Posts Tagged: "claim drafting for beginners"

Patent Practice Training: An Introduction to Patent Prosecution

You’ve passed the patent bar exam. Now what? Having a license to practice is just the beginning. What you need is a bridge between passing the patent bar and representing clients. This is why Gene Quinn and John White designed An Introduction to Patent Prosecution: Patent Practice for Beginners. This interactive, live, online distance course will provide all the tools necessary to hit the ground running. From interacting with clients to agreements, to handling money, to drafting applications and responding to Office Actions, this course covers it all.

Patent Strategy: Advanced Patent Claim Drafting for Inventors

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.

Patent Drafting for Beginners: The anatomy of a patent claim

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.

Patent Drafting for Beginners: A prelude to patent claim drafting

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.

An Introduction to Patent Claims

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.