Top Beginner’s Mistakes in Patent Drafting
First, we have to give the usual disclaimers—imagine a banner is appearing across the page, saying “Professional Patent Attorney on Closed Course—Kids, don’t try this at home.” In other words, writing a patent—especially the claims—is really a job for a professional patent attorney or agent.
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First, we have to give the usual disclaimers—imagine a banner is appearing across the page, saying “Professional Patent Attorney on Closed Course—Kids, don’t try this at home.” In other words, writing a patent—especially the claims—is really a job for a professional patent attorney or agent. We strongly urge you not to write final claims but rather to prepare the best outline of your invention you can, and let a professional write the actual claims. If you must write claims, have a professional review them before you file. The money you spend then will save you thousands later on and might save you from having a patent declared invalid later (or discovering that what you thought was a very broad patent was, in fact, very narrow). That said, let’s proceed with the list of the top beginner’s mistakes in patent drafting.
- Basic claim structure mistakes: violations of claim grammar
Of course, claims should be proofread for all the grammatical rules you learned in elementary school—correct spelling, agreement of subject and verb, singulars and plurals, and so on. This pitfall refers to the special rules of claim grammar—the legal and customary requirements of claim structure itself.
- Choice of connecting words: ‘comprising’ versus ‘consisting of’ or ‘having’
Connecting words, or transition words, go between an element in a claim and the list of things that make up the element. Each has its own special meaning, and you can severely limit your claim by the choice of the wrong word.
- Inconsistent terminology
We all learned in junior high not to use the same word over and over when we’re writing. When you are writing claims, forget this rule! Always use the same word to refer to the same thing. Use of alternative words or synonyms might please a literary critic, but a patent examiner or court will take it as implying that you meant different things by the different words. In patent work, a foolish consistency is not the hobgoblin of small minds (with apologies to Emerson).
- Claiming a result
This is a difficult concept for most inventors to grasp, but it is very important. You may have had the result in mind when you made the invention, but it’s the invention on which you get the patent, not the result. That is to say, you cannot claim a result. You can only claim an apparatus or method that accomplishes the result.
- Too little detail
Don’t leave anything out of a claim that is necessary to distinguish the claim from the prior art. Basically, you should ask yourself, “Is every part of my invention that makes my invention new compared to others included in the broadest claim?” This is a bit of a tightrope to walk, because you also do not want to include anything in the broadest claim that is not necessary (see the next section).
- Too much detail
Look at every single word in the claim and ask, “Is this really necessary to describe my invention in its broadest sense?” If the answer is no, drop it. If the answer is “No, but the invention works better with this element,” put it in a dependent claim. Remember that under the “all elements rule,” to infringe a patent a product has to include every element (item or limitation) in at least one claim. Therefore, every element you put in your broadest claim is one more opportunity for an infringer to escape liability by leaving it out.
- Dependent claims that broaden or contradict independent claims
The function of a dependent claim is to narrow the claim upon which it depends. Therefore, be sure that all dependent claims introduce additional restrictions or add additional elements or define terms in a narrowing way from their parent claims.
- Not claiming the invention
This should be fairly simple, but it is amazing how often claims miss the point entirely. Don’t get so carried away by the art of writing claims that you lose sight of the goal—describing your invention. Is the invention a method, but you’ve written apparatus-type claims, or vice versa? Have you spent so much time defining how each of the parts of the device interconnects that you have forgotten to claim the reason for the interconnection?
- Claiming too broadly, so that claims read on known prior art
You want your claims to be as broad as possible, but not too broad. You don’t want the claim to be so broad that it applies to other devices or methods that are old (prior art).
- Not seeing past the preferred embodiment
It is tempting to take your invention as it presently exists and describe every element in extreme detail—as a proud inventor, you’ve spent lots of time polishing your invention and making sure it was just as good as it could be. It took you months or years of trial and error to figure out that the portoflan armature works best if it’s made of polypropylene instead of bakelite (or the even more generic plastic), or that the cheapest fastener is a number 4 Fahnstock clip, or that 2 armatures are better than 1 or 3, so you really want to say these things in the broadest claim. That invention is your baby, and it just couldn’t be improved. Any variation would just not be worth considering. However, when you’re writing your claims, you have to see beyond the perfected prototype you have sitting in your garage, to make sure that the patent you will eventually get will not be easily evaded. There is a good reason this is the Number One Mistake—more than any other, this is why so many self-prepared patents are much narrower than they need to be. This is one of the best reasons for having a patent attorney review your claims at the very least—better yet, for having a patent attorney write them in the first place. Your attorney will not have the same attachment to your baby as you will. He or she will be able to take a fresh look at the invention and say, “What if we did this?”
Source: Michael F. Brown (www.bpmlegal.com) retired in 2017 as partner in the Ithaca, New York, law firm Brown & Michaels PC. Contact the firm at 607-256-2000; Chris Michaels’ email: firstname.lastname@example.org.