1. Claim Drafting

2. Claim Drafting Approach Types of Claims Independent Claims
Helpful Hints

3. Claim Drafting Approach Iterative Process – more art than science
Start with a block and chip away at everything that doesn’t look like the claim
Ignore terminology / antecedents / single sentence structure
Summary of invention?
Abstract?
Draw a picture of claim
Try to break it
Broaden scope of terms
Remove non-essential elements
Claim chart
Revise, revise, revise

4. Claim Drafting Types of Claims System Method Apparatus
Product by Process
Swiss (use)
Kit of Parts
Beauregard (computer readable medium)
Signal
Jepson (improvement)
EP (two-part claim)
Means plus function
Omnibus
Start with the claim type that seems most natural for the subject at hand!
Flush out the rest from there

5. Preparing a Patent Application
Some types of claims:
System
A system for the surgical removal of biological material comprising, a laser energy source operating with an output wavelength in the range of micrometers, an optical fiber, means for directing the output of said laser source to the proximal end of said optical fiber, and means attached to the distal end of the optical fiber for directing laser energy propagating down said fiber to a surgical site.

6. Preparing a Patent Application
Some types of claims:
Method
A method of making a hammer comprising the steps of: forming a handle; forming a gripping region near a first end of the handle; forming a head receiver at a second end of the handle, opposite the first end; and securing a head to the head receiver.
Apparatus
A hammer comprising: a handle; a head secured to the handle; the head having a striking face and an opposed fastener extractor.

7. Preparing a Patent Application
Some types of claims:
Product by Process
A product for providing a physical medium for plant growth, produced by the steps comprising: ... OR
A product for...produced by the method of claim X. (i.e. where claim X is a method claim).

8. Preparing a Patent Application
Some types of claims:
Swiss Type (“use” claim)
Use of a bisphosphonate in the manufacture of a medicament for inhibiting bone resorption in a mammal wherein said medicament is adapted for oral administration as a unit dosage form according to a continuous schedule having a periodicity from about once every 3 days to about once every 16 days.

9. Preparing a Patent Application
Some types of claims:
Kit of Parts
A kit for the construction of a rebuildable hoist system for lifting and lowering an object, said kit comprising a support component, and a lifting pole component, said support component comprising two masts, two booms, respective releasable attachment means for releasably attaching a respective boom to a respective mast so as to extend forwardly therefrom, ...

10. Preparing a Patent Application
Some types of claims:
Beauregard
A [non-transitory] computer readable memory having recorded thereon statements and instructions for execution by a computer to carry out the method of claim X.
Signal
A multichannel audio signal encoded with M discrete audio channels that carry N mixed audio signals and a discrete extension surround-sound channel that carries one of the audio signals.
But cf. CIPO’s 14 August 2007 Practice Notice “Office Practice Regarding Signals”

11. Preparing a Patent Application
Some types of claims:
Jepson
A radiation image processing apparatus [describe prior art apparatus], wherein the improvement comprises ... EP
A radiation image processing apparatus [describe prior art apparatus], characterized in that ...

12. Preparing a Patent Application
Some types of claims:
Means Plus Function
In a television color generator, means for phase shifting a sinusoidal sub-carrier input in accordance with a signal of varying amplitude, comprising: means for converting said sinusoidal input to a corresponding rectangular wave, means for providing said signal of varying amplitude, which amplitude varies in accordance with required phase shift, means for varying the pulse width of said rectangular wave in accordance with said signal amplitude, ...

13. Preparing a Patent Application
Some types of claims:
Omnibus
Apparatus for forming circular pizza crusts constructed and arranged substantially as herein specifically described with reference to and as shown in the accompanying drawings.

14. Claim Drafting Independent Claim
What is the main point of invention (what do you want to protect)?
Look at purpose, market value, commercial edge of invention
Compare to prior art: what makes it different, better, valuable
ONE point of invention per independent claim!
Structure vs. Function
What structural elements do you NEED to work the point of invention
How are they connected / how do they cooperate (function vs. structure)
Do your structural/functional terms cover structural variants
Don’t claim function at the point of invention
Learn when to stop / how to dial back
Claim perspective (who’s the intended infringer?)
Critical for method claims, is the same party doing each step?
Also important for system claims (i.e. in ICT)

15. Claim Drafting Independent Claim (cont’d) Draw picture / box diagram
Claim chart (if that works for you)
Be critical / try to work around your own claim
Be critical / try to invalidate your own claim
REPEAT, REPEAT, REPEAT
Update your spec as you go for term consistency/support
Remove inessential elements (can it be broader?)
Add structure/function/connections (does it actually work?)
Review antecedents
Final prior art test
Move on to other independent claims and types

16. Claim Drafting Dependent Claims
Each dependent claim should add value (not just random features)
Valuable back up position for prosecution
Claim differentiation
Relevant to preferred/commercial embodiment
Relevant to likely competitor embodiment / preferred variant
Appropriate dependent claims may differ for different claim types
Dependent method claims not always appropriate as system claims
Burrow down as far as appropriate, then move on to next element
Revise

17. Claim Drafting Helpful Hints It’s a process, not an event
Put away for a while and always go back to look at it
A quickly prepared abstract at the end may be closer to the ideal claim than what you spent an hour crafting at the start
Sketch it out to “see” the claim
Think functionally
What is each component doing?
…but avoid function at point of invention
Avoid whereby clauses (a good whereby clause does not further limit the claim, so why bother)
Avoid claiming the result, but rather how to achieve this result
Avoid picture claims (do you recite each and every structural element in your claim?)

18. Claim Drafting Helpful Hints (cont’d)
Means plus function claims discouraged in the US
Connected combination over random aggregation (part list)
Positively recite each new element
Write plainly
Use simple terminology consistently – no points for style or for the overly creative
Ensure terminology is supported and consistent in disclosure
Be definite, avoid ambiguity
Claiming in the alternative rarely works (try Markush instead)
“an item selected from a group consisting of x, y and z”
Avoid negative limitations
Collect helpful terms to positively phrase negative concepts
Aperture, cavity, “devoid of”, “absent of”
Singular includes plural (“at least one” and “one or more” can get cumbersome and often unnecessary

19. Claim Drafting Helpful Hints (cont’d) Beware of excess claims fees:
None in CA
US: $420/210 per Ind. claim over 3, $80/40 per claim over 20
EP: 200 Euros per claim in excess of 15
500 Euros per claim in excess of 50 claims (on top of above)
Do you really need this claim, does it add value? (see above)
Multiply dependent claims:
Encouraged in CA, EP
Avoid in US – compounds excess claims fees

20. Claim Drafting Exercises (Staple Removers)