Patent Claim Drafting 101: The Basics

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: “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 up 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 Don’t 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.

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 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.

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.

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.

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 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.

For more information on patent application drafting please see: