Patent Claim Drafting: 6 Core Principles You Need to Know
HTML-код
- Опубликовано: 30 июл 2024
- Do you know how to draft a patent claim set? What do you have to know before you start? Check out this video to find out! (FREE resources included below...) ⏬
Registered USPTO patent attorney, J.D. Houvener from Bold Patents Law Firm, explores patent claim drafting.
Below we have provided resources and timestamps with brief explanations for each aspect of this subject.
Quickly find what you are looking for by clicking on the timestamps below.
➡️1:02 Understand the Law
✔️Patent law has specific requirements for writing claim sets.
✔️For example, each claim can only be one sentence!
➡️2:24 The Format
✔️There are also specific format requirements to keep in mind.
✔️There is a title section and then a preamble.
✔️The words “comprising” and “including” can have very different effects here!
➡️4:18 An Apparatus Claim
✔️This is the easiest kind of claim to craft--apparatuses are “straightforward” inventions.
✔️There must be support for each claim in the specification.
➡️ 5:18 Process Claims
✔️As the name suggests, these are claims about a process, not a physical device.
✔️Whether or not to specify the process’s order is an important decision to make.
➡️6:18 Claims For Compositions of Matter
✔️These are often the most intricate claim sets.
➡️7:13 Design Patent Claims
✔️There is only one claim for a design patent!
✏️ BONUS RESOURCES✏️
🔹 Check out our detailed blog article that explains how to draft a patent claim set: boldip.com/blog/patent-claim-...
🔹 Ready for the next step? Learn how to patent an idea! boldip.com/blog/how-to-patent...
🔹 Get your FREE "Inventor’s Guide to Patents:" boldip.com/free
🔹 Live to your purpose! Protect and bring to market your visionary idea by booking your free consultation! boldip.com/contact
🔹 FREE Facebook live every Thursday at 9AM PST! Ask a registered USPTO patent attorney anything! Just go to our Facebook page at 9AM PST on Thursday. / boldpatents
------
📱 Connect With Us!
Website: www.boldpatents.com
Facebook: / boldpatents
Twitter: / bold_ip
Instagram: / boldpatents
@1:30 --- here, where Houvener is discussing patent conventions, i.e., how to properly begin/instantiate claims section, note: almost always [nowadays at least], claims are to be found in a patent near the end, following the precise phrase, "What is claimed is:" (rather than "I claim:.." or "We claim:..").
Thanks Jacob, that's definitely true - there are different ways to say it. It's kind of like a preamble and may not really matter how that part of the claims section is written though.
Thank you so much for all the great information on patents.
You are most welcome! Let me know if there are any other topics you'd like to hear about.
Very useful thank you for the video. Want learn drafting, please share some material and videos on drafting
Thanks Venkatesh! Ok! I'll get to work on more drafting videos :)
This is helpful, but ugh… trying to do this alone is a pain in the ass. Question - what is the point of all the time and effort we put in to the content of the patent, if we have to basically re-state it all *again* in claims (but if you don’t do it “right” it can be used against you)? Why can’t the content of the patent BE the claim? Or why can’t we skip all the content, and JUST use the claims? I can’t see the sense in having to do both (except to keep lawyers employed).
I hear ya. The issues comes down to clearly defining what it is the invention is (the claims) in a way that the examiner's can search and verify that it is novel and non-obvious over/above prior art. So, instead of having the burden of searching all of the pages of specification or drawings, they get to focus their efforts on a much smaller numbered set of claims. Further, when it comes time to enforce your patent, a judge/jury is not pouring over a huge body of specification and drawings portfolio, the get to focus their attention on whether the infringing article meets every element of the as-claimed (small numbered set of claims) invention.
What if i have a modification of an existing machine, what shaould i say ( call it) at the begginig of claim 1? Thanks!
I'd be sure to describe the underlying technology that you're improving simply and plainly in the preamble, so as not to overly limit your claims. "An improved mechanical device for trapping comprising..." where you describe the core elements of your better mousetrap.
Please sir suggest material specifically to learn for claims drafting.
The best is going to be PLI's Faber Treatise. HE has a new 7th edition out now... here's the link: www.pli.edu/catalog/publications/treatise/faber-on-mechanics-of-patent-claim-drafting
@@boldpatents Thank you soo much sir, the lecture was really helpful
This video is very useful. Thanks. But I have a question. If I have an invention and my prior art is football, and I have adopted majority of the rules of football to be played in a totally different football field, how shall I draft my claim? Can you help me with the format? Thanks in advance.
Beth, thank you! I'd recommend doing a thorough patent search first to confirm that your field is in fact different. I'd also recommend getting a Patent Attorney's opinion on whether you have enough potential scope of rights to make it worth the time & money. If you can confirm there is enough prospective scope, then I'd focus the application's written description on the "totally different field", and describing as much as you can about why the field is different. The claim language should be as broad as possible (and then a little more) covering the field type for your method/process.
You cannot patent a sport. You can patent the ball, but not the sport.
Appreciate the video. Is there any explanations on the math in tallying the #s of dependent claims for fee calculations?
For Utility patent applications you get 20 claims (3 independent and 17 dependent typically) included with the normal filing fee. If you go beyond 20, there is a charge per claim. The fees change over time, but are found here: www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule
@@boldpatents Thank you for the reply. Yes 20 total, 3 independent included with the filing fee which is adjusted for small and micro entities.
But when tallying the claims in a complex claim structure where there are over 20 claims, and where some dependents are based on more than 2 other dependents or to dependents that count as more than one due to their prior claim references.
THAT is where I need practice/help. Do you sell/offer services?
Should claims be included in a provisional patent application?
Great question! Claims are not necessarily required, but you can include them in your application. In fact, they're highly encouraged! :)
Very informative but I, personally, could do without the music
Thank you, yes - I wish I could take the music off, in hindsight.
RiP headphone users