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Patent Claim Drafting 101: The Basics

By Gene Quinn on May 25, 2013

Frequently inventors will ask me if it is a good idea for them to prepare and file
their own patent applications. Whenever I am asked such a question I suspect
the person doing the asking already knows the answer, but is hoping against
hope that they might find someone who will tell them what they really 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: shouldnt you
be doing this? Well, writing your own patent application is a little like taking
out your own appendix. You wont die if you screw a patent application, which is virtually inevitable, but you will not likely be
pleased with the outcome. If you do achieve rights they will be far more narrow than necessary and you will have created an
unnavigable prosecution history that will almost certainly make the claims you do have rather useless.

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.

So those who are unable to pay a patent attorney to draft and file 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 System does 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. Indeed, the
United States Supreme Court has on a number of occasions discussed in detail just how difficult it is to draft and ultimately
obtain a patent. See Dont be Fooled, Drafting Patents is Complicated. 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.

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Starting to Draft Claims

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 wont 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. Lets 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.

Antecedent Basis
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.

Lets 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.

Conclusion

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 minds 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.

For more information on patent application drafting please see:

Understanding the Patent Law Utility Requirement


Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
Describing an Invention in a Patent Application
Patent Drawings and Invention Illustrations, What do you Need?
The Key to Drafting an Excellent Patent Alternatives
The Cost of Obtaining a Patent in the US
Patent Drafting: Identifying the Patentable Feature
Patent Drafting: Thinking outside the box leads to the best patent
The Importance of Keeping an Expansive View of the Invention
Patent Drafting: Ambiguity and Assumptions are the Enemy
Patent Drafting: Appropriately Disclosing Your Invention
How to Describe an Invention in a Patent Application
Patent Drawings 101: The Way to Better Patent Applications
Understanding Patent Claims
Patent Drafting: Top 5 Critical Things to Remember
Patent Drafting: Not as Easy as You Think
Completely Describe Your Invention in a Patent Application
Software Patent Basics: What Level of Description is Required?
Drafting Patent Applications: Writing Method Claims
Turn Your Idea into an Invention with a Good Description
Patent Drafting: What is the Patentable Feature?
Patent Claim Drafting 101: The Basics
A Guide to Patenting Software: Getting Started
Does the term Invention in the Specification Limit the Claims?
Working with Patent Drawings to Create a Complete Disclosure
Patent Drafting: Describing What is Unique Without Puffing
Patent Claim Drafting: Improvements and Jepson Claims
Patent Drafting: Drilling Down on Variations in a Patent Application
An Introduction to Patent Claims
Patent Drafting Lessons: Learning from the Grappling Dummy
Patenting Business Methods and Software in the U.S.
Defining the Full Glory of Your Invention in a Patent Application
Patent Drafting: Language Difficulties, Open Mouth Insert Foot
The Key to Drafting an Excellent Patent Alternatives
Tricks & Tips for Describing An Invention in a Patent Application
Patent Drafting: Defining Computer Implemented Processes

Tags: claim drafting, claims, famous inventors, Gene Quinn, independent inventor, independent inventors, inventor, patent,
patent claim drafting, patent claims, Patent Drafting, Patent Drafting Basics, patents
Posted In: Educational Information for Inventors, Inventors Information, IP News, IPWatchdog.com Articles, Patent Basics,
Patent Drafting, Patent Drafting Basics
There are currently 14 Comments comments.

1.
Paul Cole May 28, 2013 4:33 am

For a patent to be of value, it must be a fit subject for scrutiny by a judge and in the US also by a jury, or at the very least fit for third party
due diligence scrutiny. Anyone who has been in litigation and done that knows just how high a standard that is.

If the invention is serious, raise the money and hire an attorney. Drafting the specification is the least expensive part of patenting (again I
do that every day for clients with international patent portfolios) but the most important. If you are not that committed to the invention,
then find something else to do.

And so far as Europe is concerned, a rough and ready provisional will not do you need a document to the same standards as a utility
patent. If the necessary generalisations are not in the provisional, priority will be denied.

2.
Anon May 28, 2013 7:41 am

Paul,

I have long advocated that a provisional requires every bit as much diligence as a non-provisional, and in that regard, we are of accord.

3.
Jodi May 29, 2013 1:24 pm

I noticed omitted was talk about what elements of a patent applicatoin an engineer is capable of doing. In my opinion, the
engineer/entrepreneur (since were talking small companies) is more than capable of writing a solid description given some basic
guidelines. Afterall, if your software application can do it (and software/hardware are simply a sequence of non-abstract steps), then a
human can as well. This isnt a GPS-guided missile

Writing the Claims should clearly be one of the aspects that the attorney/agent handles but other than filing and interfacing directly
with the PTO what else should be handled by the attorney/agent?

Where is the evidence that an entrepreneur cannot save SOME $costs by writing the core of the application and throwing that over the
wall to the patent attorney or agent. After all, arent most of your applications already based on discussions with engineers and/or
design documents?

Given that most of the recent anti-patent sentiments originate from the software crowd I would like to suggest that helping those folks
to understand what goes into a patent (with a particular focus on software) might help lessen their continuous babble. Teach a man to
fish

Thanks.

4.
MD May 30, 2013 4:16 am

Thanks Jodi. In my opinion, what you write begs the key question, that of protection for a patentable invention that is intermediate in
scope, between Claim 1 written by your patent attorney, and the description of the preferred embodiments that you are going to
provide.

In the real world, the patent will issue with an independent claim narrower in scope than the independent claim of the patent
application as filed. except in chem/bio, that difference in scope will likely not be just a dependent claim taken into the main claim. Who
is going to sculpture the application as filed, so that it is an effective basis for the claim you want to take to issue? That is the highest
value drafting skill, in my opinion.

I ask because, time and time again, we find at the EPO that applications from the USA fail to provide adequate support for the
intermediate generalisation which the Inventor wants to take to issue and to which she iwould have been entitled, if only the patent
attorney had done an adequate job of drafting in the first place. Typically, theres the balloon of Claim 1 and, inside it, the diamond of
the Best Mode. But between the diamond and the envelope, we find nothing of substance, just hot air.

Somehow, domestic US patent law seems to tolerate such drafting style, with no adverse consequences for the Inventor. Outside the
USA though, thats another world.

Readers, tell me again that Im wrong. I love it when you do that.

5.
Anon May 30, 2013 10:18 am

Jodi,

You state Where is the evidence that an entrepreneur cannot save SOME $costs by writing the core of the application and throwing that over
the wall to the patent attorney or agent
While I think this can work in some limited instances, by and large this type of throwing over the wall actually ends up costing more
sometimes appreciably more.

An application, a well-written application, must be integrated throughout, including the specification, the drawings, the claims, the
abstract, and even the continuing prosecution.

With that said, teaching an understanding of patents may be a well intentioned goal. But just look at the recent threads and you will see
an unreasonableness by many to even take the time to understand. Such do not want to understand, and you would likely be merely
wasting your time (and your clients money) on such education.

Make the offer of education, and to those willing to understand, teach them to fish.

6.
Jodi May 30, 2013 3:30 pm

MD, you said:

I ask because, time and time again, we find at the EPO that applications from the USA fail to provide adequate support for the
intermediate generalisation which the Inventor wants to take to issue and to which she iwould have been entitled, if only the
patent attorney had done an adequate job of drafting in the first place.

Which essentially supports my point the fact that time and time again the inventor finds out later that if only the patent attorney
had done an adequate job suggests todays common method of the attorney writing the entire patent may not be all its hyped up to be.

Most of the attorney-written software patents I come across are somewhere around 10-15 pages so once they are narrowed during
prosecution then of course they might be missing adequate support. The attorney really doesnt have the time to flesh out all sorts of
possible extraneous details. Contrast this with the engineer/entrepreneur with everything on the line who finds it worth his/her time to
include all sorts of extra details.

In fact, what added value does an attorney/agent provide in writing the details of the specification over the average engineer-
entrepreneur armed with some basic guidelines? Not the Claims but the Description, Summary, and Figures. The engineer can envision
and generate all sorts of possible embodiments, and depth of details after all who knows the material better?

7.
Jodi May 30, 2013 3:37 pm

Anon, you said:

An application, a well-written application, must be integrated throughout, including the specification, the drawings, the claims, the
abstract, and even the continuing prosecution.

Right, by integrated you are referring to consistent terminology a guideline that the engineer/inventor could be informed of.

8.
MD May 30, 2013 5:43 pm

Good stuff Jodi, but you demonstrate my point. At least in Europe, the acme of the patent attorneys skill and talent is to abstract out of
all the endless detail the generalisation, the concept which is the Invention. Where I come from, the threat is not from the slavish
copier of the detail but from the well-funded competitor that eschews all the detail, disdains it, but nevertheless robs you of the one
thing thats really valuable, the concept.

Can you abstract the concept like a top patent attorney can. iI has taken me 40 years of trying, and Im still not there, seeing perfectly
the concept, out of all the background detail.

Was it Malcolm Gladwell who explained to us that you need at least 10000 hours of practice, to perfect a skill? You know, i think he was
right. What do you think?
9.
Jodi May 30, 2013 6:33 pm

MD,

A decent engineer has the ability to see the 3 or 4 steps that combined together form the core or the concept as you term it.
Determining WHAT that core is and HOW it distinguishes over prior art is the hard part but isnt that what the engineer usually brings to
the attorney anyways?

10.
Anon May 30, 2013 8:33 pm

Jodi,

No common terminology is but a mere result of the integration I speak of.

An application is a legal document. You will fail more than you succeed going down your path.
Sorry Ive been there.

11.
MD May 31, 2013 2:05 am

Jodi, yes. It is your Invention. As the patent attorney, I just get the privilege of writing it up. A Ghost Writer will provide the text of the
autobiography of a sports star, but the life being described is that of the sports star not the Ghost Writer. Before the writer sets to work,
there are hours and hours of discussions about what to write and how to manage the key issues. It has to convince readers, that the
writer is the Sports Star

Will the autobiography be a success? That might depend on the quality of the writing. One things for sure, whenever a patent
application is written, ist legal effectiveness is going to be decided by whether it has been written by a competent patent attorney or not.

Or think of a film about the Sports Star. Should the Star Play the role? Will that make the film a success. Acting is a skill that takes years
to learn. So too the writing of patent applications. On that, anon is right.

Frankly, I think Gene Quinn missed an opportunity to get across to readers how important it is to identify the inventive concept. Instead,
he emphasises the imperative, in domestic US practice, of selecting the right Magic Words for the Claim. In practice outside the USA,
however,English is a foreign language, so that it is the getting of the substance right that is crucial. Outside the USA, there are no magic
words.

12.
Elliott January 8, 2014 11:29 am

Thanks for all of the helpful information and comments. I am an aspiring DIY inventor. Everything that Ive read up to this point has
concentrated heavily on Pro Se pitfalls. Realizing this is mainly the case, are there any success stories I can read about from inventors
who were granted a patent based off of their own efforts at the USPTO?

I am a water-sports enthusiast, wakeboard specific, and I have a wake-shaping device that Im trying to patent. I have 2 weeks until my
utility application needs to be filed and up to now Ive been unsuccessful in raising enough money to hire an IP Attorney. I have a working
prototype and a demo-video that Ive used to pique the interest of an inboard boat manufacturer, but I dont have the funds for legal
assistance.

Its an unfortunate situation I know but Ive been trying regardless. Are there any options that I am not aware of? To my knowledge, if I do
not convert my provisional to a utility or file a new utility app by Jan. 23, 2014 then I could lose all of my patent rights. Well, my
provisional application is as detailed as I could make it (17pgs including drawings), so I figure worst case is I will attempt to draft my own
claims. Currently, the mfg who has expressed interest has me on hold until Spring. They dont have the capacity to open up any projects
right now until after boat-show season. Trying to keep the ball rolling so I dont completely
lose out Any advice will help. Thank you & kind regards! Elliott Dollar
13.
Kostas February 21, 2014 6:18 am

I am an attorney from Greece, deling with business law. In the context of my practice I had to make an application for patent. I would not
say I am specialized in that sector, cause in Greece there are not attorneys dealing exclusively with patents, however I managed to grant
my cliend a patent with a good examination report. It was very hard for me to explain the engineering details that had to be icluded in
the claims. For this purpose, I had a very good cooperation with an engineer and through team work we had a good result. I think that
the combination of the two specialties is necessary. I assume from what i read that remunaration of IP attorneys is much higher in
relation to Greece, but if you believe in your invention it is worth it to hire both attorneys and engineers to increase the possibility of a
better result.
Thnx, Kostas Kalantzis

14.
Elliott February 21, 2014 11:39 am

Kostas,

Thank you for the valuable feedback! Very inspiring to know you figured it out and received a granted patent for your client. I bet they
were thrilled!

I did go ahead draft & file my own non-provisional application. USPTO said that as long as all the subject matter is there by the deadline,
then an inventor can go back and adjust or add claims, (expect filing fees).

Thank you again for your attention to this matter. Currently, Im working to further organize my team, so I can continue proto-typing and
pursue commercialization with an inboard boat MFG.

Elliott