Claim Drafting Part 5 - 10 Quick Tips for Claim Drafting . Episode 13
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 5 - 10 Quick Tips for Claim Drafting. Episode 13
I can’t cover everything about claim drafting in this podcast, but I thought I would finish the topic of claim drafting with 10 tips. I covered some of the big picture aspects of claim drafting in episodes 9-12 of the podcast, but in this episode I wanted to just cover briefly some other things to think about when drafting claims.
If this is the first episode you’re listening to, then I’d suggest starting at least at episode 9 where I first start going into the claims, or even all the way back to episode 1 to start from the very beginning of intellectual property.
These tips are for utility patents and not design patents, which I’ll cover in a later episode. And these tips are also mostly helpful for inventions that are physical in nature, but they’re also applicable to method claims.
Tip 1: keep your preamble short and broad. The preamble is the introduction of your claim. If your invention is for a megaphone, just start with “A megaphone,” don’t go into the details, but if you want, you can also write in a very brief purpose, such as “A megaphone used to increase the volume of a person’s voice.” I covered tip 1 in more detail episode 10, so if you want to know more about the preamble, listen to that episode.
Tip 2. The last word of your preamble should be the word “comprising.” Unless you really know what you’re doing, do not use the word “consisting of.” This is very important. If your claim starts with, “a bicycle comprising, two wheels and a handle bar,” What this means is that your bicycle has at least two wheels and a handle bar, which is probably what you mean. If your claim said a bicycle consisting of two wheels and a handle bar, what this means is that your bicycle has ONLY two wheels and a handle bar. It means that it doesn’t have a chain, it doesn’t have a frame, it doesn’t have a seat, etc. You would never want to use the word consisting in this case because someone could just come along and add any feature to design around your claim. If someone made a bicycle that had two wheels, a handle bar, and a seat, they wouldn’t be infringing you claim because you used the word consisting of instead of comprising. But if you had used the word “comprising,” as long as they at least had the list of things you mentioned, even if they had more, the could still be infringing your patent. This is a really gross simplification because no one would get a patent today on a bicycle having two wheels and a handle bar, but I just used that as an example to show you the difference between the words “consisting of” and “comprising.” You rarely, if ever should use the word “consisting of.” Chemistry patents are one area where you will see “consisting of” a lot, but be really cautious if you use it. I think I’ve only used that term once in all my years of practice.
Tip 3: Proper antecedent basis. In patent language, this means using the words “a” and “the” in the right places. The first time you write a limitation in a claim, like “wheel” or “handle bar” you should write “a wheel” and “a handle bar”. After that, if you refer to the same object again, then use the words “the wheel” or “the handle bar”. Instead of the word “the” you can also use the word “said”, so you can say “said wheel” or “said handle bar” but there’s a trend away from that language because it sounds overly formal. The only time you don’t have to use the word “a” first is if the thing your talking about inherently has it. For example, if in part of my claims, I need to talk about the center of a circle. I don’t have to write “a center of a circle” because circles inherently have “a” center and there’s only one center. So you can write “the center of a circle” even if it’s the first time you’re talking about the center. There are times where I’ve felt that I should realistically have been able to say “the” without having to say “a” first, like “the center of the circle.” But then I got a rejection and instead of fighting it, I just changed it to how the examiner wanted so. So now, even though in theory you can sometimes write “the” the first time you talk about an element, I just don’t do it at all anymore.
Tip 4: Using wherein clauses. When I start writing claims, I like to start with the big picture. Let’s say for some reason, in my claims, having a rubber wheel with metal spikes is really essential to the invention to differentiate it from other wheels that are out there in similar inventions. What a “wherein” clause does, is it limits the claim to something more narrow. Now you could write in your claim, “a rubber wheel having metal spikes.” But what I like to do is to write down the big picture first. So I might write “a wheel, wherein the wheel is made of rubber and has at least one metal spike.” You could even make a broader claim and say, “a rolling member, wherein the rolling is a rubber wheel having at least one metal spike.” This is not a hard and fast rule because there are lots of ways to write claims. But the reason I like it is that if I ever need to make amendments, I can keep my big picture word the same, “the wheel” or the “rolling member” and not change it at all, and then just play around in the “wherein” clause if I need to start narrowing it down to get a claim allowed.
Tip 5: Using whereby clauses: Some people confuse wherein and whereby clauses, but they’re different and you have to be careful about them. A wherein clause limits the claim. If I say in my claims, “a wheel, wherein the wheel is comprised of rubber” and someone in their invention, does the same thing but their wheel is only made of wood, then they’ve just designed around your claim because the wherein clause limited your invention to just rubber wheels. A whereby clause, usually doesn’t limit the claim. So for example, if I wrote, “a wheel, whereby the wheel allows the bicycle to roll downhill” it’s not really saying anything about the structure of the wheel that limits it, it just describes the purpose of it. Most of the time, if you describe a purpose of something, it’s not going limit the claim, so someone can’t come along with a special bicycle that only rolls uphills and say “you claim requires the wheel to roll downhill” and my wheel only rolls uphill. Most of the time, that defense isn’t going to work because in general, the whereby clauses are just helpful to the reader or examiner to understand the general purpose of the limitation. There have a been some cases where whereby clauses have been used to limit the claim, which is why some patent attorneys are against using whereby clauses them at all. Their attitude is, “anything I say, could be used against me, so why say anything that isn’t 100% necessary,” and I get that, but I also think that they’re useful in letting the examiner understand how the invention works, which is going to make it more likely you’ll get an allowance. I see both sides, and I use them, but you do want to be careful about how you use them because if you use them wrong, it can be thought of the same as a wherein clause. For example, if you said “a wheel, whereby the wheel is made of rubber”, yes, you used the word “whereby” but you used it incorrectly, and you can tell by the rest of the sentence, that what you really did was just mix up the words “whereby” and “wherein,” and what your saying is that your wheel is actually a rubber wheel. So if you do use them, use them correctly and keep them pretty broad about their function, and do not discuss any structural limitations in the whereby clause, and don’t use words like “whereby the wheel can only be used to roll downhill” because if you go into detailed functions of what it can’t do, that’s the type of situation where it could be used to limit your claim.
Tip 6: Making sure your limitations are in the summary or description of the invention: I haven’t gone into the summary or description of the invention yet, and I’ll get to this later, but it’s really important that every limitation in your claims is described and discussed somewhere else in your application besides the claims. If I claimed my invention includes a wheel and a handle bar, make sure that somewhere in the description of your invention earlier, either in pictures or words, you’ve actually discussed a wheel and handlebar, because if the only place you mentioned your wheel and handlebar are in the claims, then you’re going to get a rejection because the examiner is going say that your application did not fulfill the written description and enablement requirements to get a patent. It can be really hard to overcome that kind of rejection so make sure everything in your claims is discussed somewhere else in the patent application.
Tip 7: Connect the pieces: If your invention is a physical object, connect your pieces and say how they work together. In the bicycle example, you don’t want to just say that you invention has two wheels, a frame, a handle bar, and pedals. You’ll probably get a rejection if you don’t say how they work together and it doesn’t have to be overly detailed. But somewhere in the claim, you probably want to say that the handle bar is connected to at least one of the wheels. You’ll want to say that the pedals are connected to at least one of the wheels, because if you don’t say how your pieces fit together, then the examiner is going to find something where all these pieces are separate, like some catalog of goods, and just say that your invention isn’t new because all those pieces exist. What makes your invention new and non-obvious is the way that they’re all connected together to make a functioning device. My point isn’t to say that the bicycle I described is non-obvious, it’s just to say that you have to say how the pieces are connected together to make your invention.
Tip 8: Start broad and then narrow down. When you write your first claim, think about the fewest number of required elements needed to accomplishing the goal of the invention. If you think your invention requires parts A, B, C, D, and E but you think, maybe it could be done with just parts A, B, and C, then when you write your first claims, just write that your invention requires A, B, and C. If it gets rejected because it’s too broad and just having those three things together are obvious, then you can always go back and add in parts D and E to the claims. What’s harder to do is if you first start out saying that your invention requires A, B, C, D, and E, and you get it allowed and your patent issues, then it’s really hard to go back and tell the patent office, “Oh, I made a mistake, my invention really only requires A, B, and C, so I want to change my patent.” Sometimes it can be done with a reissue patent, which I’ll talk about in a later episode, but you want to avoid that if you can, and try to get a patent in the beginning for as broad of an invention as you can. If you’re not sure how narrow you should go, you can put those features in dependent claims as backups in case your broad claim is found invalid, or it gets rejected. I talked about independent and dependent claims in the last episode, so listen to that episode again if you have questions about the purpose of independent and dependent claims.
Tip 9: Using a thesaurus and other patents to help you out: I think using a thesaurus is a great idea for an inventor because it makes you think about what the limitations to your invention really are. Let’s say that you think that your invention requires a rope. Think about whether it really requires a rope. Check a thesaurus and see if people could accomplish the same thing using one of the closely related words. Could they do your invention with a string? A thread? A cable? If the answer is yes, then think of a word that covers all of those things. Something like “a flexible elongated member.” That pretty much covers all of those things. If you think a rope is really the best thing for your invention, you might want to put it in a dependent claim, but avoid really specific terminology in your broad independent claim. Sometimes a thesaurus will help you pick out the exact right word. Maybe you wouldn’t have thought of “a flexible elongated member” on your own. So what I would suggest is doing a patent search and searching for words like “rope” and see how other people claimed it. Hopefully you’ll come across some good terminology that you can use, but you want to be careful because just because someone used some terminology in their patent, it doesn’t mean it was a good use of that terminology and it doesn’t mean that it will work for you. Still, it’s a good starting point. You don’t need to reinvent the wheel when it comes to patent language terminology.
Tip 10: Don’t focus too much at the time of filing on your claims. I’m hesitant to actually say this because it’s a double edged sword. I tell people that the claims are the most important part of your invention, but at the same time, they’re actually the least important part of the application at the time of filing. This is because claims can be amended, while there are a lot more rules and restrictions on amending other parts of your application, such as the drawings or description of your invention. You can always amend your claims, IF, and this is a big IF, you have support for those claims somewhere else in your application. So let’s go back to the bicycle, and at this time, no one had ever made a bicycle before, and only unicycles existed. In your application you described your new invention that has two wheels, pedals, a frame connecting the wheels and a handlebar to steer. In your claims, you just claimed that your invention had a wheel and pedals. The examiner would reject your claim because she would just find some example of a unicycle that had a wheel and pedals. That’s OK, because after your claim is rejected, you can go back and add into the claim that already listed a wheel and pedals, that it also has a second wheel, a frame connecting the wheels, and handlebars to steer. Then maybe the examiner would allow it. But you’re only allowed to do that if your application already described the invention has having two wheels, a frame and a handlebar. So what’s more important, in the beginning, at the time of filing the application, is that you’ve fully described your invention so if you have to make any changes to the claims, you can make them. Now you can’t just disregard the claims, because if you don’t think about the claims, what you’re probably not doing is thinking about what your invention really is. And if you’re not thinking about what your invention really is, then you’re probably not going to describe all the features that you need to, and then you’ll have problems amending the claims if you get a rejection. The point is, if you’re coming up on a deadline, it’s better to focus on fleshing out the description of all the embodiments of your invention, than spending your time trying to do claims. Also, if you have an attorney, let your attorney focus on the claims, while you as the inventor, focus on coming up with best description possible.
Like I said, there are so many things to think about when you draft claims that I can’t cover them here. It takes years of practice to really hone your claim drafting skills, and there’s an art as well as a science, because there’s no magic formula to the perfect claim or how to write them. In the next episode I’m going to start going over the details of some other required parts of the patent, and I’m going to start with patent drawings.
If you want help with drafting your patent application and claims 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