Patent Search

Patent Drafting: Strong Claim Strategy

Patent AnalysisPatent claims are frequently discussed in legal circles and by entrepreneurs alike. Many initiates to the world of intellectual property don’t know how to approach patent analysis, let alone understand the purpose of claims. Of course, they know that claims are the legal basis for protecting an invention. But, exactly how that is accomplished effectively with maximal impact and minimal resource allocation is quite grey for most of the managers making the important decisions regarding IP strategy.


It is important to point out from the beginning of the patent-drafting process that the specification disclosure and the claims go together like a hand in a glove, so to speak. The specification (like the hand) bares all the details that are necessary in understanding its outer complexity and inner workings (to the extent that is relevant to what is being claimed). The claims (like the glove) protect the valuable aspects of the invention that are detailed in the specification.


This is a bit of a simplistic analogy, but it is meant to emphasize that many of the pitfalls that other attorneys have made in drafting patent applications are due to forgetting the interrelation between the specification and the claims. A specification that reveals too much can be just as damaging as one that reveals too little. Likewise, a claim set that doesn’t capture an invention fully leaves a lot on the table that cannot be monetized by the inventor exclusively (the expression in the USPTO’s parlance is inventive aspects that are “dedicated to the public”).


Moreover, a claim set that captures an invention “too fully” (the so-called “picture claim” patent-drafting mistake) can be devastating on revenue-recovery potential when a patent is being asserted in court, or is being valued in an IP transaction. So, one needs to think deeply about the specification when considering the claims and vice versa in structuring a valuable and enforceable IP strategy.


Claims can come in many forms, each with their own use. Devices, systems, methods, networks, media, business methods, and medical uses are some of the main ones employed. Furthermore, the style in which the claims are drafted affects how they will be prosecuted, and ultimately enforced. Claim style (such as functional claiming) depends in part on the legal jurisdiction in which one is filing – using a single patent-drafting approach to USPTO and EPO patent applications can lead to a complicated situation (to say the least) during their parallel prosecution, for example.


The aspects briefly outlined here with regard to patent analysis have many more details involved in their execution than has been said. However, putting those issues aside and considering them matters of formality, it is worthwhile to reflect on what are the core uses of patent claims – both with regard to the legal dimension and business perspective as well. In doing so, one can better define a strong claim strategy.


While a lot has been written about patent claim strategy, verbosity is the antithesis of such strategies in the crafting of the claims themselves. The adage “less is more” reflects the aspect of defining the elements or steps and their interrelation accurately and succinctly in the broadest way possible, without encroaching on what is known in the prior art. Drafting solid independent claims with suitable and well-chosen dependent claims as fallback positions during prosecution serves as the template for the mechanics of the patent-drafting process and the hallmark of a sound IP strategy.


Claims are not instructions on how to make an invention work, which is the domain of enablement. As the mantra of any good patent attorney goes – claims do not have to be enabled. If one wants to know how the invention works, then read the specification. In the legal vernacular, claims preempt – they preclude one from making, selling, and/or using an invention. Claims generalize the embodiments (both the ones described in the specification and their equivalents) to the point of reaching an essential core of structural or functional elements or steps of an invention.


Patent claims need to have “teeth” to be of utility, akin to any other legal contract. The sharper the claims have been refined to withstand attacks of validity and scope in litigation (such as in claim-construction proceedings known as Markman hearings in the US court system), and the more focused the claims have been distilled down to the core inventive aspects to ensnare infringers, the more “bite” one has in procuring quick settlements and favorable licensing-term arrangements. A seasoned attorney with a good sense of the technical, legal, and business aspects of an invention will know how to fuse these overarching concepts into a strong claim strategy during the patent-drafting stage, providing a protective legal framework for the invention and a value-added IP strategy.


FlashPoint IP factors these wide-ranging aspects into the process of securing patent protection, whether in performing  a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.