Patent Claim Writing: Insight Into The Drafting Process


Last week, I attended PLI’s Fundamentals of Patent Prosecution 2010 Program: A Boot Camp for Claim Drafting and Amendment Writing in New York City.  I was fortunate to hear an elite panel of experienced patent prosecutors  talk about critical patent application topics.

Amongst the group, was Robert Faber, partner at Ostrolenk Faber LLP and one of our Practice Center Contributors.  He spoke about claim drafting and gave some valuable tips as to how to write a well written claim.  Faber said, ” you want to protect the invention in a claim such that you cover the concept the inventor has in mind and no matter how the particular concept  is executed in years to come.”  Faber advises that you should always describe the concept as broad as possible.

Below is an article Faber passed along, “Patent Claim Writing“, that helps us understand the basics of claim drafting, using a simple example:

United States Patents serve the important national goal of encouraging developments in the useful arts and sciences by granting inventors and their assignees patents that afford a limited time monopoly in their inventions in exchange for their disclosing the invention and how to practice it to the public.  In the patent document, patent practitioners and patent owners= attorneys try to adequately disclose the invention and at least the best mode of practicing the invention sufficiently to enable persons skilled in the art to themselves practice the invention without undue experimentation. 35 U.S.C. ‘ 112, para. 1.  That is the minimal disclosure that must be provided.

The description of the invention in the patent specification and drawings does not define the scope of the patent monopoly.  That is defined by a patent claim or claims appended to the specification, which in words establishes the limits, metes and bounds of the patent monopoly.  35 U.S.C. ‘ 112, para. 2.  The claims restate the essential points of the invention, and are typically prepared according to a format and style dictated by rules and practices concretely embodied in a Manual of Patent Examining Procedure, which is a government publication that provides guidance to Examiners and establishes some uniformity in procedure.  These rules and practices are based on statutes, Rules of Practice and Court precedents which have interpreted patent claim language and therefore gradually dictated how a claim should be written and are based upon customs and practices among patent practitioners.  This paper will attempt to give you insight into the patent claim drafting process, using a simple example.

The scope of a patent claim is governed by several considerations.  The patent practitioner must learn the invention and a practical or preferred embodiment or way of practicing the invention, which is typically supplied by or elicited from the inventors.  Nearly every invention is an improvement upon pre-existing technology in the relevant art, not a wholly new product or process without any precedent.  Consequently, the patent practitioner preparing the patent application and particularly the patent claims must understand the context of the invention and particularly understand what improvement in the art is afforded by the invention.  The patent claims are directed toward that improvement.  One learns the nature of the improvement in the art from one or more of several possible sources, including: (1) the inventor=s description of the state of the current art and of the improvement in that art afforded by the invention; (2) the practitioner=s personal knowledge of the art; (3) others in the same business concern or the same industry who have knowledge as to the state of the art and the improvement; (4) the published Aprior art@, including previous United States and non-U.S. patents and other publications in the art, (5) actual products in use or on sale, and (6) whatever makes up pre-existing knowledge in the art at the time the invention was made.  A new device or process may operate better, more efficiently, etc., and it is only through the just discussed sources that one can perhaps determine not only why this occurs but what aspect of the disclosed invention causes the improvement.

One might be tempted to simply claim the improvement in terms of the result achieved, e.g., AI claim an automobile which includes an engine that accelerates rapidly and operates efficiently, burning fuel at the rate of one hundred miles per gallon.@  But patent practitioners have never been free to claim an invention merely by stating the goal, objective or result.  Rather, the practitioner claims the invention in terms of the elements of the invention, namely the cooperating elements of the operating product, the components of the article of manufacture, the constituents of the chemical or substance or the steps in the process.  It is the art of the patent claim drafter to recite a complete device, product, composition of matter or process which fully covers the invention as broadly as the disclosure of the invention in the specification permits and as the prior art permits, without unduly limiting the scope of the claims, either accidentally or through lack of skill or lack of understanding of the invention or the prior art.

The practitioner who prepares the patent application protects the inventor=s or assignee=s interest.  A very detailed patent claim, including all of the elements of the product, process, etc., that are described in the specification, would protect the invention described by the inventor and would be narrow enough to avoid the prior art.  However, such a claim would likely be useless practically, because a later developer of a product or process in the same art could too easily avoid the limited scope patent claim.  The purpose of the limited scope, limited duration monopoly awarded the inventor or his assignee is to give them the exclusive right to make, use and sell products, processes, etc., covered by the claimed invention.  35 U.S.C. ‘ 271.  A claim too detailed or narrow in scope would unduly restrict the monopoly and not afford the inventor or assignee the competitive advantage to which they would be entitled based on the quality of the inventive improvement

Further, the monopoly of the patent is useful because it empowers the inventor or assignee to enter the Courts of the United States and halt others from making, using or selling the invention, or collect tribute, e.g., royalties, for such protected activities.  One who makes, uses or sells the subject matter of the claim of the invention is an infringer whose infringement can be halted or, in the alternative, can be permitted or licensed by the patent owner, and for whose infringement the patent owner can obtain compensation in the Court.  Clearly, the broader scope that the patent claims have, the broader is the range of competitive products or processes which the inventor or his assignee are able to block or for which they are able to obtain damages or license fees.

Claim scope is governed by two requirements.  First, is the requirement of proper claim language, proper in form, so that the claim particularly points out and distinctly claims the invention, and the second, of course, is the state of the prior art, which limits the claim scope.  The claim writer must be aware of the formal requirements set forth not only in the Rules and in the above-mentioned Manual, but in precedents and customs of patent claim drafters and must also be aware of the state of the art.  The inventor and the patent claim writer can learn the state of the art from their own knowledge, from third parties, from issued patents and other publications, from products on sale or in use, and then after a patent application is filed, as a result of a search as to the state of the art conducted by an Examiner at the U.S. Patent and Trademark Office or at a Patent Office elsewhere with expertise in examining applications in the relevant field of technology.  A poorly drafted patent claim or one that is so broad as to encompass the prior art may be held invalid and unenforceable causing a claim to a valuable invention, which might have been protected against infringement through well drafted proper scope patent claims, to instead be either held invalid or not infringed by the competitive product or process, which would be found to be outside the scope of the patent claim.

Read Faber’s entire article here.

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