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General
– How is infringement proven? You should keep in mind how easy it will be to provide evidence of patent infringement. Can you later easily find evidence for a complex mixture of polymers in the final product regarding their identity and their weight percentages?
– How can the claims be circumvented and avoided by competitors? When drafting patent claims, always keep the infringer in mind. What would you tell an infringer about how to avoid this patent claim?
Now the basic steps for drafting patent claims:
1) What is the invention, what are the parts and components of the invention. Are there multiple versions of the invention? First you need to understand the invention in detail and understand how a particular example of the invention works from start to finish.
2) Search for prior art: search carefully for the prior art and identify as many differences as possible with the invention per relevant document.
3) Two-part claims: Preamble, Body: The most general version of your invention is defined. There is at least some difference compared to the state of the art. Try to find one feature or the broadest possible combination of features that distinguishes the claimed subject matter from the prior art.
4) Are all functions connected in some way? If the features are not physically or logically connected, the examiner may object to the claims for expressing several separate inventions and you may have to split the patent application.
5) Different types of claims? Have you used different claim types?
12 common mistakes:
– More than one sentence: write only one sentence per claim. Otherwise it is considered unclear and the features of the second sentence should not be seen as limiting its scope.
– Word “and”: When claiming a list of things that are part of an invention, use the word “and” only before the last part of a list.
– Transitional sentences: characterized by the fact that, consisting of, consisting of, composed of: “characterized in that” separates the preamble of a claim from the body and is the most common and general sentence for doing so. “Consisting of” is followed by an open list that may also include additional elements not stated in the claim. “consisting of” is followed by a closed list. There are no other elements present in the invention, which usually results in a very limited scope.
– Inconsistent terminology: always use the same word for the same concept in your patent application. Example: In your application, do not use 'car' and 'car' to mean exactly the same concept.
– Claiming a result: Try to avoid claiming a result rather than the concepts achieving the result. Result-oriented language is usually regarded as unclear.
– Too few details: do not omit anything from a claim that is necessary to carry out the invention and necessary to distinguish the claim from the prior art.
– Too many details: try to omit any feature that is not necessary to carry out the invention and distinguish the claimed invention from the prior art. This makes your claim too limited.
– Dependent claims that broaden or contradict the independent claims:
– No trademarks in claims: Avoid trademarks in claims
– Avoid “means plus function”
– Antecendent basis: When you first introduce a new feature into the set of claims, you use the indefinite article. From then on, use the definite article “the” to refer to this specific feature mentioned earlier in the conclusions.
Now my personal strategy to get a really strong set of claims and patent applications:
1) Identify the most relevant, for example five prior art documents.
2) Identify as many technical differences as possible for each of these documents, for example at least 20 per document.
3) Use the common distinguishing feature that is least easily circumvented by infringers, such as the body in the first claim. Include other such features in the dependent claims. Include all other such features in the description as preferred embodiments.
Here are some valuable resources:
http://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf
http://www.ipwatchdog.com/2013/05/25/patent-claim-drafting-101-the-basics/id=40886/
http://www.ipwatchdog.com/2013/10/11/drafting-patent-applications-writing-method-claims-2/id=45670/
Legal and Disclaimer
You have watched a video of Rolf Claessen. The views expressed by participants in this program are their own and do not represent or endorse the views of their respective law firms. None of the content should be considered legal advice. This video should not be construed as legal advice or legal advice regarding specific facts or circumstances. The content of this video is for general information purposes only and you are urged to consult your own patent attorney for any specific legal questions. As always, consult a patent attorney.
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