During the drafting process, claims in a patent application may
be written, edited, revised, reviewed in-house, revised again,
reviewed by a client, and revised yet again, or have some subset of
these applied to it. But, is the claim good enough?
Here are some tests we like to perform on claims.
Basic tests include grammar, spelling, punctuation, format, correct
establishment of antecedent basis and reference, correct claim
dependencies and other formal aspects of claims. Beyond that,
one should ask: does the claim capture the intended point of
novelty as conveyed by the inventor(s) and as determined by the
practitioner(s)? Does the claim distinguish from known art?
Whether or not the client has directed to perform a search or
provided references, does the claim distinguish from general,
widely known examples in related fields?
Does the claim have appropriate scope? Is the claim broad
enough to ensnare an infringer who makes a clever variation of one
or more parts of the invention? Is the claim narrow enough,
with sufficient detail in the claim elements, to not read on the
general examples in the art? This is a variation on some of
the above questions, and brings focus on a recommendation.
The claim should be broad with respect to description of
elements, or even inclusion of elements, that are not close to the
point of novelty, and should be provided with sufficient detail or
narrowness of breadth with respect to the point of novelty.
If there is more than one point of novelty in the claims,
careful consideration should be given to whether to move one point
of novelty into the dependent claims (or a continuation or parallel
application with another claim set) and focus on one of the points
of novelty, and only one, in the independent claims.
Are the claims clear as to meaning and scope? Is it clear,
upon reading a claim, what the invention is? Can one
understand the claim just by reading the claim, without having read
the specification or looking at the drawings? Hint: Examiners
may do just that during patent prosecution. Is there any
ambiguity, which can be addressed by punctuation, moving claim
terms, adding or deleting a phrase or other editing? Once
ambiguity is removed, do the claims establish a clear boundary as
to what is claimed? This is just another way of asking if the
claims are clear as to scope, but by asking it another way, one may
catch what is otherwise missed.
As to scope, does the claim protect what the client actually sells?
A claim that requires induced infringement or multiple
parties to join together in infringement is not as strong or
desirable as a claim that would catch a single infringer directly.
If a specific claim (e.g., a dependent claim) is directed to
an embodiment that isn't precisely what the client sells, this
may be useful as a defensive posture to prevent an infringer from
selling a variation, but an entire claim set that doesn't
encompass what the client actually sells may provide little
protection for a direct copy by an infringer.
Does the claim have a good claim strategy behind it? There
are many claim strategies (some would argue there are as many claim
strategies as there are patent applications or inventions).
Here are a few.
– Aim broadly, to capture as much scope as possible, knowing
it is likely the claims will be amended in light of cited art
during patent prosecution.
– Aim narrowly, to carve around close known art, knowing it
is likely patent prosecution will face an uphill battle.
– A "picture claim" describes, more or less
exactly, a specific embodiment. These are usually very
narrow, and may be employed when the point of novelty is not known
or not readily discerned. Hint: it is not usually a good idea
to draft a claim without having a strong understanding or belief of
what the point of novelty is, in the invention. A picture
claim may be a fallback position in lieu of a more targeted
strategy.
– Aim for a claim that can survive patent prosecution with
little or no amendment, in order to preserve the doctrine of
equivalents.
– Aim for a claim that can survive both patent prosecution
and attempts in the courts to invalidate the claim. This is
the so-called "bulletproof" claim.
– Write what you've got. The client may insist that
the invention has novelty, even though there is close or even
overlapping art. Do your best to represent the client's
invention in the claims and advise the client as to the likely
difficulties to be faced during prosecution.
Once the claims are drafted, and the specification is written and
accompanied by appropriate drawings, the claims should be tested to
see if each and every aspect of the claims is supported in the
specification and in the drawings. Read each claim, and each
claim element, and ask if this is found in the specification.
Exact literal support in the written description is not
necessary, as the claims themselves are part of the specification,
but each part of the claims should be found in both the drawings
and the specification. This is a vital test, as claims can be
rejected if the drawings and/or the specification do not support
the claims. Yes, the drawings and the specification can be
amended during prosecution, but new matter is prohibited.
Each field, and even each specialty within the fields, may have its
own jargon, some of which are terms of art. Also, each field
and specialty may have preferred styles and types of claims.
For example, software-based claims often encompass an
algorithm in the claim, and the claim can be tested to see if the
algorithm in the claim behaves as a computer or processor with
appropriate programming would. Claim language, especially
claims to software-based inventions, may need to be debugged, much
as a computer program is debugged. A claim including an
algorithm with recursive or self-referenced elements may present
difficulties for antecedent references. If the claim
doesn't quite work correctly, spend the time to analyze why
this is so, and revise it. A method claim should be tested to
see if following the method results in actions that are novel or
results in an embodiment having the novel features of the
invention. An apparatus, system or other structure claim
should be tested to see if it embodies the essence of the novelty
of the structure of the invention. A tangible,
computer-readable media claim should be tested to see if it
embodies what a processor (or computer or other machine) would do
if it read the computer-readable media.
One good test of dependent claims is to see whether some of them
act as a fallback in case an independent claim is invalidated.
This could happen during patent prosecution, in which case
moving some of the limitations of a dependent claim into an
independent claim, by amendment, may be a good strategy. Or,
bringing in limitations from part of the specification into the
independent claim, and keeping the dependent claim as a fallback
may work well. An independent claim could also be invalidated
in a court case, and a fallback dependent claim might survive.
Writing the claims so as to support this possibility is a
good strategy.
Do the dependent claims encompass all of the variations that the
client discloses, and all of the variations that a person of skill
in the art would devise upon reading the specification? If
there are any gaps, it may be worth revising the dependent claims
for additional breadth, or adding dependent claims or recommending
the client file a continuation application with another claim
set.
Another test, based on the "less is more" concept of
claims scope, is to ask whether the claim could be written in fewer
words. Fewer words in a claim generally (but not always)
broadens the scope of the claim. An overbroad claim is
usually not desirable, unless the strategy is to set forth a very
broad claim and amend it during prosecution. But, a claim
might be unintentionally narrow. By looking at each claim
term, asking if this claim term is necessary in the claim, and
deleting unnecessary words or moving some words to dependent
claims, one can pare down the claim to an appropriately broad
scope.
One last test (for the present article, although this test could be
applied at any time during the drafting process) is to ask whether
the claims, particularly the independent claims, match both the
preambles to the claims and the title for the patent application.
If so, good, if not, it may be worth revising one or more of
these. And, after revising for any or all of the above, read
the claims one more time, to catch anything you might have missed.
This is all part of the art of patenting.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.