Claim Drafting Part 1 - Identifying Your Invention. Episode 9
- Adam Diament
- Mar 15
- 4 min read
The Importance of Claims in a Patent
This episode is the first in a series on claim drafting. If you remember from previous episodes, claims are the most important part of your patent because they define the exact boundaries of your invention. They tell people what they are prohibited from making without infringing on your patent.
There is no single correct way to write claims, but there are plenty of bad ways. At the very least, you want to avoid drafting your claims so poorly that they are either:
Never issued or
Worthless, even if granted.
The first step in claim drafting is actually figuring out what your invention is. This sounds simple, but many inventors struggle because they look at their product and assume, “This is my invention”, without truly analyzing what makes it unique.
Example: Lutz 15-in-1 Ratchet Screwdriver
To illustrate this process, I’ll use the Lutz 15-in-1 Ratchet Screwdriver as an example.
I recently purchased this screwdriver and noticed “Patent Number 6327942” printed on the handle.
To see what was actually patented, go to Amazon and type in Lutz 15-in-1 to find the product.
Then, go to Google Patent Search and type in the patent number: 6327942.
Identifying the Features
One common problem with screwdrivers is that different sizes and shapes of bits are needed for different screws. Instead of owning 15 separate screwdrivers, multi-bit screwdrivers store multiple bits inside the handle.
Observing the Features
When I examine the screwdriver, I notice:
A long metal cylinder that holds a bit.
A wider section with a ratcheting selector to rotate clockwise, counterclockwise, or not at all.
Slots around the handle that hold bits.
A dial at the end of the screwdriver that rotates to cover or expose slots, allowing bits to slide in and out.
Now that we see the physical product, we must ask: What is the actual invention?
Prune and Distill Method for Identifying the Invention
If you say, “The entire screwdriver is my invention,” you might be too narrow. Here’s why:
One feature is the ratcheting selector.
But what if someone copies everything except the ratcheting selector?
You’d likely be frustrated that someone copied your idea but removed one small feature to avoid infringement.
Step 1: Prune the Unnecessary Features
To define the core invention, we must prune away unnecessary parts:
Prune away the ratcheting selector – It’s not the inventive part.
Possibly prune away the cylindrical bit holder – It’s necessary for function but not the invention itself.
Keep the handle, since it stores the bits.
Keep the slots for holding the bits.
Keep the rotating dial with the hole that allows the user to select a bit.
At this point, we have the core invention: A screwdriver with bit channels and a rotating gate to control bit removal.
Step 2: Distill to the Essence
Once we’ve pruned the unnecessary parts, we need to describe the remaining features in their broadest essence.
Example: Keurig Coffee Makers
Consider Keurig coffee makers:
They use single-serve cups for brewing coffee.
However, some competing machines use packets instead of cups.
If Keurig’s patent described only a cup, competitors could avoid infringement by using packets.
Instead, Keurig likely described their invention as a “container for coffee grounds”, which covers cups, packets, or other shapes.
Applying to Our Screwdriver Example
Instead of “handle”, the inventor uses “a body portion having a first and second end”.
Instead of “slots”, they use “bit channels”, a broader term.
Instead of “six slots”, they use “a plurality of bit channels” to cover any number of slots.
Instead of “a dial with a hole”, they use “a bit gate”, which conveys its function rather than its shape.
Alternative Method: Problem-Solution Approach
Another method for identifying the invention is the problem-solution approach.
Example of the Problem-Solution Method
Problem: How do you keep multiple screwdriver bits together while allowing easy access?
Solution: Store bits in channels on the handle and use a rotating gate to control bit removal.
By focusing on the problem and solution, you avoid unnecessary physical limitations.
Example: Microwave Rotating Plates
When microwaves were first invented, they didn’t have rotating plates.
This caused uneven heating because some parts of the food received more microwaves than others.
Someone invented a rotating plate to move food and distribute heat evenly.
Using the prune and distill method, you might describe the invention as:
“A plate inside a microwave that rotates.”
However, using the problem-solution method, the solution is:
“Moving food relative to the microwave source to heat it evenly.”
This approach suggests other possible solutions, such as:
Moving the microwave source, rather than the food.
Using a conveyor belt instead of a rotating plate.
By focusing on the problem and solution, you may realize your invention is broader than the exact physical structure you created.
Why Claims Should Be Written First
Writing claims first forces you to analyze what your invention actually is.
If you write your detailed description first, you may later realize your claims need to be broader or different, requiring extensive rewriting.
Claims should guide your description, not the other way around.
Summary
Identifying your invention is the first step in claim drafting.
The prune and distill method helps remove unnecessary features and describe what remains in its broadest form.
The problem-solution method focuses on why your invention exists, rather than its physical embodiment.
Writing claims first ensures that your description aligns with your claims, avoiding unnecessary revisions.
This is just the first step in claim drafting. I’ll cover many more aspects in future episodes because strong claims are crucial for obtaining a valuable, enforceable patent.
If you need help with drafting your patent application and claims, I offer these services through Diament Patent Law, where you can contact me at patentingforinventors.com.
I’m Adam Diament—until next time, keep on inventing!
