Patent Claim Drafting - 5 Core Principles - 12 Common Mistakes - My Favorite Strategy #rolfclaessen
Channel: Rolf Claessen
Date: 2017-03-23

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General
- How infringement will be proven? You have to keep in mind how easy it will be to deliver proof for patent infringement. Can you later easily find proof for a complex mixture of polymers in the final product with regard to their identity and their weight percentages?
- How can the claims be circumvented and avoided by competitors? Always have the infringer in mind when drafting patent claims. What would you tell an infringer how he could circumvent this patent claim?
Now for the basic steps how to draft patent claims:
1) What is the invention, what are the pieces and parts of the invention. Are there multiple versions of the invention? First you need to really understand the invention in great details and understand, how a particular example of the invention works from start to finish. 

2) Search for Prior Art: do a good search for prior art and identify as many differences to the invention per relevant document as possible.
3) Two-Part-Claims: Preamble, Body: The most generic version of your invention is defined. There is at least some difference when compared with the prior art. Try to find one feature or an as broad as possible combination of features that distinguishes the claimed subject matter from the prior art.
4) Are all features somehow connected? If the features are not physically or logically connected, the examiner may object to the claims for expressing several distinct inventions and you may have to divide the patent application.
5) Different claim types? Did you use different claim types?

12 common mistakes:
- More than one sentence: only write one sentence per claim. Otherwise it is considered unclear and the features of the second sentence may not be seen as limiting the scope.
- Word “and”: when claiming a list of things that are parts of an invention, use the word “and” only before the last part in a list.
- Transitional phrases: characterized in that, Comprising, consisting of, having, composed of: “characterized in that” divides the preamble of a claim from the body and is the most common and general phrase to do so. “Comprising” is followed by an open list that may also comprise additional elements that are not listed in the claim. “consisting of” is followed by a closed list. No other elements are present in the invention – typically resulting in a very narrow scope. 
- Inconsistent terminology: always use the same word for the same concept in your patent application. Example: do not use car and automobile in your application to mean the exact same concept.
- Claiming a result: try to avoid claiming a result rather than the concepts achieve the result. Result oriented language is typically objected to as unclear.
- Too little detail: Don't leave anything out of a claim which is necessary to work the invention and necessary to distinguish the claim from the prior art.
- Too much detail: try to leave out any feature that is not necessary to work the invention and distinguish the claimed invention from the prior art. This will make your claim too narrow.
- Dependent claims that broaden or contradict the independent claims: 
- No trademarks in claims: avoid trademarks in claims
- Avoid “means plus function”
- Antecendent basis: when you first introduce a new feature in the set of claims, use the indefinite article. From then on use the definite article “the” to refer this this particular feature previously mentioned in the claims.
Now for my personal strategy to get a really strong set of claims and patent application: 
1) Identify the most relevant e.g. 5 prior art documents.
2) Identify as many technical differences to each of these documents, e.g. at least 20 per document.
3) Use the common differentiating feature that can least easily be circumvented by infringers as the body in the first claim. Include other such features in the dependent claims. Include all other such features in the description as preferred embodiments.
Here are some valuable resources:
http://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf
http://www.ipwatchdog.com/2013/05/25/patent-claim-drafting-101-the-basics/id=40886/
http://www.ipwatchdog.com/2013/10/11/drafting-patent-applications-writing-method-claims-2/id=45670/

Legalese and Disclaimer
You have been watching a video by Rolf Claessen. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms.  None of the content should be considered legal advice.  This video should not be construed as legal advice or legal opinion on any specific facts or circumstances.  The contents of this video are intended for general informational purposes only and you are urged to consult your own patent attorney on any specific legal questions. As always, consult a patent attorney.