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Drafting Patent Applications: Writing Method Claims

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Apr 16, 2011 @ 6:01 pm
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It is not uncommon for inventors to want to attempt to draft and file patent applications on their own, and I frequently get asked about sample patent applications. Here is where you as an inventor need to make a critical choice, and making a thoughtfully considered business decision is fine.  Notwithstanding, I cringe at times because some will make a reckless choice, or choose because they think you can do as well as a patent attorney who has dedicated their entire career to mastery of the art.  It is true that the cost of hiring an attorney to draft a patent application can price inventors out of the market, so they are left with no real choice, or so it seems. Either you do nothing and simply don’t pursue seeking exclusive rights in the form of a patent, or you have to do something on your own that is within your budget.

If paying a patent attorney is out of the question on a budgetary level you probably would serve yourself well to sit down and carefully go over your budget (which all inventors should do) and ask yourself whether you have the financial resources and abilities to pull off the project. Inventing, patenting and making money by commercializing does not come cheap, and if you have few resources you might be better off building your savings so you can appropriately pursue your inventions in the future. If you are truly an inventor you are creative and, trust me, there will be many inventions in your future.

Inventors who are going to attempt to draft their own patent applications need to go into the process with their eyes wide open, realizing that the resulting patent application will be better if a patent attorney is involved in the drafting, and most importantly understand that numerous things that you can and likely will do that will lead to a resulting patent grant that is compromised, at best, or completely worthless in the worse case scenario. Thus, if you are going to move forward on your own you really must seek the available tools out there to facilitate do-it-yourself efforts. I have created the Invent + Patent System to help create a patent application disclosure, primarily for provisional patent application filings.  Since I created the first edition of the Invent + Patent System tens of thousands of inventors have successfully used it to create high quality provisional patent applications.  There are a number of good books you can and should read to familiarize yourself with patent laws. I highly recommend Professor Janice Mueller’s book simply titled Patent Law, which is easily the most approachable and understandable, yet comprehensive, book about patent law available.  While I do not agree with everything in the book, particularly what it recommends you do in the Background of the Invention, Patent It Yourself should be a part of the library of any do-it-yourself inventor.

From time to time I also try and give tips on drafting patent applications.  I am not trying to encourage people to do it themselves, but experience teaches that there will always be some inventors who will do it themselves out of necessity or otherwise.  For those who are not going to do it themselves the more you know and understand about drafting a patent application, including patent claims, the better armed you will be to provide your patent attorney with the information they need to create the best, most comprehensive patent application possible.  After all, as the inventor you know the invention best so if you have even a basic understanding of the drafting process you will be in a far better position to meaningfully participate even if only by providing the critical information necessary.  The more you provide the better the end product, and with a patent that will act as a barrier to competitors the best end product is the most valuable business (or licensing) asset.

Previously, in Drafting Patent Applications: Writing Patent Claims I focused on claims to an apparatus or device, so today I thought I would focus on method claims. For more articles on drafting patent applications see “Related Posts” at the end of this article.



Method or process claims are relatively easy to write once you know what the core invention is and what is necessary to be included in the claim in order to overcome the prior art.  Like all claims, method or process claims must completely define the invention so that it works for the purpose you have identified AND it must be unique when compared with the prior art.  By unique I mean it must be new (i.e., not identical to the prior art, a 35 USC 102 issue) and it must be non-obvious (i.e., not a trivial or common sense variation of the prior art, a 35 USC 103 issue).

Method or process claims will include active steps to achieve a certain result.  In method claims the transition is typically either “comprising” or “comprising the steps of.”  While legally there may be some distinction between these two different transitions, both are acceptable.

It is also important to understand that each of the steps in a method or process claims use gerunds, which are a form of a verb that ends in “ing” and operates to direct the action that is to take place.  Said another way, you must use “ing” words in method claims.  You cannot define a method or process in the past tense.

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

1. A {insert title} comprising: {list the steps one by one}.

For example:

1. A method for making a cake comprising: placing flour into a bowl; pouring milk into the bowl; cracking an egg into the bowl; mixing the contents of the bowl; pouring the contents into a pan; placing the pan in an oven; cooking for one hour; removing from the oven; removing the cake from the pan; allowing the cake to cool; placing icing on the cake.

First, this claim is not 100% technically correct.  It does have some antecedent basis issues, but that is an article (or more) to explain what that means in any meaningful way for the uninitiated.  Nevertheless, this simple, perhaps silly example, should give you a basic idea about how to write method claims. Notice how the wording is active, with “ing” endings. That is the type of language you should use in a method claim.

Then is subsequent claims you could do something like:

2. The method of claim 1 further comprising preheating the oven.
3. The method of claim 1 wherein the mixing step is accomplished by using an electric mixer.
4. The method of claim 2 wherein the mixing step is accomplished by using an electric mixer.

Notice here that we are adding to the base claim, claim 1. In claim 2 we add another step. To add another step we use the transition “further comprising” and then insert the new step. We can also further define a step already introduced, as in claim 3 and 4, which uses the transition “wherein”. Notice also that claims 3 and 4 are identical, except for the reference back. Claim 3 refers back to claim 1, and claim 4 refers back to claim 2, which in turn refers back to claim 1. By using this type of claim structure you can chain things together, while at the same time have a broad general claim (ie., claim 1). So, in other words, claim 2 and claim 3 each add something. Claim 4 adds both of the elements of claim 2 and claim 3, making claim 4 more specific. You should try and describe your method in this way in the claims.

I really like using the method of making a cake as an example because everyone can understand it on some level.  It also allows for an excellent discussion of steps that are optional and not required.  Of course, for this discussion and illustration we are not concerning ourselves with novelty (35 USC 102) or nonobviousness (35 USC 103), but rather trying to work on the framework of the claim and how one goes about drafting.  I am in no way suggesting this method of making a cake is patentable.




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But let’s pretend that this method of baking a cake is patentable and there has never been a method or process like it, so there is no relevant prior art for us to consider (a real fantasy I know).  So what you want to do is focus on the first rule of claim drafting I explained above, make sure the claim delivers on what you say the invention is.  Here we are saying, and I have very carefully referred to it as, “a method of making a cake.”

In your broadest claim you want only what is essential.  So ask yourself this — is greasing the pan an essential step?  Absolutely not!  Of course, if you want to have any realistic opportunity to get the cake out of the pan in one piece you will almost certainly want to grease the pan, but if your method is about making the cake you have successfully done that with the cake securely fastened in the pan that was not greased prior to use.

The greasing of the pan is a perfect example of a desirable step, but not a step that is absolutely required.  You can (and absolutely should) define your invention in any way that works.  One of the biggest mistakes, if not the biggest mistake, inventors make is that they focus only on the versions of the invention that they think work best.  That means they leave open for others the ability to engage making, using and selling slightly less ideal versions of the invention with impunity.  That is a rookie mistake that won’t just embarrass you, but which will likely make any patent you receive tend toward the worthless end of the highly valuable to completely worthless continuum.

What I recommend law students, patent bar exam students and inventors do is practice writing method claims to a method of making a cake.  Create a list of every step you can imagine, from preheating the oven, to what temperature you preheat the oven, to greasing the pan, to how you can tell the cake is done (perhaps with the toothpick test) to you name it.  Then go through your list and identify only those steps that are absolutely required to deliver on the promise of a cake at the end.  Those are the steps you have in your broadest independent claim, with all other steps being fodder for dependent claims.

Now, if you want to start to worry about prior art, what you do is figure out what is in the prior art and then take enough of those optional, dependent claim steps on your list and add them to the independent claim you have.  Add step by step until you have defined a method or process that has at least one unique step.  That should become your broadest independent claim.  Of course, one paragraph on how to deal with prior art isn’t enough, but again should give you some idea.  Look for that in another article in the future.

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patents


About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 

6 comments
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  1. Gene,

    There are two cardinal Rules of Thumb for me on drafting method claims: (1) try to keep them to two steps if at all possible; and (2) try to make sure those steps will be performed by one actor only (not multiple actors). The first Rule follows the claim axiom that “less is more,” i.e., the fewer steps, the broader the method coverage. The second Rule addresses the joint infringement conundrum of BMC Resources and its progeny.

  2. With regard to the first cardinal Rule of Thumb, are we saying “two steps” or “no more than two steps”? If it is not a means-plus-function clause, the single-step claim will avoid being rejected as a single means claim. So, for example, the claim might be “A method for making a widget comprising: disposing two elements so as to be mutually separated by no more than an intervening vacuum gap; and establishing electromagnetic communication between the two elements. This could be rephrased as, “A method for making a widget comprising: establishing electromagnetic communication between two elements disposed so as to be mutually separated by no more than an intervening vacuum gap. Preference for the second version of the claim seems to follow the second rule. Seemingly, one step is a way to go in many if not most cases.

  3. Another point to newbies: avoid reciting the steps as “providing a structural element.”

    Too many new attorneys write their apparatus claims as ‘A widget comprising A and B and C.” and then go on to write method claims as “A method of making a widget comprising providing an A, providing a B and providing a C.” That method claim is just about worthless. If you get the apparatus claim allowed, you already have statutory protection against “making” the claimed apparatus invention, so since you really have not defined the invention differently when reciting a series of “providing” steps, you get your client no more scope of protection.

    Rather, as Gene advises, be mindful of the action going on and claim that action, not the parts being acted on.

  4. I would like to clarify your comment regarding “new attorneys” reciting “providing A…. ” in a method provides no benefit. I agree with you if the method is only limited to the providing steps. However, an additional step of using that structure in a specific manner provides many benefits. First, the method greatly narrows the prior from any use of that structure to a “new” use of the structure. Second, in general, the marking requirements do not apply to method claims.

  5. I also agree that prefixing elements with “providing a” will not do the trick, and I agree with the clarifying points. I would just add the following. Method for making (or “method of making”) claims advantageously can often be stated more broadly than their counterpart apparatus claims. As one type of example of this, imagine a prior art method that fails to provide enough electromagnetic communication to “make” anything. The apparatus claim “A widget comprising two elements mutually separated by no more than an intervening vacuum gap and subjected to establishment of electromagnetic communication therebetween in forming said widget” at least has the potential for being construed more narrowly than its respective method of making claim. For instance, let us imagine that a technology comes along which uses the communication as an initialization but the making is really carried out by some other, subsequent step. The method claim may be infringed because of the open-endedness of the transition word “comprising” without perhaps the apparatus claim being infringed. Yet, we want to have the apparatus claim too — for instance, to make a seller of an apparatus a direct infringer. It may also be the case that we want the slightly narrower wording of the apparatus claim for a little extra chance that an independent claim will prevail over the prior art. What you feel has sufficient structure and distinguishing language to survive (examination, litigation, etc.), as you also try to maximize scope of coverage, in a method of making claim may play out differently in the wording of the counterpart apparatus claim. Or, different claim scope may be the objective in hedging the risk. So, if you choose to draft the apparatus claim with a scope that corresponds to that of the method of making claim, you may want to reconsider the need for the method of making claim, in accordance with what is pointed out further above. Or, as also noted above, you may define the invention in one statutory class differently than you define it in the other.

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