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Drafting Patent Applications: Writing Method Claims

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Widerman & Malek
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Posted: Oct 11, 2013 @ 7:07 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, but fooling yourself into believing that you can and will do as good a job as a patent professional is an enormous mistake.

I cringe at times because some inventors will make a reckless choice, or choose to represent themselves 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, and in that case inventors are left with no real choice, or so it seems. Either you do nothing and simply don’t pursue patent rights, or you have to do something on your own that is within your budget.

If paying a patent attorney is out of the question because of lack of funding you would serve yourself well to sit down and carefully go over your budget (which all inventors should do) and ask 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. Rarely in my experience does an inventor have only one idea/invention. Creative people create, which means it can be particularly important to manage your budget wisely. Carelessly pursuing one invention and recklessly spending funds can make it difficult, if not impossible, to move forward when you find the truly great idea/invention.

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 strategy discussed, 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. I also have a host of articles on drafting patent applications in our Archive, so please consider reading those as well, particularly What is the Patentable Feature,  Patent Illustrations and Invention Drawings and Tricks & Tips for Describing Your Invention in a Patent Application.

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 this article is about the basics and is more concerned with explaining what needs to be disclosed and how to approach claiming rather than discussing and teaching advanced formatting nuances.  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. Claiming over the prior art is an advanced topic.

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, so how could you “grease the pan”? Perhaps you could use butter or margarine, or maybe some kind of spray. Make sure somewhere in your disclosure the various alternatives are mentioned.  Alternatives are critical! 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. For more on this topic see The Key to Drafting an Excellent Patent — Alternatives.

To practice writing a method claim try writing claims for a method of making a cake. Start by creating 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 must 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, and coming up with a novel and non-obvious cake is going to be exceptionally difficult if not entirely impossible, but hopefully this gives you some idea.  Look for that in another article in the future dealing more closely with prior art drafting techniques.

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

 

 


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12 comments
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  1. I am a Pro Se inventor and I totally agree with Gene, and I will warn do-it-your-sellers: I had to learn the hard way and lost rights that cost me a decent living worth of money… Thereafter, I learned that even though I feel more comfortable with managing my cases through the PTO, I do it with a team of patent attorneys I pay to consult every move.

    Find a way to save the money you need, use your taxes! take out a loan… DO NOT patent without professional assistance.

  2. Based in Europe, for me, Gene, the best bit is:

    “Method or process claims are relatively easy to write once you know what the core invention is”

    Why so? Because that is what the EPO thinks too. It expects the case to be drafted Gene as you advocate, with all the dependent claims that are proper, in there from the start, presented for the PTO to search. In FtF Country, see it as a written description thing, to fix it that, amongst rival Inventors, it was the one who was First to File that gets the patent on the specific invention in Dispute.

    In contrast, whenever I suggest just that, American patent attorneys take me to task. They say it is NOT possible to define the invention in a claim till the USPTO has examined the application. Only then, and for the first time, can the proper claim be written. I guess that might be because of the fact that, under US patent law, secret prior art is available for obviousness attacks.

    So which is it? Is it really true, that one can “know” what the invention is when drafting the application? Is that really possible and, if so, why the cacophany of criticism of the EPO when it too says that you can?

  3. MaxDrei,

    The answer to your post is the great lawyer answer: it depends.

    I think that you are confusing two different topics. The first topic that Gene writes about here is the original writing of the application and claims. I always advise my clients to obtain the most thorough prior art search possible in order to know the lay of the land. That advise is not always taken (and the decision is the clients’ to make).

    Either way, the application and claims are of necessity written with imperfect knowledge, and there is no possible way to know a priori just what art an a examiner will decide to use in a rejection. In that regard, what you are sensitive to being taken to task will still take you to task. I also think that you are misstating what people take you to task for – just a little. It is not a proper claim (in a vacuum) that can only be written for the first time when previously unknown art is presented – it is the claim and response to that never before seen art and argument. The best course is to strive for overcoming this never seen before information without an amendment, but that is not always possible. This does not conflict with the advice given by Gene – it augments it. Drafting fallback positions is critical, and is very much a part of the skillset provided by a patent attorney.

  4. “Drafting fallback positions is critical, and is very much a part of the skillset provided by a patent attorney.”

    Indeed! But which ones? I would go a step further, and suggest that fall-back positions are like chess moves. There is always an infinity of them, and when you select you don’t know what your challenger will do in response to them. The skill of the patent attorney therefore lies in selecting the ones that will win the game (with no second chance if you select wrong). In a First to File jurisdiction, you can’t delay your announcement what your invention is till after you file your patent application. That is against the Rules.

  5. Exactly right MaxDrei.

    And exactly why patent applications are seemingly crafted to be less than pellucid. The applicant must make the first move without knowing what the examiner will use in reply. And the fact that there is no second chance means that the first entry must be malleable enough to withstand the unforeseen and unknowable.

    You have one shot at the beginning to submit everything that can come of your efforts. The art of the craft lies in being able to submit the full range so that the opportunity for protection is maximized.

    This is often why inventors are puzzled when they view an application. Inventors think in a linear mode and singly of what they think their invention is. Their attorney must think of the entire chess match. Their attorney must think in multiple dimensions and several moves ahead. Their attorney must protect the inventor from a host of people – sometimes including the inventor herself. After all, we are talking about a legal right that extends twenty years into the future. So very often an inventor ONLY thinks of the invention in the most immediate embodiment, and does not realize the true scope of the invention.

    And yet, this skill of the artisan is so often denigrated by those who view patents as ‘tricks.’ Rather than a ‘trick’ good writing is merely a foreseeable consequence of the examination process.

  6. I’ve said it before, and I’ll say it again: DO NOT attempt to obtain a patent without top-notch professional help.

    YOU DON’T KNOW WHAT YOU DON’T KNOW … and by the time you find out … IT’S TOO LATE.

    Please take Gene’s, Anon’s, Pro Se’s, and my advice to heart.

    Any patent you’re able to obtain on your own — even if you’re able to do so — won’t be worth the paper it’s printed on by the time you finally get it.

    Beg. Borrow. Take an investor/partner (don’t go this route without an attorney). Whatever you have to in order to afford a top-notch professional.

  7. In our particular corner of industry, method claims tend to be generally un-enforceable because either they require the end-user to the one guilty of infringement, or because they require some form of computer control which is hidden in protected memory and unreadable by anyone who suspects infringement.
    I haven’t seen patents for “methods of baking cakes”, as in Genes’ example, but I have read patents for “methods of playing games” which can only be infringed by the players themselves. What are you going to do, then, crash house parties and sue the party-goers?

  8. Solo, I’m just curious. What is your advice to other solo’s on how to select “top notch” professional help?

    In particular, if you are not going to do it on the basis of “You get what you pay for” (and you are surely not) , how else?

    You see, there is only one way I know, namely, the judgement of their peer professionals. Some doctors bury more mistakes than others, but are they the worst doctors? Could that be because they take unattractive cases, that their more business-minded colleagues would eschew?

  9. Great question Max.

    I would have made a direct recommendation, but I didn’t want to come off sounding like a shill. But since you asked; knowing what I know today, and knowing (and having personally experienced and benefited from) his extensive knowledge and experience base (and the fact that he really cares about and wants the best for his clients), I’d hire (and I would do so again) Gene.

    Another approach is to identify attorneys/law firms/patent agents by reviewing the issued patents in the art classification(s) one’s invention is in or most closely related to … that they’ve obtained for their clients. Then I’d interview three or so.

    I’d also buy Gene’s Invent+ Patent System; and the books Patent It Yourself and “Stuckey” (I’m sure I spelled his name wrong) On Claims.

  10. Thanks Solo. It’s easier than finding a good doctor then, in that you can browse the work product of patent attorneys. But, similar to finding the right doctor, after reading up on the subject, it mainly comes down to finding somebody who cares.

    It’s not so different for Big Corp, I would say. It assumes all big patent attorney firms have the requisite skills with words, with the technical field and with the law, together with the necessary knowledge and experience, and so it selects according to which firms care the most.

    At least with a sole practitioner, the one you interview will be the one handling your cases. Many people think that important.

  11. You’re welcome Max.

    Your good point gives me another recommendation for independent inventors (and maybe others as well):

    Work with a small firm; one where you’re able to work directly and hand-in-hand with your professional. Not a firm where they want to hand you off to others; including newly-minted professionals.

    Do you really want less experienced — or worse, brand new or newer — professionals cutting their teeth on your inventions/patents? I sure wouldn’t.

  12. Solo,

    I would caution against the seeming NIMBY view about ‘new professionals cutting their teeth’ for a number of reasons:

    1) Patent law is in such a state of flux, that knowledge wise, the young professionals may in certain legal aspects surpass the veterans (especially veterans who cling to notions that no longer apply).

    2) The young professional may often have a better grasp of emerging technology.

    3) There remains a professional responsibility for a firm to give the client professional service – both by the new associate as well as a responsibility by the partner in charge to review the new associate’s work and make sure that work is up to snuff – and no, you the client are not to be charged extra for this.

    4) Law is called ‘practice’ for a reason. New and old attorneys – like it or not – are practicing on your material.

    That being said, you are most definitely correct in that a good working relationship between attorney and client can be immensely valuable.