From my experience, there are four elements that make drafting this section of the application more intense than any other section.  First, the description of the invention in every single claim must distinguish over the existing technology.  If a drafter describes the invention in such a way that it reads on, or is covered in, the existing art, that claim will be rejected under either 35 USC 102 or 103.  No matter how innovative the invention, there is always existing art to consider.  For example, if an inventor invents an invisibility cloak, a couch is existing technology.  If the drafter of the invisibility cloak stated in the claims, “What is claimed is: 1. A thing.”, a patent examiner would be entirely within his or her rights to reject the invisibility cloak patent application over a prior art reference to a couch, because a couch is a thing.  If the drafter instead stated “What is claimed is: 1. A cloak.”, while a couch could no longer be a proper prior art reference to reject the claim, any existing reference that provided for a cloak could properly be used to reject the claim.  What the drafter would need to do is add to the claim a point of novelty that removes its scope from the existing technology.  For example, and though this is a fantasy claim, one such claim might be “What is claimed is: 1. A cloak comprising a body having a hood, the body being made of a fabric material with Dolorian energy infused therein.”  For prior art purposes (e.g, disregarding the fact that I made up Dolorian energy), a patent examiner would need to show somewhere in the existing technology where there is a cloak with a body having a hood, and the body being made of a fabric material with Dolorian energy infused therein.  In this example, the third version of the claim would be outside of the scope of the prior art, satisfying my first element.

Second, to properly protect an invention, the claims must broadly describe the invention.  For example, and with reference to the invisibility cloak, if my final iteration of the language were to pass muster with a patent examiner, in terms of being distinguishable from the prior art, but I instead wrote, “What is claimed is: 1. A cloak comprising a body having a hood, the body being made of a fabric material with Dolorian energy infused therein, and wherein the body is red.”, I would be sacrificing crucial coverage for my client.  Specifically, while my client has invented an invisibility cloak, and told the world how to make it via filing a patent application, I have severely limited the scope of coverage of my client’s invention by requiring that it be red.  All a competitor would need to do to design around the patent would be to make the exact same invisibility cloak as my client, but make it any color other than red.  In this situation, my client would have no recourse against the competitor for patent infringement.  

Third, to sufficiently protect an invention, dependent claims ought to be utilized, and utilized properly.  Dependent claims further limit the independent claims from which they depend.  They are useful because independent claims do not always initially pass muster with an examiner, and even if they do, they are often struck down during litigation.  In this situation, in the absence of dependent claims, the patent is worthless.  Knowing how to craft dependent claims in a manner that gives additional layering to the protection is crucial.  For example.  If I had my initial invisibility cloak claim (e.g., with Dolorian energy infused therein), and I had a second claim, a dependent claim, that stated, “The cloak according to claim 1, wherein the Dolorian energy is comprised of between 5% and 10% Galaxium energy.”, I would have crucial additional protection.  Specifically, if an examiner, or an opposing counsel during litigation, were to present evidence of prior art cloaks with Dolorian energy, my primary independent claim would be invalid in view of the prior art.  However, if the examiner or the opposing counsel during litigation could not show evidence in the prior art where the Dolorian energy was comprised of between 5% and 10% Galaxium energy, then my client would still be protected for invisibility cloaks having this composition.  If this composition is what is needed to make the cloak invisible, I have just saved my client.  Specifically, though my initial broad scope of protection (e.g., all Dolorian energy infused in fabric) has been reduced, my client is still protected.  Knowing how to craft dependent claims is crucial to building a fortress around the invention.

The fourth element that makes drafting claims challenging is that each of them, by law, can only be one sentence long.  Although I simplified things with the invisibility cloak example, balancing elements one to three in a single sentence is an extremely difficult task.  Patent attorneys will often spend 5-10 hours crafting a single independent claim, trying to forecast what examiners and judges will do when they read the claim, how they will construe the prior art, and how they will view the attempt to capture breadth.  Once patent attorneys are satisfied with what they have come up with for their independent claims, they will spend significant time layering the dependent claims, trying to capture as much breadth as possible, but still leave a firm foundation in place, should a patent examiner, opposing counsel, or judge attempt to pick the more reaching portions of the protection apart. 

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.