1. AIPLA Practical Patent Prosecution Training for New Lawyers
Electrical, Computer & Software Claim Drafting
Rick A. Toering | |
Wednesday, August 25, | Alexandria, VA

2. Primary Consideration
Draft Claims that CAN BE INFRINGED
Who Infringes Claim?
Single Infringer vs. Mixed/Joint Infringement
Direct vs. Indirect Infringement
Components vs. End Product
How is Claim Infringed?
Make, Use, Sale, Offer, Import

3. Other Considerations Draft Claims that Cover the Invention
Draft Claims that Avoid the Prior Art
Draft Claims with Commercial Significance

4. Drafting Considerations
Draft Claims that Cover the Invention
Identify the Key Aspects of the Invention
Identify Preferred Implementations
Identify Alternate Implementations
Identify Commercial Implementations

5. Drafting Considerations
Draft Claims that Avoid the Prior Art
What problem does the invention overcome?
Which aspect(s) of the invention overcome that problem?
Which aspect(s) of the invention are not found in the prior art?

6. Drafting Considerations
Draft Claims with Commercial Significance
What are the commercial applications?
What are the commercial environments?
What are the commercial components?
Who are the likely competitors?
Ultimately, …
WHERE ARE THE $$$?

7. Claim Strategy Draft Claims with Varying Scope
Broad Claims with Key Features Not in Prior Art
Medium Claims Directed Toward Commercial Environments
Focused Claims Directed Toward Actual Commercial Products

8. Rick A. Toering Member/IP|
Tysons Corner, Virginia