Advanced Patent Claim Drafting

Advanced Claim Drafting : 

John CalvertAdministrator, Inventors Assistance Program- USPTO Gene Quinn Patent Attorney – IPWatchdog, Inc. 15th Annual Independent Inventors Conference Advanced Claim Drafting

Before Drafting Claims : 

2 Before Drafting Claims Prior to writing claim answer these questions: What is the invention? What are the pieces and parts that make up the invention? How do the pieces and parts relate to one another? Do you have more than one invention? Tangible: Apparatus, machine, composition Method: Making or Using Are there multiple versions of each invention?

What is Prior Art? : 

3 What is Prior Art? Always start with your own patent search first. Don’t forget to do a product search on the Internet. Identify the closest prior art. Identify the difference between your invention and the prior art. Hopefully the differences will be advantages!!! Ask: Will consumers pay a premium for my invention? Create a chart that compares your invention vs. the most closely related prior art.

Thinking Strategically : 

4 Thinking Strategically What is it that you are hoping to accomplish? Obtain the broadest, valid claim possible Obtain claims with a variety of claim scope How much can you afford to spend on claims? Independent in excess of 3 = $110 per (small entity) Total claims in excess of 20 = $26 per (small entity) Not just at time of filing, but during prosecution Are at least some claims you filed likely to be patentable without amendment? 35 USC § 154(d) provisional rights

Generic Claims : 

5 Generic Claims A generic claim is one that is written to cover all possible variations of the invention. Sometimes you will hear the term “generic claim” used interchangeably with “broad claim” or called a “broad generic claim.” A roller skate having at least three wheels comprising:

Understanding Claim Hierarchy : 

6 Understanding Claim Hierarchy

Biggest Mistake Inventors Make : 

7 Biggest Mistake Inventors Make An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and (b) at least one protrusion attached at one end thereof said main section… The animal toy of claim 1 wherein said main section is formed of a rubber. The animal toy of claim 1 wherein said main section is formed of a plastic. The animal toy of claim 1 wherein said main section includes a wood. The animal toy of claim 1 wherein said main section includes cellulose. The animal toy of claim 1 wherein said main section includes a flavoring.

Biggest Mistake Inventors Make : 

8 Biggest Mistake Inventors Make 7. The animal toy of claim 1 wherein said main section includes a scent added thereto. The animal toy of claim 1 wherein said main section is rigid. The animal toy of claim 1 wherein said main section is flexible. The animal toy of claim 1 wherein said main section is chewable. The animal toy of claim 1 wherein said main section includes a material that is lighter than water. The animal toy of claim 1 wherein said animal toy includes a fluorescent coating. The animal toy of claim 1 wherein said animal toy includes a camouflage coating. The animal toy of claim 1 wherein said animal toyis formed of wood particles

Biggest Mistake Inventors Make : 

9 Biggest Mistake Inventors Make Dependent claims all referring back to an independent claim does not provide variety of claims scope. If the broadest independent claim is not allowable what is the likelihood of that claim with 1 addition being allowable? Always anticipate the patent examiner citing more prior art than you found in your patent search! Applications unpublished for 18 months Didn’t find the prior art cited or didn’t anticipate rejection You want some claims to be allowable when filed so provisional rights attach at publication. You don’t get key information in 1st Office Action.

Claiming to Get Info from 1st Office Action : 

10 Claiming to Get Info from 1st Office Action You want to draft every independent claim so that: The most generic version of your invention is defined All of the pieces and parts are connected There is at least some difference when compared with the prior art. (more later) You then sequentially add elements or characterizations (i.e., additional limitations) one by one in dependent claims. Have at least one series of claims where you chain together dependent claims to dependent on the immediate previous claim.

Claiming to Get Info from 1st Office Action : 

11 Claiming to Get Info from 1st Office Action A widget comprising a piece and a part. The widget of claim 1 further comprising a thing. The widget of claim 2 further comprising a do-hickey. The widget of claim 3 wherein the thing is flat. The widget of claim 4 wherein the do-hickey spins. The widget of claim 5 further comprising a twist. The widget of claim 6 wherein the twist strobes The widget of claim 7 wherein the piece tapers at the edge. The widget of claim 8 wherein the part curves. The widget of claim 9 wherein everything is made of transparent aluminum.

Claiming to Get Info from 1st Office Action : 

12 Claiming to Get Info from 1st Office Action Claim 10 now covers a widget comprising a piece that tapers at the edge, a part that curves, a thing that is flat, a do-hickey that spins, a twist that strobes with all of the elements being made out of transparent aluminum. By chaining together dependent claims you can find out what the examiner is willing to allow in terms of substance. You can almost always add enough elements and characterizations thereof to obtain a patentable claim. Every addition to a claim is a limitation, making it easier to get around your patent claims. QUESTION: Are narrow claims worthwhile?

The Lesson of the Paperclip : 

13 The Lesson of the Paperclip Can you draft a single claim to cover all the different embodiments of a generic paperclip? There are many possible embodiments that need to be distinctly claimed, each with its own independent claim and dependent series.

Obviousness: The REAL Concern : 

14 Obviousness: The REAL Concern In order for a claim to be allowed (and valid) it must cover an invention that is novel (as defined by 35 USC 102) and nonobvious (as defined by 35 USC 103). Novelty is about EXACT identity. An issue but… Obviousness is now about “common sense” and if it is “obvious to try” the claim can be considered to cover an obvious variation and NOT patentable. A claim MUST include the unique contribution in comparison to the prior art.

Iteratively Drafting & De-bugging Claims : 

15 Iteratively Drafting & De-bugging Claims

Iteratively Drafting & De-bugging Claims : 

16 Iteratively Drafting & De-bugging Claims

Iteratively Drafting & De-bugging Claims : 

17 Iteratively Drafting & De-bugging Claims

Iteratively Drafting & De-bugging Claims : 

18 Iteratively Drafting & De-bugging Claims

The End & Questions? : 

19 The End & Questions? John CalvertAdministrator, Inventors Assistance Program- USPTO Gene Quinn Patent Attorney – IPWatchdog, Inc.