Claim Drafting Part 1 - Identifying Your Invention? Episode 9
These articles are near verbatim transcripts of my “Patenting for Inventors” podcast. Click here, or the podcast image to get to the podcast feed.
Claim Drafting Part 1 - Identifying Your Invention. Episode 9
This episode is the first in claim drafting. If you remember from the previous episodes, the claims of a patent are where you identify and spell out exactly the boundaries of what your invention are. The is the most important part of your patent when it issues because it tells people what the limits of what they can make without infringing your patent, and what they are prohibited from making.
There’s no one right way to write claims but there are plenty of bad ways and what you at least want to do is not write your claims in such a bad way that the claims will never get issued or if they are issued, they’ll be worthless because they were drafted so poorly.
The first step in claim drafting is actually figuring out what your invention is. This is not as easy as it sounds because it’s tempting to look at your product and just say “this is my invention” without really thinking about what it is. I’m going to go through one example. I just bought a screwdriver called the Lutz 15-in-one ratchet screwdriver.
I don’t get any royalties for talking about it, but I picked it because right on the handle of the screwdriver it says “Patent Number 6327942” so I wanted to see what it was they actually got patented. In order to get a better idea of what I’m talking about, go onto Amazon and type in Lutz 15 in one, and it should pop up. Also, go to the google patent search website and type in the patent number, which is again 6327942.
So one of them problems with screwdrivers is that you need different sizes and shapes of bits that fit into the different sizes and kinds of screwdrivers. So instead of having 15 different screwdrivers, you can have one that fits different bits.
I’m going to describe what I see by looking at the screwdriver. I see a long metal cylinder that can hold a bit. Below that is a wider section where I can select if I want the screwdriver to ratchet clockwise, counterclockwise, or no ratcheting at all. One problem with multi-bit screwdrivers is that you need a place to store all the different bits.
Maybe you have a separate case for the bits, but one way to store the bits is to store them actually inside the screwdriver itself. There are all different kinds of ways to store bits in screwdrivers. The way the the Lutz screwdriver does it is that around the circumference of the handle are 6 long slots that hold the bits. The clever thing about this screwdriver is how it prevents the bits from fall out. There’s a dial at the end of the screwdriver that you can rotate.
Most of the dial blocks the ends of the slots so that the bits can’t fall out, but there’s a part of the dial has as a hole. And the hole is just big enough to let the bit slide out when its aligned with the slot. The dial can be rotated so the hole can align with any of the slots. It’s easier if you see it in either the patent or on Amazon or you can look for some videos on YouTube.
Now that you see this screwdriver, what is the invention? If I said all of the parts together are the invention, then it would be too narrow. Here’s why. One of the parts that I mentioned is that ratcheting selector so it can ratchet in different directions.
But what if someone came up with the exact same screwdriver but just didn’t have it ratchet, it was just like a regular screwdriver. If you came up with this screwdriver, you’d probably be kind of mad that someone essentially stole your idea for the rest of the screwdriver and just removed one of the parts that really wasn’t the most important thing about your invention.
How do we overcome this? There are different approaches to figuring out the essence of your invention. One of the easiest ways to do it, but not the only way, and maybe not even the best way, is what’s called the prune and distill method. You want to prune away the parts that aren’t essential and then what’s left you want to distill to their essence, and I’ll talk about what that means.
What what parts can we prune away. Can can prune away the ratcheting selector. Maybe you can even prune away the long metal cylindrical part that holds the bit. You probably do need something like that in order to screw something in, but it’s not really the inventive part of what your invention is. You probably should add it in to what are call dependent claims, which I’ll cover in another episode, but if it’s not essential to what your invention actually is, you should start by pruning it out.
Then we have the handle part. We need that because that’s the part that actually holds the bits. We need the slots, because that holds the bits. We need the dial, and we need the hole in the dial so the bits can slide in and out of the slot. That’s really it. Everything else is just extra stuff to maybe make it work a little better but its not the essence of the invention.
So we’ve pruned away the unnecessary parts to describe the invention. But why don’t you keep pruning to make your invention even broader? Well if you keep pruning, you eventually are left with something that already exists. Let’s say you pruned away the dial, the hole in the dial and the slots. All that left is just the handle part of the screwdriver. And every screwdriver has a handle part so you’re just not going to get a patent on that. Part of the art of claim drafting is to know how much you can prune so that you still get a patent, but not prune too little so that others could easily design around your patent by other people just making a very similar product and removing one little part that you didn’t prune off your claims.
Now that we’ve pruned the invention to the essential parts, we have to distill. Distilling is taking a part of your embodiment and using a word or phrase that cuts to its essence. I’m sure you all know what the single serve Keurig coffee makers are. You put in replaceable cups that have coffee grounds and then hot water goes into it to make a single cup of coffee. I haven’t looked into it, but I’m sure they have tons of patents.
What if in one of their patents they claimed as part of their patents a cup for holding coffee grounds. But there are other single serve coffee machines such as the Flavia that don’t use cups, but use packets. So is the cup really part of Keurig’s invention? What is a cup? The cup’s essence is that it is a container for holding coffee grounds.
Whether it’s in a cup shape, or a box, or a plastic pouch doesn’t really matter so you don’t want to limit your invention to just cups, you want to be broader by distilling the word cup, to maybe something like the word container.
There might be lots of other ways to describe it, but the point is, you really want to think about what that element does and distill it to its essence.
So for our example, I’ve talked about a handle portion, but does that really distill that part of the screwdriver to its essence? Handle isn’t a horrible word to use, probably does distill that element of the screwdriver to close to its essence, but instead of using “handle” the inventor uses the term “a body portion having a first and second end” That’s really the essence the handle of a screwdriver. It’s just some body portion that has two ends.
What about the slots? Yes, they are slots, but what are they really? The inventor here calls them bit channels, which is a really broad term for just a space for bits can go into. How many do you need? In the actual screwdriver itself there are 6, but do you want to say there are 6 bit channels in your claims?
No, because someone could make one with 5, essentially copying your product but avoiding infringing your claims because you said there were 6, and your competitor made one with 5. So instead, the inventor says that there are a plurality of bit channels? This covers 2 more more bit channels. That’s really the distilled essence of the bit channels.
What about the dial that I talked about that blocks the bits from falling out of the screwdriver. Instead of calling it a dial, the inventor calls it a bit gate. A gate is just a generic term that blocks something but also has an opening that can let things through, which is really more of the essence or distillation of the dial with a hole, which is how you might first describe it.
There is another limitation in this invention in the claim called a bit cap that I’m not going to go through now because I just wanted go through some of the features and how to prune and distill features, and the purpose isn’t to dissect this exact product.
So the prune and distill method of identifying your invention is one way to get at the essence of identifying what your invention is, but there are other ways. One way is the called the problem and solution method, which is probably a better method, but is a little more challenging.
If you’re interested in this method, there’s a great book called “Invention Analysis and Claiming, a Patent Lawyer’s Guide” by Ronald Slusky. It’s more of an intermediate or advanced guide to claim drafting, but the lay person can use it too. In this method you ask yourself what the problem is, and what the solution is.
Here we might phrase the problem and solution as, “The problem of keeping a multibit screwdriver and all of its bits together, but easily interchange the bits, is solved by keeping the bits in channels on the body of the screwdriver, and preventing the bits from falling out by having a gate that can rotate that allows the user to select which bit to remove.”
There can be lots of ways to pose the problem and lots of ways to pose the solution. When you use the problem solution approach, you can see that one thing that you didn’t have to say was “long cylindrical bit holding part of the screwdriver” because that part of your product isn’t any part of the solution to the problem. Now lots of times using the problem solution approach or the prune and distill approach you may come up with claims that are pretty similar at the end, but maybe you won’t.
The book gives an example of the rotating plate inside of a microwave oven. When microwaves were first made there were no rotating plates to move the food around to evenly heat it in the microwave. This made it so that some food was heated quickly while other parts of the food remained colder. Someone came up with idea of putting a plate that rotates while the microwave is on, so that different parts of the food are heated as it rotates around because the food is in different locations of the microwave as the microwave on, so there is more even heating.
If you were to do the prune and distill method, you might prune the invention down to plate inside of a microwave oven that has a shaft in the center connected to motor that rotates the plate when the microwave is on.
That might be a good pruning and distilling of your embodiment, but if you went through the problem solution method, you might realize that the problem of evenly heating food in a microwave if solved by moving the food relative to the source of the microwaves. It might sound the same, but when you think about it, the solution doesn’t mean that you have to have a rotating plate. You can have the source of the microwaves inside of the microwave oven move around. Maybe you don’t need a plate that rotates at all, you could have some type of conveyor belt that holds the food move back and forth.
By focusing on the problem and the solution, you may realize that your invention is actually something much different from the physical structure that you created. And this why I think writing the claims section is the first thing you should do when drafting an application. You can’t write your application well if you don’t know what your invention is. And lots of times you don’t know what your invention is until you sit down and actually start to analyse your invention and start pruning and distilling the features.
If you wrote your description of your embodiment first, you might have a really good description of your embodiment, then you start writing your claims and things really change about how you are describing your invention. Then you have to go back to your description to match your claims and revise the whole thing. The better approach is to take the time to figure out what your invention is, draft claims and then use your claims as an outline to draft the rest of your application.
This is just a first step to claim drafting and I’ll have many more episodes on how to draft claims because claim drafting is crucial to getting a good patent that you can enforce.
If you would like help with your provisional or non-provisional patent application, I do offer those services through my practice at Diament Patent Law.
- Dec 9, 2017 What is Intellectual Property and What Kind do I Need? Episode 1
- Dec 11, 2017 Is My Idea Patentable? Episode 2
- Dec 13, 2017 Is My Invention New, Useful, and Non-Obvious? Episode 3
- Dec 18, 2017 Patent Searches and How to Find Similar Inventions. Episode 4
- Jul 4, 2019 Should I Tell People About My Invention and What are the Patent Application Deadlines. Episode 5
- Jul 5, 2019 How to Read and Understand the Parts of a Patent. Episode 6
- Jul 5, 2019 The Patent Application Process. Episode 7
- Jul 6, 2019 What is a Provisional Patent Application and Should I File One? Episode 8
- Jul 11, 2019 Claim Drafting Part 1 - Identifying Your Invention? Episode 9
- Jul 13, 2019 Claim Drafting Part 2 - Anatomy of an Apparatus or Device Claim. Episode 10
- Jul 13, 2019 Claim Drafting Part 3 - Anatomy of a Method Claim. Episode 11
- Jul 14, 2019 Claim Drafting Part 4 - Independent and Dependent Claims. Episode 12
- Jul 23, 2019 Claim Drafting Part 5 - 10 Quick Tips for Claim Drafting . Episode 13