Amplifying IP is a thought leadership series on best practice approaches to protecting and leveraging IP.
In his previous two articles, Principal and Patent Attorney, Rob Wulff discussed searching and the client meeting. In this article, Rob discusses patent claims drafting.
It’s probably fair to say that there are as many techniques for drafting a patent specification as there are patent attorneys. There are also several excellent books on drafting patent specifications that can be found with a quick search on the internet. So, the following suggestions are not intended to be gospel, nor exhaustive, nor are they alternatives to conventional wisdom; they are suggestions based on many years of experience drawn from some great patent attorneys who have worked long and hard at drafting patents for a diverse array of clients.
It’s all about the invention
In my early days as a trainee patent attorney, my experienced wizened mentors used to drum into us the importance of being clear in your mind about what the invention is, before you sit down to draft. The view was, that if you couldn’t articulate clearly to a colleague what the client had invented, then you had no hope of drafting a decent claim. I would add to this – that the invention should be an articulatable ‘concept’. In my experience, it’s important to clearly formulate and view that concept with the mind’s eye, and not be distracted, throughout the entire drafting process, by the expressions of that concept. Rather, the attorney needs to hold the broad concept in mind and keep referring to it as a touchstone.
Another of my mentors used to counsel us that the claim you draft should be ‘barely novel’. The claim should contain just enough expression to set it apart from the closest prior art. In my experience, this counsel works together with the articulatable ‘concept’ referred to above.
In short – it’s good to ask – has my claim captured the inventive concept?
Get it down then hold it up to scrutiny
As you begin to set your words down ‘on paper’, you should keep asking – “is there a better word to use”, and “what does this selected word mean?”. It’s good to run a smart look-up feature on each key word as you draft. AI patent drafting tools can be helpful in providing terms and expressions that are frequently used in the particular art of the invention, but of course be wary that undue and unintended limitations don’t creep in.
Many years ago, in 1946, a seminal paper was published by Eric Walter Eustace Micklethwait entitled “Brushing up our Drafting”1. Micklethwait was an inventor in his own right as well as a patent partner at the well-known firm of Kilburn & Strode in the UK. My favourite test of his was “The Cussed Draftsman’s Test”. To apply this test, the drafter, as well as his colleagues, would sketch on paper what had been drafted – almost antagonistically. If the sketching proved difficult, or if the resultant picture contained unintended or unforeseen limitations, this was a sure sign that the claim needed revision, or scrapping.
There’s also no substitute to sitting down with an experienced colleague and having them cast a critical eye over your claims. For one, they will not be attached to your language, and their constructive criticism can offer a valuable perspective towards producing better claims.
Does it read well?
Einstein’s eldest son, Hans, once said of his father, that for him “The highest praise for a good theory was not that it was correct, nor that it was exact, but that it was beautiful.” The same might be said of a well-drafted claim.
In other words, its language should be clear, concise, and unambiguous. It should be a delight to read. At times I’ve had cause to read and interpret main claims that stretch for a page or more. Aside from finding it hard to keep track, a niggling thought is that this claim will be easily avoided. I’ve also had the opportunity to redraft some of those claims, and it’s been surprising to see how the very same inventive concept can be reduced to a single, short paragraph.
A well-drafted claim also contains connecting phrases that minimally and elegantly tie features together. Such phrasing should seek to define the working inter-relationships clearly and precisely.
Claim the novel features
The main claim should only include the features necessary to make the claim ‘barely’ novel. Sometimes a claim need only to define one novel feature. If that’s the case, don’t be scared to publish it.
In experience, subsidiary claims are often an after-thought. The best dependent claims should expand on the most important features of claim one or introduce new novel features. With the increasing global ‘tightness’ on overall claim number, it’s a waste to include subsidiary claims to features that are not novel or important.
Is there a product? Can it be a method? Is there a system?
Often with process-oriented inventions, the product claim can be forgotten. Is there an independent product claim that can also be drafted, that doesn’t depend on the process claim?
Similarly, with apparatus-oriented inventions, there may be a way of also expressing the invention as an independent method/process. Such a claim can often have a broader scope than the apparatus claim.
Sometimes, the best way to protect an invention is via a system-type claim. For example, novelty may reside in a combination of apparatus, devices or a combination of apparatus and process. System claims can also work well alongside product and process claims, as they can target the end-user.
Also, think about all the parties that might infringe, or contribute to infringement, in the commercial rollout of an invention. Consider whether any independent claims can be drafted that target such parties. For example a claim to a novel component to be supplied into an apparatus.
Teaching-type claims
Claims will be read by an Examiner and later may be read by a non-technical judge. Consider leading off with a claim that ‘teaches’ the inventive concept in greater detail, and then include broader and shorter independent claims later in the claim set.
Such teaching claims can help set the Examiner’s and judge’s mind as to inventiveness so that a favourable interpretation of later broader claims will follow.
Run it past the client
Ensure that the client provides input on the claims before you proceed with drafting the remainder of the patent. From my experience, this is best done in a face-to-face or video conference meeting. It’s important the client understands what you’ve drafted. You want the client to understand the scope you are seeking and to communicate that understanding to you. For example, do you both understand the commercial implications of such scope? If the client doesn’t understand what you’ve drafted, this should prompt further consideration.
Set the claims aside and read them later
Ideally, set your drafted claims aside and read them at least a day later. Also, revisit the claims again after you have drafted the Detailed Description. Sometimes, drafting the Detailed Description can give a new perspective on the inventive concept.
Play devil’s advocate for your claims, such as, assuming the role of an infringer seeking to design around them. This often leads to refining your claims.
Concluding comments
These claim drafting tips are not intended to be exhaustive. But, over the years, I’ve found them to be very helpful in producing patents that stand up to international scrutiny.
- Micklethwaite, E.W.E. (1946) “Brushing up our drafting” Proceedings of the Three Hundred and Ninety-Second Ordinary Meeting of the Chartered Institute of Patent Agents. London ↩︎
