Patent Claims Drafting: Objectives and the Process


Claims are the legally-operative part of a patent application around which everything revolves. The claims of course define the invention for which the exclusionary right is sought. The legal standards must be met by the claimed subject matter, not merely what is disclosed in the specification. Patent Claims Drafting

In a patent drafting process, one of the major challenges faced by the patent attorney is to develop drafting strategy to claim different aspects of the invention. For  The key to effective claim drafting and prosecution is to fully understand both the fundamental idea of the invention and the business framework in which the invention exists.

For US patents, the starting point for claim drafting is to understand the legal sections, 35 U.S.C. §§ 101, 102, 103, and 112.  35 U.S.C. §§ 102 and 103 pertains to novelty and non-obviousness. To the extent 35 U.S.C. §§ 102 and 103 define patentability.

Similarly, drafting of patent application in India requires compliance with provisions of Indian Patents Act, 1970. Specifically, Section 10 of Indian patent law states “Contents of specifications”, which requires every patent specification, whether provisional of complete, to describe the invention.

The main objective of drafting patent claims is to bring out the novelty and non-obviousness of the invention. The claims shall be drafted such that that the elements as recited in the claims relate to patent eligible subject matter for all embodiments of the invention. If there is a close prior-art such that one or more elements of the claim are known, patent claims should unambiguously highlight the difference and/or improvements of the present invention. Further, patent claims should in some way express the utility and industrial application of the invention for a business sector.

While drafting a patent application, it should be ensured that the patent claims shall relate to a single inventive idea, or to a group of inventive ideas that are linked so as to form a single inventive concept. This shall be made clear in the claims and specification of the patent document.

While preparing a patent document, most attorneys prefer to first prepare the claims for the invention. While it is generally preferable to draft the claims first, some situations may not provide the patent agent with this luxury. Some patent attorney may sketch out the claims in the disclosure meeting with the inventor itself. This will often provide confirmation that he/she has understood the invention. Generally, several draft patent claims are prepared while writing a patent application. Patent Claims Drafting

For starters, one may consider preparing a “picture” claim for an invention. A picture claim is a claim that in its simplest form provides a word picture of the invention. Picture claims may be helpful to the drafter of a patent application but they rarely provide the broadest claims for an invention. Usually, such claims are not art of the final patent application, although such claims can be useful in helping to understand the invention and may also be helpful in determining all the points of novelty with the inventor.  Patent Claims Drafting

We will continue to discuss more advanced patent claims drafting techniques over the course of next few articles.

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