Basics of Drafting a Claim: Claims aren’t about disclosure as much as defining the property right inventor will get. Patent application as whole is about disclosure. Ask if you are covering too much or too little.
1. Lots of discretion
a. Can coin new terms
b. Constrained by § 112. Must be 1 sentence.
c. PTO “manual of patent examination procedure” gives details of little nuances.
d. In general, there are conventions but not firm rules on language of patent.
2. Elements of a claim
a. Preamble: “A writing tool”, “A composition of matter”, “A method of…” Provides a general introduction. Is not limiting on the rights of the inventory unless it breathes “life and meaning” into your claim.
(A) Not limiting: “A diagnostic medical imaging system”
(B) Possibly limiting: “A diagnostic medical imaging ultrasound system capable of being housed on a portable support
b. Transition: 3 common ones
(A) “Comprising”: Broad. If elements of patent are A B and C, and someone does A B C & D, there is infringement.
(B) “Consisting of”: Narrow. Case where what is cool about invention is you did it in only X elements.
(C) “Consisting Essentially of”: Intermediate. If an invention consists essentially of elements A, B, and C, the claim would cover a variant having the additional element D only if D did not make the variant essentially different from the claimed invention.
c. Body: Introduce specific limiting elements, i.e., what makes up your invention.
(A) Usually want each element introduced in a new clause
(B) Must be clear what the relationship is between elements.
3. Claim Formats: 2 formats, independent and dependent
a. Independent & Dependent claims: Independent claims do not refer to any other claim(s). Dependent claims do.
(A) Subsequent claims narrows the scope of the patent as set out in the first claim.
Ex. A windmill according to claim 1, wherein the wind-catching device is a set of rigid blades.
(B) Advantage of dependent: Form of insurance. If patent office grants a broad claim and in later litigation the broad claim is declared invalid, no recourse. Narrower dependent claims protect against invalidation. Validity of dependent claims is separately assessed and may be upheld even if the claim it is dependent on is struck.
b. Functional Claims “means for”: Allows for equivalents to be covered for a function
(A) Ex. A hammer comprising a head, a handle, and a means for attaching the handle. Covers the means described in specification and equivalents.
(B) Have to be careful, court may not agree on what “equivalent” is. For example glue wouldn’t be equivalent for a nail.
c. Product by Process: Something you created that you don’t know how to describe but you can describe the process by which you yield it.
(A) Limited protection: Used to be you got rights to product regardless of process. Now, fed cir says all you get is product as created by your process. If someone comes up with another way, that’s fine.
(B) Ex. An insulating material prepared by a process comprising the steps of…
d. Jepson Claim: Way to specially point out that you are trying to improve an existing invention. “An improved X, the improvement of which is Y.
(A) Case where preamble is limiting by design, conceding away X.
(B) Makes PTO’s job easy – claim concedes away a lot of the prior art.
(C) Some countries require or strongly favor it, so you might want to do this claim everywhere. PTO may push you to.
4. Strategy for Scope: Only time you need something narrower is if your broad claim as whole gets preempted by prior art. Ex. softwood device vs. cedar device.
5. Pencil Example
a. Reference to outside non-marking substance you hold
b. Thing that does marking
d. Means for connecting eraser to pencil: could do means for connecting eraser to wood. Separate element needed.
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