Tips for writing patent claims
Think – why you want to file patent? Once you have figured this out, the next most important aspect is drafting claims, as it determines the “scope of the patent protection“. The goal of drafting claims is to get the acceptance / approval with minimal prosecution history. One other item that goes hand in hand with drafting claims is “Drafting patent specification“.
Is the patent for Defensive purpose or Offensive needs? Determine this. Factor in independent claims and dependent claims. The dependent claims become obvious when preparing “patent specification“. So, you need to iterate back to claims section to define the dependent claims.
Claims also form the basis for drafting the Summary of Invention – It also outlines the basis for “Detailed Description” of the patent. In some instances Abstract can be used to draft the claims.
Outline of the steps for drafting patent claims:
Following steps outline the steps for drafting patent claims:
- Patent Attorney / Agent interviews the inventor(s)
- Next, read the materials provided by inventor
- Determine the scope of IP protection
- Draft the patent claims
- Define Claim Terms
- Get started with independent claims
- Draft the patent specification
- Dependent claims rise out as patent specifications are drafted
- Add the dependent claims to Claims section
Describe the invention clearly, accurately and completely. Make sure to describe each element of the claim. If claims form the head of patent application then detailed description of patent application forms the heart of the application.
Broad Claims versus Narrow Claims – Where’s the balance? Is there one? – A claim can be either broad claim or narrow claim but not both. Broad claims describes general invention, its variations, how to make use of invention and interpreted with respect to the definitions in patent specification. But it doesn’t provide much leeway to defend infringement cases successfully. On the flip side, Patent examiners are generally reluctant to allow broad claims resulting in potentially expensive patent procurement process. There are instances where broad claims with examples have Not been invalidated.
On the other hand, a Narrow claim is focused, clear leaving less room for arguing alternatives.
So, define your claim strategy. Define the claim space – from application and functionality perspectives and broad to narrow claims.
Takeaway – Before you begin drafting patent claims determine if it is “Defensive” or “Offensive” patent. Then draft the patent claims. Make sure the scope of the invention is very clear. Define each element of the claim. It is equally important to draft the patent specification aligned with the claims. Add the dependent claims arising out of drafting patent specification. The bottom line – “Draft the broadest application / functionality claims that you can“.
PatFolio is global patent portfolio management system. It provisions invention disclosure and drafting of patent application for filing. For details on PatFolio, refer to this link.
Kameshwar Eranki is CEO of VajraSoft Inc.
About VajraSoft Inc. – VajraSoft Inc. is Intellectual Property (IP) Management Software company, helping customers manage innovations and monetize IP’s. Our award winning products empower businesses and IP law firms to manage invention disclosures, global patent portfolio and maintaining them. PatFolio helps customers with the automation of Invention Disclosures Management, Drafting Patent Applications, generating Abstract, Claims, Specifications, Drawings – pdf documents for submission, filing, managing patent prosecution life cycle and patent maintenance.
VajraSoft Inc. is Master Class Intellectual Property (IP) Solutions provider, and its products won several Cloud awards including – UP Start Awards for Best Industry Application for 2012. Silicon India magazine listed VajraSoft Inc. as Top 100 Technology companies in US for 2013. VajraSoft Inc. is also Finalist of StartmeupHK Venture Program, conducted by the Govt. of Hong Kong and UP Start Cloud Award for Best BI / Analytics Application for 2013.
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