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 with ten tips. I covered some of the big-picture aspects of claim drafting in Episodes 9–12, but in this episode, I want to briefly cover some other things to consider when drafting claims.

If this is the first episode you’re listening to, I suggest starting at least with Episode 9, where I first introduce claims, or even going back to Episode 1 to start from the very beginning of intellectual property.

These tips apply to utility patents, not design patents, which I’ll cover in a later episode. They are also mostly helpful for inventions that are physical in nature, though they can also apply to method claims.

Tip 1: Keep Your Preamble Short and Broad

The preamble is the introduction of your claim. If your invention is a megaphone, just start with “A megaphone.” Don’t go into unnecessary details. However, you can include a very brief purpose, such as “A megaphone used to increase the volume of a person’s voice.” I covered this in more detail in Episode 10, so if you want to learn more about the preamble, listen to that episode.

Tip 2: Use "Comprising" as the Last Word of Your Preamble

Unless you really know what you’re doing, do not use the word “consisting of.” This is very important.

For example, if your claim starts with “A bicycle comprising two wheels and a handlebar,” this means your bicycle has at least two wheels and a handlebar, which is likely your intent.

If your claim states “A bicycle consisting of two wheels and a handlebar,” this means your bicycle has only two wheels and a handlebar—excluding a seat, a frame, or any other component.

This distinction is crucial. If someone makes a bicycle with two wheels, a handlebar, and a seat, they wouldn’t be infringing your claim because you used "consisting of" instead of "comprising." Use "comprising" unless you have a specific reason not to. The exception is chemistry patents, where "consisting of" is more common, but even there, use caution.

Tip 3: Proper Antecedent Basis

In patent language, antecedent basis refers to using "a" and "the" correctly.

• The first time you introduce an element in a claim, use "a":

  • ✅ “A wheel” or “A handlebar”

• After that, refer to it with "the":

  • ✅ “The wheel” or “The handlebar”

Alternatively, you can use "said" (e.g., "said wheel"), but this is becoming less common as it sounds overly formal. The only time you don’t have to use "a" first is when the element inherently exists, such as "the center of a circle."

Even though you can sometimes start with "the," it’s safest to always introduce an element with "a" to avoid unnecessary rejections.

Tip 4: Using "Wherein" Clauses

A wherein clause narrows the claim. Instead of writing:

• ❌ "A rubber wheel having metal spikes."

• ✅ You can say: “A wheel, wherein the wheel is made of rubber and has at least one metal spike.”

This strategy allows for easier amendments if needed.

Tip 5: Using "Whereby" Clauses

People often confuse "wherein" and "whereby" clauses, but they serve different purposes.

• A wherein clause limits the claim.

  • ✅ "A wheel, wherein the wheel is made of rubber."

  • If someone uses a wooden wheel, they avoid infringement.

• A whereby clause usually does not limit the claim but explains its function.

  • ✅ "A wheel, whereby the wheel allows the bicycle to roll downhill."

Some attorneys avoid "whereby" clauses altogether because anything stated in a claim can be used against you. If you use them, keep them broad and don’t use them to describe structural limitations.

Tip 6: Ensure Your Limitations Are in the Description

Every limitation in your claims must also be discussed in the description or drawings. If you only mention a feature in the claims and not elsewhere, you risk rejection for failing the written description and enablement requirements.

Tip 7: Connect the Pieces

If your invention consists of multiple components, explain how they interact.

Instead of just listing:

• ❌ "Two wheels, a frame, a handlebar, and pedals."

• ✅ Say how they connect: "The handlebar is connected to at least one of the wheels."

This prevents rejections based on an examiner finding unrelated parts in a catalog.

Tip 8: Start Broad, Then Narrow Down

Write your first claim as broadly as possible.

• If your invention could work with just A, B, and C, start with that.

• If rejected, you can add parts D and E later.

• However, if you start with A, B, C, D, and E, it’s harder to later remove D and E.

If unsure, put extra features in dependent claims as backups.

Tip 9: Use a Thesaurus and Other Patents

A thesaurus helps expand your claim language. If your invention requires a rope, ask yourself:

• Could it also work with a string, thread, or cable?

• If yes, consider a broader term like "a flexible elongated member."

Reading other patents can also provide useful terminology. However, don’t assume another patent’s wording is alwaysgood—analyze carefully.

Tip 10: Focus on Your Description at Filing

Claims can be amended, but the description and drawings are much harder to change after filing.

If you’re close to a filing deadline, prioritize:

• ✅ A detailed, well-explained description of all embodiments.

• ✅ Let your attorney focus on the claims.

If your claims need changes, you can adjust them later, but only if the description supports those changes.

Final Thoughts

Claim drafting takes years of practice. There is both an art and a science to it—there’s no magic formula.

In the next episode, I’ll start covering other required parts of a patent, beginning with patent drawings.

If you need help drafting your patent application and claims, I offer services through my practice at Diament Patent Law.

I’m Adam Diament, and until next time, keep on inventing!