The cost of hiring a attorney to draft a patent application can price some inventors out of the market, so they are left with the choice of doing something of their own. Inventors who are going to attempt to draft their own patent application need to go into process keeping their eyes open wide, realize that the resulting patent application would be better if a patent attorney is involved in the drafting, and most importantly understand that there are good numbers of things that you can do with that. So those who are unable to pay a patent attorney to draft and file a patent application must be willing to educate themselves to the greatest extent possible in order to have any chance at a modestly successful outcome. Provisional patent application however do not need a claim and can and should focus on providing broadest disclosure as possible.
You already know that the patent claims are enormously difficult to write due to peculiar format required by the patent office. Indeed United States supreme court has on a number of occasion discussed in detail just how difficult it is to draft and obtain a patent.
Starting to Draft a Patent Claim
First include a claim that defines your invention in broad term, leaving out any and all unnecessary option. Second, include another claim that defines your invention with as much specificity with every option you can think of. It does not matter that the claims wont be in a perfect format, with appropriate being defined as the format of patent office will ultimately require. At the Initial filing state what matters most is that the claim are present and they have appropriate scope, with some being broad and some being narrow and quite specific. By starting to write these two claims you will bookend your invention. When writing claims it is important to describe how the various components interact and connect. It is necessary to describe the invention so that it is complete, so that it works, but also so that it is different than what is known as prior art. What makes your invention different? This must be made clear in the claims.
When drafting a claim you want to start with something like this:
- A(title) comprising: {list the parts one by one} {then explain how each are connected}.
For example: A sandwich comprising, 2 pieces of bread, peanut butter and jelly, wherein the peanut butter is spread on 1 piece of bread and jelly is spread on the other piece of bread and then two pieces of bread are put together so that the peanut butter and jelly are touching.
Here is another example for a claim to an ordinary shovel:
- A shovel comprising:
an elongated handle and,
a shovel head,
wherein shovel head is attached to said elongated handle
Antecedent Basis
Now lets take the concept of “antecedent basis”. Notice that the elements are introduced with either “a” or “an”, as is grammatically appropriate. Then when you subsequently refer to an element introduced you refer to is either by “said” or “the”, hence introducing “a shovel head”, and then later referring to “a shovel head”. Notice also that the shovel head could be attached to the elongated handle in a wide variety of ways, none of which would really create shovel. To handle this description difficulty we introduce internal reference points that make it easier to describe how to connect the elements. So try this claim.
1.A shovel comprising:an elongated handle having a first end and a second end; and a shovel head; wherein said shovel head is attached to said first end of said elongated handle.
Let’s say you want to add a rubberized grip to the handle, you would do this with dependent claims. In fact, in dependent claims you build on a claim earlier to narrow the description to make it more specific. Some dependent claims to a shovel might look like:
2. The invention of claim 1 further comprising a grip disposed around said second end of said elongated handle.
3. The invention of claim 2 wherein the grip is made of rubber.
Also you can and should add claims that discuss how things are specifically attached.
Examples would be:
4.The invention of claim 3 wherein the shovel head is attached to said elongated handle by insertion of a screw through said neck of shovel head and into said elongated handle. Notice here we wanted to refer to the neck in order to explain where and how the screw connects the shovel head with the handle. Unfortunately, we have not introduced the neck as an element, and referring to it as “said neck” signals the patent examiner that we are referring to something that we believe has already been introduced. So if we wanted to add this claim as follows;
1.A shovel comprising;
An elongated handle having a first end and a second end; and
shovel head, which is made up of neck leading up into blades,
wherein said shovel is attached to the said first end of elongated handle.
Conclusion
Perhaps the best way to go about writing claims is to just start writing, then as you need to add elements to the invention to decide even more specific versions check to see if pieces or parts being added have been introduced properly and result in a description of the version that is complete and describes what you have pictured in your mind’s eye. There is much to be learned with respect to drafting claims, which is why inventors are at substantial disadvantage if they are representing themselves.
