you have disclosed the very broad and generic version of your invention, as well as the highly specified version.

When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. It is necessary to describe the invention so that it is complete, so that it works, but also so that it is different than what is known in the prior art. What makes your invention different? This must be made clear in the claims.

When drafting a claim you want to start with something like this:

1. A {insert title} comprising: {list the parts one by one} {then explain how each are connected}.

For example:

1. A sandwich comprising: 2 pieces of bread, peanut butter and jelly, wherein the peanut butter is spread on 1 piece of bread and the jelly is spread on the other piece of bread and then the two pieces of bread are put together so that the peanut butter and jelly are touching.

This is maybe a silly example, but you should get the idea. Then in another claim what you want to do is describe the invention with every possible option you can think of. Let’s say that my preferred peanut butter and jelly sandwich has bacon, lettuce, tomato and fluff. I would have a second claim that is something like:

2. The sandwich of claim 1 further comprising: bacon, lettuce, tomato and fluff, wherein these ingredients are disposed between the peanut butter and jelly.

Notice how I simply add the extra parts and then say where they go. Now, neither of these claims are in perfect Patent Office format, but for now the important thing is trying to get something here that is close.  You want to figure out what your basic invention is and then little by little add more specificity.

Here is another example for a claim to an ordinary shovel:

1. A shovel comprising:
an elongated handle; and
a shovel head;
wherein said shovel head is attached to said elongated handle.

Now lets introduce the concept of “antecedent basis.”  Notice that the elements are introduced with either “a” or “an”, as is grammatically appropriate. Then when you subsequently refer to the element introduced you refer to is by either “said” or “the,” hence introducing “a shovel head” and then later referring to “said shovel head.”  Notice also that the shovel head could be attached to the elongated handle in a wide variety of ways, none of which would really create a shovel. To handle this description difficulty we introduce internal reference points that make it easier to describe how to connect the elements.  So try this claim:

1. A shovel comprising:
an elongated handle having a first end and a second end; and
a shovel head;
wherein said shovel head is attached to said first end of said elongated handle.

Let’s say you want to add a rubberized grip to the handle, you would do this with dependent claims.  In fact, in dependent claims you build on a claim earlier to narrow the description to make it more specific.  Some dependent claims to a shovel might look like:

2. The invention of claim 1 further comprising a grip disposed around said second end of said elongated handle.
3. The invention of claim 2 wherein the grip is made of rubber.

If your invention were really this shovel you would probably want to further describe the shovel head and explain that it has a neck and a concave portion and the neck is what is really connected to the handle.

Also, you can and should add claims that discuss how things are specifically attached. Examples would be:

4. The invention of claim 3 wherein the shovel head is attached to said elongated handle by insertion of a screw through said neck of the shovel head and into said elongated handle.

Notice here we wanted to refer to the neck in order to explain where and how the screw connects the shovel head with the handle.  Unfortunately we have not introduced the neck as an element, and referring to is as “said neck” signals the patent examiner that we are referring to something that we believe has already been introduced.  So if we wanted to add this claim we might find it easiest to modify claim 1 as follows:

1. A shovel comprising:
an elongated handle having a first end and a second end; and
a shovel head, which is made up of a neck leading up into a blade;
wherein said shovel head is attached to said first end of said elongated handle.

Perhaps the best way to go about writing claims is to just start writing, then as you need to add elements to the invention to define ever more specific versions check to see if the pieces and parts being added have been introduced properly and result in an description of the version that is complete and describes what you have pictured in your mind’s eye.

There is much to be learned with respect to drafting claims, which is why inventors are at a substantial disadvantage if they are representing themselves.  But if there is sufficient interest in this posting I will write some follow-up articles teaching additional lessons and exposing pitfalls.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

8 comments so far.

  • [Avatar for Gene Quinn]
    Gene Quinn
    February 26, 2013 05:58 pm


    I agree with you. The inventor needs to be a critical member of the team in order to get a patent application prepared that is as good as it can be.

    Recently I wrote:

    “With this in mind you as an inventor need to envision yourself as a key player of the legal team working to obtain a patent on your behalf. Don’t fool yourself into thinking you know the law better or could draft a patent application or patent claims that are as good as a patent attorney could. But embrace your vital role, which is as the one who is the master of the innovation that needs to be described.”

    For more see: https://ipwatchdog.com/2012/12/01/a-beginners-guide-to-patents-and-the-patent-process/id=30786/


  • [Avatar for Pete P]
    Pete P
    February 25, 2013 11:30 pm

    I am a very experienced inventor – not a patent attorney. I happen to be an electrical engineer. I am somewhat opposite in view to those who say in big bold letters to make sure they hire a patent attorney etc. etc. Not that I disagree with the basic statement that patents should be filed by a patent attorney (mine are always) – I do, however, disagree that a patent attorney should be responsible to draft a patent or the claims. It is a joint effort but mostly the responsibility of the inventor, in my humble opinion.

    Just as some would argue that a patent attorney must draft your application because you could not possibly know as much patent law (probably true), it would be wrong for a patent attorney to draft my application because he could not possibliy know as much about electrical engineering or my invention as I do (shovels with elongated handles notwithstanding). I have had terrible results from very, very expensive and high-class law firms this way. My opinion from life experience is that an inventor should try to know as much about the patent system as possible and should write the first draft of the application in its entirety. Then, assuming that the application is in reasonable form, a patent attorney can be engaged to help put the application in its final form and to finalize claim language. Done this way, you can usually lower the cost of the application significantly (with a reasonable lawyer) because the inventor has done most of the hard work and the attorney can be relied on for his knowledge of law (instead of the laborious, time-consuming aspects). While I’m happy to pay for an attorney’s expertise, I am not generally happy to pay the exhorbitant prices for shear labor. And when you’re done, you will have a much higher quality draft and more importantly, you will know the quality of the draft. Never cede the responsibility of patent draft quality to the attorney – you might be very disappointed years later when litigation takes place. Attorney’s have been known to take advantage of people (not implying anything about anyone on this site) and they draft applications with varying degrees of quality.

    All this being said, I agree with and appreciate this helpful article and I’m sure all of the comments are well intentioned – just remember that even when you hire an attorney that in the end, you are still responsible for and have the largest, vested interest in the quality of the application.

    One item left out here is that a provisional patent application, while useful, must be handled very carefully. No one should come away thinking that since they can’t afford the time and money to get an application right that they can simply file a provisional patent application. This is because a normal kind of patent application must be filed within a year of the provisional (otherwise the provisional expires and the patent filer loses all rights). In order for the normal patent filing to claim priority to the provisional, it should contain no new matter. This is just a fancy way of saying that the normal patent filing better not contain anything substantially different from the provisional otherwise you are not entitled to the protection from the date of the filing of the provisional (for at least the claims that depend on this new matter) so a provisional can provide a false sense of security. I would view a provisional patent filing with the same care as any other patent application and would want an attorney to finalize it.

  • [Avatar for ??????? ???????]
    ??????? ???????
    October 6, 2012 07:23 pm

    Nice overview of the patent claim drafting process. However, I hope that most independent innovators reading this post will use it only for their own information, or to assist an attorney in drafting a patent application.

  • [Avatar for Paul]
    March 1, 2011 05:14 pm

    Found this article very useful. Am new to patent law and am collecting and reading everything I can about drafting patent applications and the patent process in general. Your site has been immensely valuable to me. I am particularly interested in learning how to draft the claims….the other sections are relatively straightforward, but claim drafting has always intimidated me, and I am not comfortable with that. Please write more on this subject. Thank you for your efforts,..

    Paul B. (Philadelphia)

  • [Avatar for Dustin]
    February 9, 2011 02:47 pm

    This is a FANTASTIC post. Thanks a lot. Keep it up! 🙂

  • [Avatar for Roy Sankaranarayana]
    Roy Sankaranarayana
    February 7, 2011 11:30 am

    Best described page for a biginner.
    For a person with no knowledge on the subject


  • [Avatar for patent litigation]
    patent litigation
    August 11, 2010 05:20 pm

    Nice overview of the patent claim drafting process. However, I hope that most independent innovators reading this post will use it only for their own information, or to assist an attorney in drafting a patent application. As you point out, patent law is extremely complicated, and for a layperson to attempt to go it alone is rather like performing surgery on oneself. Even if one is forced, because of financial constraints, to draft one’s own application, it is still important — and probably affordable — to have a qualified patent law professional review it before filing.

  • [Avatar for Humbled Pro Se]
    Humbled Pro Se
    August 8, 2010 05:10 pm

    Take it from a long-time (10+ yrs) pro se:

    DO NOT file your own patent application; including NOT writing your own claims. Better to hire someone like Gene to do it WITH you. Trust me on this: To do all that is involved correctly, including prosecuting it yourself CORRECTLY and TO YOUR GREATEST ADVANTAGE through the PTO will take more hours, days, weeks, months, and yes possibly years of work than you even know.

    Far better to use your regular job (take a 2nd one if needed) and/or obtain $ from family & friends (ONLY with a proper legal written agreement) to pay for legal services.

    If you insist on going it alone, do all of the following BEFORE you file anything with the patent office; including a provisional application:

    1. Read the most recent edition of Patent It Yourself by Pressman and Invention Analysis and Claiming by Slusky.

    2. Read everything on this (ipwatchdog) site and the most recent six+ months of the postings (including comments; though ignoring those comments of the person who goes by, “6” and/or “6000” and “Malcolm Mooney”) on PatentlyO.

    3. Read the complete PTO files (yes; every single document) of at least 25 issues patents and 25 pending applications in the same/related field(s) as your invention.

    4. Read at least 25 BPAI decisions concerning inventions in the same/related field(s) as your invention.

    5. Hire someone like Gene to REVIEW your filing BEFORE you file anything with the PTO; including a provisional. DO NOT FILE WITHOUT A PROPER PATENT ATTORNEY REVIEW.

    Had I to do it over again (and even as good as I’ve become at doing this–and I still pay for legal advice when I feel I need it); knowing what I know now; THIS is the ONLY course I would take.

    I started out to file my first application in large part because I THOUGHT I couldn’t afford legal representation.

    How very wrong I was. I know now that it would have cost me far, far less in money had I spend these years of study and investigation working instead at the profession I was ALREADY very good at (or taking a 2nd job if need be).

    If you’ve never filed for a patent yourself, please trust me in this:


    And that’s the most dangerous lack of knowledge there is.

    Get this wrong, and the great invention you thought you had won’t be worth the paper it’s printed on.

    Is that what you want to end up with . . . a worthless stack of papers?