PocastCover090720183000x3000.jpg

Articles

Patent Articles


The articles in this section are transcripts from my “Patenting for Inventors” podcast. You can read articles covering more 80 topics related to how to patent your invention. Alternatively, you can listen to the podcast by clicking the podcast link or image below.


☎ (424) 281-0162

✉ adam@diamentpatentlaw.com


Claim Drafting Part 2 - Anatomy of an Apparatus or Device Claim. Episode 10


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 2 - Anatomy of an Apparatus or Device Claim

In the last episode I talked about the process of identifying your invention.  Before you can begin drafting claims you have to first understanding what your invention is.  I’m going to assume that you’ve figured out what your invention is and now go into the parts of a claim so you can figure out how to start putting one together.

There are three mains parts of a claim. There is the introduction called  preamble, a transition word, and then limitations. 

The preamble is a very short few words about what your invention is used for.  In the avocado slicer examples, if you look up avocado slicer patents, you can see that the preamble that inventors use are “A fruit tool” or “A tool for slicing avocados” or “An avocado pitting device” or “A tool for use on an avocado”. 

In general, the preamble is not going to be used against against you do you don’t need to go crazy trying to think of the perfect words.  For example, let’s say you used the preamble “an avocado pitting device” and someone copied your device but said it was used for pitting peaches, not avocados. 

They probably couldn’t assert that, in your preamble you said it was an avocado pitting device, and theirs isn’t an avocado pitting device, it’s peach pitting device, so they’re not infringing your patent.  There have been some situations where the preamble was used against the inventor, but as a general rule, its not.  But to be safe, it’s better not to be too specific in your preamble if you don’t have to. 

In a future episode I’ll go through a list of top pitfalls of claim drafting how and how to avoid them, but for now, just know to keep your preamble broad in describing the intended purpose of the invention.

In another example, I talked about a new type of screwdriver invention. The preamble could be “a screwdriver” or “a multiple bit screwdriver” or “a device for driving screws.”  If your invention is a new type of flashlight, your preamble might be “a flashlight”. You always want to start with the word “a” and then the intended use of what it is.

The next part of the claim is the transition word.  Almost always, your transition word is going to be “comprising”.  Not “comprising of,” just “comprising.”  There are certain situations where you would use the word “consisting of” but it’s very dangerous to use the word “consisting,” unless you know what you’re doing. and if you accidentally use the word “consisting of” instead of “comprising,” you can essentially make any patent you get unenforceable, so don’t do it unless you really know what you’re doing.  New chemical compositions and drugs are one area areas where you will often see the word “consisting of” used in the right way, but for almost all of you, you never want to use the phrase “consisting of”. Since this is just an intro to the anatomy of a claim, I’m not going to go into the details of why, but I’ll leave that to a future episode.

There are other words that you can use, such as “having,” or “including,” or “consisting essentially of.” but for the most part, you’re going to want to use the word “comprising” and then follow that with a colon. 

After the colon after your transition word, you make a new line and you start writing out the limitations or elements of your claim. Legally, the parts of the claims you write are called limitations, but you’ll hear people interchange the terms elements and limitations.

As I talked about in the last episode, you want to be careful about what you consider the essential limitations of your invention because you don’t want to include too many limitations in your claims so that a copycat and just remove one meaningless element to avoid infringing your patent.  Go back and listen to the last episode if you want to figure out how to identify your invention for claim drafting.

I’m going to go back to the avocado slicer I’ve been talking about in this series.  Check out on google patents, U.S. patent number 8726799 and go down to Claim 16.  You can look at any of the claims, but I think Claim 16 is the most straightforward so that’s the one I’m going to use as an example.

Just as a quick refresher, this device has an avocado splitting blade at one end, in the middle is a handle that has a dome with projections that jab into the avocado pit and then remove it, and at the other end is a fan of blades can slice the avocado into multiple slices at the same time. You can see illustrations of it in the patent, or go to amazon and type in Oxo 3-in-1 avocado slicer.

So starting at claim 16, You’ll see that the preamble says “an avocado pitting device” then the next word is the transition word, which is “comprising” and then you’ll see a colon.  Then if you look below that you’ll see four main sections of Claim 16.  Each of those sections is a separate limitation. 

One of the limitations starts with “a handle”, the next section starts with  “a first blade member,” the next section starts with “a second blade member,” and the last section starts with “at least two spaced apart members.” 

At end the of each of the limitations is a semi-colon.  You always put a semicolon between the different limitations, not a period. This is because legally, a claim has to be one sentence.  I know it looks and sounds really awkward to have a claim that could have dozens of limitations only be one sentence, but that’s just the the rules.

The first time you put in a limitation, you almost always will precede it by the word “a..  So here you’ll see that the first thing is “a handle.” You can’t put a limitation by using the word “the” unless you’ve already introduced it.  I’ll go over the details of when you must use the word “a” or “the” in a later episode, but to just briefly explain, the first time you introduce a limitation, you almost always will use the word “a” and later on, if you’re talking about the same feature, then you use the word  “the.”  This is called “proper antecedent basis” so if you ever get a rejection that says that you’re claim lacks proper antecedent basis, what the examiner is telling you is that you didn’t use the words “a” and “the” in the right way.

So the first limitation is talking about the avocado pitting device having a handle.  If you’re looking at the illustrations of the device on amazon, this is just the center part of the device.

The next limitation says that a first blade member is required.  Also, starting at the second limitation, you usually put in how the two limitations are related to each other.  In this example the inventor says that the handle is coupled to the first end section of the handle.

You can also put in the purpose of the limitation.  Here the inventor explains that the blade member is configured to cut open the avocado to expose a pit of an avocado.  You want to be careful when you start explaining the purpose of the limitation because just like when you’re arrested for a crime, anything you say can and will be used against you in a court of law.  So it’s best not to say anything you don’t need to say in your claims, and if you do, make sure you do it in a way that doesn’t further limit your claim. I’ll go over how to describe the purpose of your limitations within a limitation in a future episode.

If you’re looking at the illustration, the first blade is the main single blade that is used to split the avocado into two halves.

The next limitation is a second blade member. If you’re looking at the illustration, the second blade member is the fan blade at the opposite end of the main splitting blade. It’s these fan blades that are able to slice the avocado into multiple slices at the same time.

Even though in the illustration there’s more than one blade in the fan blade, in the claim, the inventor is just saying that there’s a minimum of one blade that is is required for the invention at the second end of the handle.

Next is the last limitation, but before I go there I wanted to say that usually in the second to last limitation, after the semicolon, the inventor will put in the word “and” which signifies that there’s only one more limitation to go, and follows that “and,” with a regular comma. In this patent, the inventor put in the word “and,” but didn’t have a comma.  It’s not a necessity, but it’s a common practice to write your claims with an “and,” and a comma.

And the last limitation is “at least two spaced apart engagement members interposed between the first and second blade members.” If you’re looking at the illustrations, these two spaced apart engagement members are the little projections that are inside of the dome that fits over the avocado pit, and these projections, jab into the pit so the pit can be pulled out.  The inventor then goes into some details about what these two spaced apart engagement members do. 

After describing that limitation the inventor finishes off the claim with a period.

And that’s it, Claim 16 has preamble, a transition word “comprising” and four limitations where the limitations are described and how the limitations relate to each other to form the invention. 

Besides Claim 16 that I talked about, you’ll see other claims in the claim section that make reference to Claim 16, and these are called dependent claims, which I’ll go over in another episode.  What I’ve described in this episode is called an independent claim because it doesn’t make reference to any other claims.

In this episode I went over the anatomy of a claim for a device or an apparatus, which are inventions where the embodiments are generally physical objects, such as an avocado slicer, but there are special ways to write claims if you are trying to patent a method, and the anatomy of method claims will be the subject of the next episode.  

If you want help with drafting your patent application and claims I do offer those services through my practice at Diament Patent Law.