Posts Tagged: "claim drafting for beginners"

Today we pick up our series with discussion of some advanced patent claim drafting strategies for inventors and others new to the art of claim drafting. Sometimes those who draft patent claims get a little too cute for their own good. What is it that you are trying to accomplish? Are you trying to get the broadest claim that you can possibly obtain? If that is your goal you will probably be rather disappointed with your efforts even if you are successful. Today it is very easy to challenge issued patent claims, indeed easier than ever before. That means your goal has to be to obtain the broadest valid claim possible, not just the broadest claim that you can sneak by a patent examiner.

First, every patent claim needs a preamble, which is the introductory phrase in a claim… Second, every patent claim needs a transition. The most common transitions are: “comprising” and “consisting of” … Third, the first time you introduce a limitation you MUST introduce it with either “a” or “an”, as is grammatically appropriate… Below in an example of an independent claim that applies the above stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titled Multiple component headgear system.

The art of patent claim drafting is an undeniably difficult art to master. It is, however, essential for those in the patent space to both appreciate, understand and master. Before we put the cart before the horse let’s take a step back. Given the importance of patent claims it is not unreasonable to want to start there, electing to jump right into the deep end. That would be a mistake. That is not how patent attorneys do it, and if you want to succeed that shouldn’t be your approach either. Before you ever think about writing patent claims there are several very basic questions must be answered first.

The examination you receive from the patent examiner is never going to be any better than the patent claims you provide. If you provide preposterously broad patent claims and then add very few and perhaps common features to that preposterously broad claim in your dependent claims you are making it easy for the patent examiner to reject the preposterously broad claim and then also reject your barely narrowing dependent claims. Worse, you are left with absolutely no useful information about what the patent examiner thinks might be patentable. You are not in a meaningful position to know what prior art exists that the examiner will later throw at you, and you hardly have any useful basis to talk to the patent examiner.

In order to obtain exclusive rights on an invention the law requires that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.

When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. 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.

But how do you go about patenting an improvement? The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art. You should absolutely focus on structure, not on the method of use. Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case. In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.