Fundamentals of Patent Prosecution Highlights: Claim Drafting & Preparation of Patent Application


Another great presentation I sat in on today at Fundamentals of Patent Prosecution 2011 was an Introduction to Patent Drafting. The speaker was Willian Frommer of Frommer Lawrence & Haug .  Here are the highlights from the discussion:

 Frommer suggested that whenever possible, the attorney should interview the inventor to obtain a detailed understanding of the invention and that an attorney’s role is to learn of a specific embodiment of the invention, but also to predict possible alternative embodiments and implementations that may be brought to market. He offered two practice tips: 1) Courts will sometimes limit a claim to a preferred embodiment or even invalidate claims that are broader than the disclosed embodiments.  The more embodiments, the better.  Try to anticipate competing products that may affect your client’s market and 2) The inventor is often the best source for alternative embodiments.

Frommer then discussed how to prepare a patent application.  He said that although the Manual of Patent Examining Procedure states that drawings are only technically required when they are necessary to understand the claimed invention; it is best to include drawings whenever possible.   He offered some practice tips:

  1. Sketch and label the drawings first, then use the labeled drawings as a guide to drafting the claims
  2.  Make the first figure a drawing of the client’s commercial product
  3. Label all portions and elements of every drawing.  When the specification is drafted to describe what is illustrated, every label should be described.  This way the specification will support future claims that may be added
  4. Use the label vocabulary in the claims throughout the specification
  5. The claims are the portion of the patent that protects the invention.  Therefore, the claims are the most important portion of the patent
  6. A claim is only infringed if the accused device contains every limitation of the asserted claim.  Be sure that the broadest claim is not so narrow that infringement is easily avoid
  7. The claimed invention must have some actual function.  Claiming a structure with no actual function will result in an invalid claim
  8.  If the invention is a software or a business method, the claim should recite steps, such as in a process; but make sure the claimed sequence of steps results in something concrete or tangible.
  9. When drafting claims, consider the entities that may infringe the patent.  The best patents include claims that cover the novel apparatus or composition of matter, as well as methods of using and making that apparatus or composition of matter.
  10. Means-plus-function language can be used to provide a literal scope of patent protection for subject matter having many interchangeable equivalents
  11. Describe embodiments commensurate in scope with each claim
  12. Just prior to filing the application, contact the inventor and ensure that his or her best mode is disclosed in the application. 
  13. Review the drawings and the specification and make sure that all elements identified in the figures are described in the specification
  14. When drafting he background specification, do not cite other patents by number.  It is sufficient to describe those patents in words.
  15. Make sure all claim terms are defined in the specification.  This prevents your opponent from redefining the words during litigation.

 Frommer concluded by saying that once the patentable features are identified, the ultimate goal is a series of a valid claims, varying in scope, and capturing as many conceivable infringers and competing products as can be anticipated and remember to choose your language carefully!

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