Thursday, 31 December 2015

How to Draft Claim 1 of a Patent Application

1. Think carefully about what you want to convey in claim 1. Claim 1 does of course define the scope of protection you are seeking. However it also ‘presents’ (perhaps even ‘showcases’) the invention, and you want to give the impression that you have contributed something to the art. Therefore try to ensure claim 1 is novel and has something which looks at least a little bit clever. You don’t want the Examiner to (psychologically) ‘dismiss’ your application as being the same as something in the prior art or a trivial improvement. So first impressions do count.

2. To present your invention impressively consider drafting a claim 1 that reflects the technical problem being solved. So the following claim:

‘A method of making a protein detectable in NMR comprising methylating it by a process comprising….’

Is more impressive than

‘A process for methylating a protein comprising…

So consider adding words and terms to your claim that reflect the complexity of the invention and all the advantages/contributions. Whether or not these words and terms are actual limiting features it will help the Examiner understand the true contribution better.

3. You can also use optional features in claims to highlight certain features. So if you say something like:

‘…wherein optionally the sequence is identified by a [clever method]’

Then the Examiner will be able to appreciate how clever/special the sequence must be if it needed the clever method to identify it. So the optional bit can help to make the other parts of the claim look impressive, without limiting the claim. Be careful here about the risk of the Examiner seeing the optional features as essential features.

4. There are often advantages in putting method claims first. However this depends on the specific situation, and you need to bear in mind the commercial situation, ease of enforcement of product claims, and the fact that if you get lack of unity only the first claim might be searched. Essentially with some inventions method claims can be written in a way that better reflects the inventive concept, and later product claims that refer to the method claims have some chance of benefiting from the language of the method claim, at least at a psychological level in the Examiner’s mind.

5. This is a more subtle point, but where the invention is complex then write the claim so that you spread the ‘invention’ (i.e. contribution) over lots of features of the claim. So make sure you don’t write a 2 part type claim ( where the contribution is going to be defined in the second part. Instead try to convey the inventive concept as deriving from contributions of several features, if possible and/or that more than one feature is clever.