Claim Drafting In US Patents

Posted by Natalie Sulimani

January 11, 2010

by Ken Kozik, Registered Patent Attorney

A wealth of information has been written about how US patent practitioners could improve their presentation of patent claims before the United States Patent and Trademark Office (USPTO) and the US Federal Courts. However, each year we should take time to sit back for a moment and consider how claims should be drafted to produce high value patents.

For example, when drafting claims, consider your audience. First, you must draft claims that describe the invention to the client’s satisfaction. Second, these claims must be presented to a patent examiner in the USPTO and written in such a way as to be new, useful and non-obvious in view of the prior art. Third, the claims must be drafted in such a manner as to provide appropriate coverage of the invention in the eyes of a potential investor or licensee. Lastly, in the unlikely event the patent is the subject of litigation, the claims must be unambiguously written such that they literally read on an accused apparatus or process.

To satisfy the goals of a client and the US patent law requirements, one should consider the following tips, in no particular order:

1. Make sure there is support for the claims. Track the language used in the claim back to the specific description to ensure the same terminology is used.

2. Check whether the term used has an established meaning in the art and whether that meaning is appropriate in the particular circumstances in which it is to be used.

3. Avoid amendment during prosecution, if possible.

4. Prosecute the claims for literal, not equivalent, scope.

5. Know the Federal Court case law on claim construction. Look at the decision as a whole, not just a stray phrase, and read all the cases.

6. Where there is more than one possible meaning for a term, and in the absence of other factors, the customary meaning in the art is usually more relevant than the ordinary meaning.

7. In some jurisdictions, dictionaries relevant to the art are a prime source for ascertaining the appropriate meaning of the term.

8. When listing and discussing prior art references, check that the art uses a term in the same manner as in the specification and describe the art using terminology consistent with that used to describe the embodiments..

9. Describe multiple embodiments wherever possible.

10. Avoid creating prosecution history estoppel except where you wish to establish a broader interpretation than might be the customary interpretation.

The above list is not exhaustive or exclusive. Claims are the parts of a patent which define the boundaries of patent protection. Patent claims are the legal basis for your patent protection. They form a protective boundary line around your patent that lets others know when they are infringing on your rights. The limits of this line are defined by the words and phrasing of your claims. When writing this section you should consider the scope, characteristics, and structure of the claims.