Patent Claim Drafting - 5 Core Principles - 12 Common Mistakes - My Favorite Strategy

How to draft patent claims? - rolfclaessen.com - kzbin.info_... #rolfclaessen
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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:
www.wipo.int/edocs/pubdocs/en/...
www.ipwatchdog.com/2013/05/25/...
www.ipwatchdog.com/2013/10/11/...
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.

[@al4alex]

By far the best explanation of the patenting process-clear and easy to understand-Thanks.

[@gtwhome]

Bravo, Rolf ! Pleasingly concise and informative.

[@mollieholiday3379]

The best and most useful presentation I've seen so far.

[@vasudevan6163]

For beginners its very useful and clear video, thanks for your effort Dr.

[@alexandrevaliquette1941]

You pack a lot of information in a short video. Thank you so much for sharing. Alex from Montréal, Canada

[@pcdave73]

Thanks for nice presentation. Very clear and precise explanations.

[@user-tq4ow7uh7p]

it was really useful, thank you.

[@petehoney1]

Good morning Rolf 😀thank you very much for your video .. this is very, very helpful - thank you 🙏

[@vikramsheth5040]

Thanks for providing useful information

[@ConsultingjoeOnline]

Very helpful info. Thank you

[@manalmahet1575]

Very good points!

[@srinivasanraghunathan8656]

This is good video and highly recommended for the patent writers.

[@gobikas4193]

Very Informative for the beginner

[@mulan770]

Thank you very much for this valuable information, i really felt lost before watching this video

[@patentpalphil7188]

Well explained Preparation before actual claim drafting

[@christianf3282]

Great content!

[@pythonking_stem1527]

Ronnie, Could you please create a video demonstrating how to apply patent law to a specific section of a given material? The aim is to help us understand how an examiner determines the patentability of a product based on the provided passage and specific conditions outlined in patent law.

[@priyashan6276]

Thank you Rolf Claessen for this informative video. Is there any separate format for US patent drafting? Please give an overview about the US patent drafting.

[@dorethatross1569]

Very helpful. I am applying for a recipe patent.

[@JackHackaday]

What a good show

[@arbaj.rupert2906]

Great Video. Just got done with a Patent Law final under a fantastic professor. This was good.

[@patentanwalt]

Thank you!

[@lawyerarvind]

very practical

[@beardog6569]

I'm an inventor working with patent attorney pre-selected by my university. In three years, despite all my efforts, requests and questions he hasn't been able to explain this to me in simple terms. Thank you. I'm re-writing claims as we speak.

[@brendal7571]

Thanks for all the great knowlege here. Are there any special guidelines or care that needs to be taken when picking a patent name for a utility patent?

[@re3000b]

great video thank you very much.. could you please show us an example from a real claim from a real patent one is a perfect claim and another with mistakes and discuss them with us? it will help alot

[@abdelali4373]

Very cool. Thank you, sir. Is there another explanation in the form of a step-by-step method map, because I do not know English?

[@yhangmieabdalul498]

So nice video and explained wow!

[@patentanwalt]

Thank you!

[@mohammadisrok175]

good. I like this video

[@JackHackaday]

Dude yer havin fun you put the thorough in thorough patent

[@cherrysaijeshnakrishtipati3373]

Hello Mr Rolf Claessn, Thank you very much for sharing such usefull information. I have a query regarding complete patenting process. I am very new to this topic, i just have new idea related to Automotive field and i would like to develop this idea further and create a shape for this idea with real time studies. I request you to provide a step by step process on what kind of process i need to follow betweena concept and Creation patent for this. Thanks in advance for the support.

[@arrowstheorem1881]

I benefitted from your advice. Danke shen. Please allow me to ask a patent drafting question. Is it possible to draft a patent claim or a set of claims such that the claims covers or preempts all possible embodiments that can be thought of by competitors? In other words, can i draft a Basic Patent such that my inventive concept is protected such that anyone who comes up any embodiment riding on my concept infringes my basic? I am thinking to first file a Basic Patent, as it were, so that any future embodiment by anyone trying to circumvent my basic will be covered in the basic sense. Next, i will file a more specific patent to describe my Preferred embodiment. Seeking your comments.

[@user-ge8cs1dn9c]

Hello Rolf, do you have examples or copies of the paperwork I would need to file the claim of my patent after being rejected the first time. Thank you so much for your helpful information so far.

[@jn904]

Very nice and informative. One question: at 09:05-09:10 of the video, isn't this a small mistake? (You surely meant to say "preamble" instead of "body"? Perhaps a lapsus linguae?). Thank you!

[@richardmoore9391]

Could you please give me some insights on writting claims pertaining to an improvement of an existing patented invetion

[@arrowstheorem1881]

Hi Sir, thanks for your educational tutorial. If an invention has 3 embodiments described in the sections of the patent specification before the claims section, does it mean these embodiments should be recited in the claims section else these embodiments will be not be protected by the patent? Should each embodiment be an Independent claim or can be dependent claims of only one dependent claim?

[@Zealious3]

Very informative, thank you! I couldn't make out the two words at 8 min 20 sec; sounds like "uh" and "n", guessing it is "or" and "and". Does anyone know?

[@ht-infofacts2050]

Very professional advice provided ! Hope that all of those information and advices can be used in the process of getting an European Patent ? Thanks very much !

[@ht-infofacts2050]

@@patentanwalt Thanks for your replay ! I am an Small European Project Developer and got my idea and the product ready in prototype but currently I'm getting stock on my way, due to those very high costs involved on this Patent process ! Also in UK or Europe PPA,Provisional Patent Application it is not available or applicable as on the US..! So currently can't do anything in order to protect my invention and after that to be able to offer my invention to other company for Licensing !🤔🤔 Many thanks again for your replay and very valuable information provided earlier !👏👍

[@EbmasTR]

Mr Claessen; consider you want to apply for a patent which is a mechanism that should at least be consisting of parts A, B and C. A is known by prior art and B and C are the distinguishing parts. However, B and C could both be used together or they could be used separately (only one picked without the other). Thus, A+B+C, A+B and A+C would serve for the same result. So, I would like to protect all three combinations. Since two independent claims are not allowed in Europe patent, what should my independent claim look like?

[@EngrWUAV]

Please discuss also about Utility models sir :)

[@jakebeard4499]

Thank you so much you are a pillar of society I hope you the riches of the Gods godspeed to you my brother stay strong and thank you so much for all that you've done and to those people who thumbs down to you stop hate Choose Love in Christ

[@mauricereece4238]

helpful video. Is it possible for me to apply for a patent in the US without visiting the country?

[@marvinwilliams4223]

If I make a chair and I make it in different colors do I have to patent the chair multiple times or just once and if I make custom colors It would be optional to patent the colors

[@arrowstheorem1881]

Hi Expert, I have a new invention but I am not sure how to write a patent doc that prevents others from designing around it. For example, there are many ways to solve any problem. They may vary widely from one another. So how can a single patent doc cover all the infinite number of possible solutions to one problem?

[@soumyatiwari7763]

Nice video

[@soumyatiwari7763]

Thank you for your reply Rolf. I would like to see videos related to Patent specification drafting , how to get the essence of the invention, how to respond to office actions.

[@DavidG2P]

So how many hours or rather days does it take to indepth-understand all variations of the invention, search prior art, and draft a strong claim?

[@jpdemer5]

#12 is an often-repeated "rule" that is not actually as strict as it is usually presented. There are some claim elements that are inherently definite, and do not need to be introduced with "a" or "an", because they don't require an antecedent basis. If you have "a circle", for example, you can refer to "the diameter" of the circle instead of "a diameter". Every physical object has mass, so you can refer to "the mass of X" without having to mention that it has "a mass". The same goes for ratios and sums of already-identified values: "wherein the ratio of A to B is 2.0" is good language; you don't have to first mention that there is "a ratio".

[@origiinipsolutionsllp7661]

nice video

[@patentanwalt]

Thank you!

[@coletteduvallpondella3591]

If I have not invented an actual product, but something that can be added to existing products to make them last longer outdoors using manufacturing tools, pieces and technology that already exist, what is the claim? How to make and manufacture my idea already exits. I have an idea of how to make the product last longer. So I am trying to write a claim for a concept? My research tells me it is a Utility since it serves a purpose and not a Design? Thanks, any feedback would be helpful. I have written everything for my application except I am stumped by the "how to write a claim" part.

[@Enoch_The_Gent]

Do you work with American inventors?

[@victoryxists]

Imagine you were writing a claim for an umbrella and the shape is unique as it is an oval not a circle to better work in the wind, yet the non-obvious/elevated build factor is that you put a baffle or an escape for the air to get out and rain not to get in and the umbrella does not get caught in the wind. Now when writing the independent claim your not sure if the oval shape alone is good enough to make it unique but are pretty sure the whole/baffle will be the novelty. Should you leave the,, baffle/whole out of the independent claim and add it as a dependent claim if you think just including the oval in the dependent claim would cover more scope? Thanks!!

[@victoryxists]

... and if you find the "oval" in prior art then you would add the "baffle or whole" for air to escape to claim 1 "the independent claim" in your opinion?Lastly, If you thought that there was never an umbrella which had the circumference of the canopy less than, in measure, the length of the handle and you believed you can only reduce the size of the canopy so much till it becomes ineffective and a longer handle was your invention and a better way to build an umbrella, would you add the statement, "the length of the handle is longer than the circumference of the canopy" which would force others trying not to impeade on your patent to make a smaller handle in relation to canopy circumference?

[@carlgoran6602]

Rolf, I would like to thank you for your informative video “Danke”, and ask a question regarding my patent application. I received my fist U.S. office action regarding my patent addressing an artificial intelligence paradigm using cascading neural nets. After watching your video, I came to the conclusion that I would be better off by minimizing the independent “claim one” to a variation of a basic neural net with multiple dependent claims. This leaves additional content in the drawings and description. Does this become prior art? Or can I file a subsequent patent later? Vielleicht kannst du diese Frage auf Englisch beantworten. Dein Englisch ist viel besser als mein Deutsch

[@Zealious3]

Prior art is anything disclosed in the public. So for example, if it's published then it is prior art. How did you get on?

[@HappyfoxBiz]

TBH patents need automation software so that people can submit items and get back results that are very similar that are either under protection, out of protection or just are common use, for example if I were to submit an application for "the wheel" it would be obvious that it's not able to be covered when it's just a very basic wheel that has been around since ancient times, if software weed that out without it being put in front of a patent officer the patent owner can get a lot of "canned" feedback on their application so that they can either make changes to the product, application or appeal the automated decision.

[@tubeanshulg]

Where to search for prior art on a topic?

[@antonioalessanndrosimpao914]

H Classic Blossom

[@bigonprivacy2708]

Great video but one detail you missed. You only stated 11 common mistakes, not 12. Besides counting what you said I looked at your "dashed" items that you placed under the video (text area) and those numbered 11 as well. FYI.

[@christinascipione6157]

Thank you for the information. I have a question regarding my patent, which is a device to provide a process solution in a specific field. This device can also be used outside of the specific field. All prior art and specifications are specific to the field. How can I claim this device to be used outside of the field if it has a slight modification? I am worried if I include it in the claims, the USPTO will come back with an action to file a seperate application. If this is the case, do you know if I will keep the priority date? Thank you.

[@stuartroberts7741]

I do not think the field of the invention is a constraint you need to worry about. Just describe the modification, application and outcome in the body of the patent document. Make drawings that show this modification. Then claim that modification as an independent claim.

[@balwaantbeerlall3653]

how to find the lawyer and cost

[@1stPrinciples455]

There are German patent firms in singapore too. *Almost EVERY patent firms in Singapore I talked to Do Not Want to sign NDA.* What can I do? They are saying their professional code of conduct is that they are supposed to keep it secret. Then I asked them, why do NDAs exist? They are saying by virtue that they are certified patent agents or lawyers, client confidentiality is guaranteed. How stupid do they think I am? There is a purpose for NDAs but Singapore has little such culture for patent drafting

[@DALLASINFOPOST]

How can i get consultation with you. I need some help with some patent claims

[@patentanwalt]

I am switching law firms 1st August. You can reach me at my new firm Michalski Hüttermann & Partner at [e-mail] - I would then send you a fee agreement and a retainer. Would that be OK?

[@vukken99]

drafting the patents...Holy Cow....this is why patents lawyers make their money.....even the provisional patents must be written and filed properly since they are essentially 80% of actual utility patent.. The other much bigger matter is the execution of what you will do with the patent...... I read countless of patents issued and none of them materialized into a successful commercialization...

[@sriutamisussan3503]

Thank you. KZbin Sri Utami IP Consultant.

[@Thomas-qr3bg]

How come there are only 11 of the 12 mistakes what is the 12 Mistake?

[@chaintightsecuritysystems3359]

Just vapid. As if his 9 minute video can enable someone (even an attorney) to draft competent claims. The biggest mistake in claim drafting? The claims don't correlate with the drawings or specification. I could say it a million times and only a few patent attorneys would comprehend or agree with that sentence. I've said it straight to a "patent attorney's" face and still he will draft claims that are not supported by the drawings or specification. It's the most basic concept yet apparently the most difficult to understand. Sadly this mistake typically comes out many years later during litigation when the claims are declared either invalid or not infringed.

[@zebscy]

Hey, say patent claim ONE MORE TIME HOMIE

[@samwilliams1397]

Good information but very disorganized in his explanation. The 5 steps are not distinct in his explanation. He also said he was offering 12 common mistakes but only shared 11. I had to watch this 4 times to organize his thoughts. Damn.

[@sojibrajii]

Hi, U need attractive KZbin thumbnail designer?