Mechanical Claim Drafting
Jonathan H. Spadt, Esq. RatnerPrestia, P.C.
One Westlakes, Berwyn P.O. Box 980
Valley Forge, PA 19482 (610) 993-4248
www.ratnerprestia.com
© 2010 RatnerPrestia, P.C.
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I. Introduction 1
A. Is There Such a Thing As a “Simple Mechanical” Invention?
There is something of a myth in the IP profession about “simple mechanical
inventions.” It seems that because most of us at some point work with mechanical claims,
whether our background is electrical or chemical, the subject of mechanical claim drafting has
gotten an undeserved reputation of being easy. But to those of us who actually practice in the
mechanical arts, as well as our clients who try to enforce and license mechanical inventions, the
somewhat oxymoronic idea of a “simple” mechanical claim is not the norm.
The starting point of prosecution, of course, is to get a clear understanding of the
core invention. This point will be addressed in more detail below. But is the next step claim
drafting? I submit that it is impossible to effectively draft a claim after only knowing what the
invention is. The key to effective claim drafting and prosecution is to fully understand both the
core of the invention and the business context in which the invention exists. No commercially
important invention exists in a vacuum. Consider the following nine questions:
1. Why does the client want a patent?
2. What business objective is being served?
3. Will the patent protect a core business?
4. Will the patent protect a core product in an ancillary business?
5. Will the claimed invention be licensed?
6. Will the patent likely be sold?
7. Who is the client trying to exclude? Who will infringe? Customers?
Horizontal competitors?
8. What value does the invention have? Does it solve a problem only the
client has? Will anyone care that the client has a patent?
9. What are the design arounds?
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These necessary nine questions, in addition to the core invention, need to be
considered before claim drafting even begins. Through client interviews, and through a
considered understanding of the client’s business situation and market, a good IP lawyer can
draft claims and prosecute patents that serve the client’s business needs. With only an
understanding of the invention, effective claim drafting is nothing more than a shot in the dark.
An invention is just that: an invention. How much value an invention has will depend on smart
preparation and prosecution. Smart prosecution is defined by how well the resulting patent (or
patents) meets the client’s needs and objectives. Only by considering the core of the invention,
plus the “Necessary Nine” can an IP lawyer score a perfect “10” for his client.
Most practitioners can “get a patent” on almost anything. Is this good or bad?
Like most things in law, it depends. I once saw a claim that was literally a column and a half
long. What service did that practitioner provide to his client? Although it is impossible to tell
without knowing the circumstances, the knee-jerk reaction would be to say that the practitioner
failed his client because there would be virtually no way for anyone to infringe a claim that had a
column-and-a-half of limitations. On the other hand, maybe the client just needed a patent on his
commercial product in order to gain some valuation of his company. Market capitalization of
most companies these days is based largely on their intangible assets, and patents are a key way
of adding value to that line. Amazingly, many people doing the valuation do not properly
consider scope or strength of a patent. Thus, simply having a patent can increase a company’s
capitalization (this last point, mind you, is not a good thing. It is, however, often a reality).
As an example of what happens when the competitive situation of a party is not
intelligently considered during prosecution, I am reminded of an experience early in my career
when a patent surfaced during a right-to-use study that I was performing for a client which at
first glance seemed problematic. Working with the client’s in-house counsel, we quickly
identified a key, but commercially minor, feature required by the claims which was added during
prosecution to hurriedly gain allowance. My client’s product lacked the feature. I quote my
client’s in-house counsel: “Thank goodness for narrow-minded patent attorneys.” Indeed. It is
my hope that the readers of this manual are never included in this category.
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II. Legal Requirements
The legal starting point for claim drafting is 35 U.S.C. §§ 101, 102, 103, and 112.
As to novelty and non-obviousness (35 U.S.C. §§ 102 and 103), the claims of course define the
invention for which the exclusionary right is sought. To the extent 35 U.S.C. §§ 102 and 103
define patentability, the legal standards must be met by the claimed subject matter, not merely
what is disclosed in the specification. Too many people make the argument that “My invention
is patentable because it has X feature and X feature is not taught or suggested in the prior art.”
And when one looks at the claims, feature X is nowhere to be found. This simply will not work.
If feature X is the basis of patentability, it must be in the claims.
Pertinent parts of relevant statutes and rules are reproduced below. It should be
noted, however, that case law interpreting these rules, as well as USPTO requirements and
positions, is constantly changing. No practitioner should rely on anyone else’s summary of the
law without confirming it independently and updating it to account for changes which
undoubtedly occur virtually every day.
A. 35 U.S.C. § 112 (second paragraph)
“The specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as his invention.”
B. 37 C.F.R. § 1.75
“(a) The specification must conclude with a claim particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially
from each other and are not unduly multiplied.
****
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(d)(1) The claim or claims must conform to the invention as set forth in the
remainder of the specification and the terms and phrases used in the claims must find clear
support or antecedent basis in the description so that the meaning of the terms in the claims may
be ascertainable by reference to the description.
****
(e) Where the nature of the case admits, as in the case of an improvement, any
independent claim should contain in the following order:
(1) A preamble comprising a general description of all the
elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps and/or relationships which constitute that
portion of the claimed combination which the applicant considers as the new or improved
portion.”
C. MPEP § 608.01(m)
“The claim or claims must commence on a separate physical sheet or electronic
page and should appear after the detailed description of the invention. Any sheet including a
claim or portion of a claim may not contain any other parts of the application or other material.
While there is no set statutory form for claims, the present Office practice is to insist that each
claim must be the object of a sentence starting with "I (or we) claim," "The invention claimed is"
(or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is
inserted by the Office of Patent Publication. Each claim begins with a capital letter and ends with
a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola
v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or
steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).
There may be plural indentations to further segregate subcombinations or related
steps. In general, the printed patent copies will follow the format used but printing difficulties or
expense may prevent the duplication of unduly complex claim formats.
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Reference characters corresponding to elements recited in the detailed description
and the drawings may be used in conjunction with the recitation of the same element or group of
elements in the claims. The reference characters, however, should be enclosed within
parentheses so as to avoid confusion with other numbers or characters which may appear in the
claims. The use of reference characters is to be considered as having no effect on the scope of the
claims.
Many of the difficulties encountered in the prosecution of patent applications after
final rejection may be alleviated if each applicant includes, at the time of filing or no later than
the first reply, claims varying from the broadest to which he or she believes he or she is entitled
to the most detailed that he or she is willing to accept.
Claims should preferably be arranged in order of scope so that the first claim
presented is the least restrictive. All dependent claims should be grouped together with the claim
or claims to which they refer to the extent practicable. Where separate species are claimed, the
claims of like species should be grouped together where possible. Similarly, product and process
claims should be separately grouped. Such arrangements are for the purpose of facilitating
classification and examination.
The form of claim required in 37 CFR 1.75(e) is particularly adapted for the
description of improvement-type inventions. It is to be considered a combination claim. The
preamble of this form of claim is considered to positively and clearly include all the elements or
steps recited therein as a part of the claimed combination.
D. MPEP § 2111.03
“The transitional phrases “comprising”, “consisting essentially of” and
“consisting of” define the scope of a claim with respect to what unrecited additional components
or steps, if any, are excluded from the scope of the claim. The transitional term “comprising”,
which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-
ended and does not exclude additional, unrecited elements or method steps. See, e.g., Invitrogen
Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003)
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(“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and
allows for additional steps.”); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d
1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and still form a construct
within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229
USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981);
Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for
the inclusion of unspecified ingredients even in major amounts”).
The transitional phrase “consisting of” excludes any element, step, or ingredient
not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis,
80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the
inclusion of materials other than those recited except for impurities ordinarily associated
therewith.”).
But see Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32, 70 USPQ2d 1508,
1516 (Fed. Cir. 2004) (holding that a bone repair kit “consisting of” claimed chemicals was
infringed by a bone repair kit including a spatula in addition to the claimed chemicals because
the presence of the spatula was unrelated to the claimed invention). A claim which depends
from a claim which “consists of” the recited elements or steps cannot add an element or step.
When the phrase “consists of” appears in a clause of the body of a claim, rather than immediately
following the preamble, it limits only the element set forth in that clause; other elements are not
excluded from the claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products
Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986).
The transitional phrase “consisting essentially of” limits the scope of a claim to
the specified materials or steps “and those that do not materially affect the basic and novel
characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461,
463 (CCPA 1976) (emphasis in original) (Prior art hydraulic fluid required a dispersant which
appellants argued was excluded from claims limited to a functional fluid “consisting essentially
of” certain components. In finding the claims did not exclude the prior art dispersant, the court
noted that appellants’ specification indicated the claimed composition can contain any well-
known additive such as a dispersant, and there was no evidence that the presence of a dispersant
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would materially affect the basic and novel characteristic of the claimed invention. The prior art
composition had the same basic and novel characteristic (increased oxidation resistance) as well
as additional enhanced detergent and dispersant characteristics.). “A ‘consisting essentially of’
claim occupies a middle ground between closed claims that are written in a ‘consisting of’
format and fully open claims that are drafted in a ‘comprising’ format.” PPG Industries v.
Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also
Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984);
In re Janakirama-Rao, 317 F.2d 951, 137 USPQ 893 (CCPA 1963); Water Technologies Corp.
vs. Calco, Ltd., 850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching
for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the
specification or claims of what the basic and novel characteristics actually are, “consisting
essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355,
48 USPQ2d at 1355 (“PPG could have defined the scope of the phrase ‘consisting essentially of’
for purposes of its patent by making clear in its specification what it regarded as constituting a
material change in the basic and novel characteristics of the invention.”). See also AK Steel Corp.
v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003) (Applicant’s
statement in the specification that “silicon contents in the coating metal should not exceed about
0.5% by weight” along with a discussion of the deleterious effects of silicon provided basis to
conclude that silicon in excess of 0.5% by weight would materially alter the basic and novel
properties of the invention. Thus, “consisting essentially of” as recited in the preamble was
interpreted to permit no more than 0.5% by weight of silicon in the aluminum coating.); In re
Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895-96 (CCPA 1963).
If an applicant contends that additional steps or materials in the prior art are
excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that
the introduction of additional steps or components would materially change the characteristics of
applicant’s invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex
parte Hoffman, 12 USPQ2d 1061, 106364 (Bd. Pat. App. & Inter. 1989) (“Although ‘consisting
essentially of’ is typically used and defined in the context of compositions of matter, we find
nothing intrinsically wrong with the use of such language as a modifier of method steps. . .
[rendering] the claim open only for the inclusion of steps which do not materially affect the basic
and novel characteristics of the claimed method. To determine the steps included versus
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excluded the claim must be read in light of the specification. . . . [I]t is an applicant’s burden to
establish that a step practiced in a prior art method is excluded from his claims by ‘consisting
essentially of’ language.”).”
E. MPEP § 2173.05(e) Lack of Antecedent Basis
“A claim is indefinite when it contains words or phrases whose meaning is
unclear. The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where
the claim contains no earlier recitation or limitation of a lever and where it would be unclear as
to what element the limitation was making reference. Similarly, if two different levers are
recited earlier in the claim, the recitation of “said lever” in the same or subsequent claim would
be unclear where it is uncertain which of the two levers was intended. A claim which refers to
“said aluminum lever,” but recites only “a lever” earlier in the claim, is indefinite because it is
uncertain as to the lever to which reference is made. Obviously, however, the failure to provide
explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a
claim would be reasonably ascertainable by those skilled in the art, then the claim is not
indefinite. Ex parte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992) (“controlled
stream of fluid” provided reasonable antecedent basis for “the controlled fluid”). Inherent
components of elements recited have antecedent basis in the recitation of the components
themselves. For example, the limitation “the outer surface of said sphere” would not require an
antecedent recitation that the sphere has an outer surface. See Bose Corp. v. JBL, Inc., 274 F.3d
1354, 1359, 61 USPQ2d 1216, 1218-19 (Fed. Cir 2001) (holding that recitation of “an ellipse”
provided antecedent basis for “an ellipse having a major diameter” because “[t]here can be no
dispute that mathematically an inherent characteristic of an ellipse is a major diameter”).”
F. MPEP § 2173.05 Specific Topics Related to Issues Under
35 U.S.C. 112, Second Paragraph
“The following sections are devoted to a discussion of specific topics where
issues under 35 U.S.C. § 112, second paragraph, have been addressed. These sections are not
intended to be an exhaustive list of the issues that can arise under 35 U.S.C. § 112, second
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paragraph, but are intended to provide guidance in areas that have been addressed with some
frequency in recent examination practice. The court and Board decisions cited are representative.
As with all appellate decisions, the results are largely dictated by the facts in each case. The use
of the same language in a different context may justify a different result. See MPEP § 2181 for
guidance in determining whether an applicant has complied with the requirements of 35 U.S.C. §
112, second paragraph, when 35 U.S.C. § 112, sixth paragraph, is invoked.”
III. Issues and Approaches
Clients often ask, “Can I get a patent on this?” Your answer should not be, “Well
let’s do a search.” Your answer should be, “Why do you want a patent?” Only by understanding
the business context and market-place situation of each invention prosecuted can good patents be
regularly obtained. As noted above, getting answers to some or all of the “Necessary Nine” is
key to understanding the business context and market-place situation in which your client exists
and competes. Effective claim drafting and prosecution should always include a thoughtful
consideration of these points. What follows is a short discussion of each.
A. Why does the client want a patent?
This is a threshold question for all practitioners to ask as a starting point for any
claim drafting strategy. It is perhaps an all-encompassing question which includes as subparts
the questions presented below. Generally, however, the question is important because it guides
both how the claim will be drafted as well as how the application will be prosecuted.
For example, if a client is concerned about protecting a core product, a broad
claim having as few limitations as possible is certainly the starting point. In addition, however,
many increasingly narrower claims covering as many conceivable alternatives may also be
desirable.
Multiple patents, or multiple claim sets within a patent, each with varying degrees
of broadness, is desirable. First, it is desirable from an enforceability standpoint. Even if an
accused infringer could invalidate certain broader claims, he may be stuck on the narrower ones
that still cover your client’s commercial product or process. This is in essence a “double-
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containment” idea (or, preferably, multiple containment). The more fences your client has
around its core product or process, the more unlikely it will be that a competitor will break
through all of them to reach the prize. Each patent or claim set is a fence.
Often, multiple patents achieve this objective nicely. When a defendant/accused
infringer is faced with invalidating multiple patents, its burden is increased. It also can play well
to a jury that your plaintiff client has so many patents. “Certainly the Patent Office could not
have issued so many patents, ALL in error!” thinks the jury.
Another consideration in this area might be whether to pursue method claims (and
other forms of claims) in addition to apparatus claims. The core invention may be an apparatus,
but consider methods of making, methods of use, and product-by-process claims as well. Each
has its advantages and disadvantages. For example, methods of manufacture are often
considered less desirable than apparatus or composition of matter claims because method claims
are typically more difficult to police, but this is not always the case. Some product inventions
can very easily be the source of method of manufacturing claims because the product itself
inherently shows the method by which it was made. Thus, where the method by which a product
is made is manifested in the product, three forms of protection may be available:
apparatus/composition, method of making, and product-by-process.
Consider also, for example, the discovery that by adding argon as an inert with a
reactant gas for an otherwise known chemical vapor deposition process, a known product is
achieved, but through a manufacturing process which operates at lower temperatures and lower
pressures. Assume that these lower operating variables lower the cost of production and thus
allow the invention’s owner to compete on price. Thus, the invention would give its owner a
commercial advantage, even though the product is already known. In such a case, a wise
practitioner considers several forms of protection, including the apparatus of producing the
(known) product, the method of making the (known) product, and a “product-by-process” claim
whereby the (known) product is claimed as being made by the novel, non-obvious method. All
of these claim strategies can be employed to create a multitude of legitimate barriers against
intrusions by your client’s competitors.
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Moreover, despite the extra expense, many claim sets, and preferably multiple
patents, can aide in protecting a client’s core business. This area will be expanded upon below,
in Section C.
B. What business objective is being served?
Some companies create profit centers around licensing entire groups of patents.
International Business Machines is a classic example of this strategy. Here, having as many
patents in a particular area as possible can lead to huge licensing revenues on whole groups of
patents. If a client has 148 patents in the field of robotic control of microchip movement during
manufacturing, and a competitor wants to delve into the area, it is likely cheaper for the
competitor to license all 148 patents than to try to figure out which ones are infringed and which
ones are not, and still, on top of that Herculean effort, maintain the risk of being sued if they
select incorrectly. Thus, much bargaining power can be generated by building an arsenal of
patents in a given area.
Alternatively, it may be that a client has a very purposeful intent of generating a
single patent on which it can sue already identifiable competitors. In such a case, claim scope
and enforceability is of utmost importance. Here, a very thorough investigation of the
competitor’s activities in conjunction with a studied review of prior art and careful carving out of
claim scope would be more important than where a client needs patents for a leveraging strategy.
Where 148 patents are involved, as above, invalidating one or two is not typically going to be
worth a party’s time because it would still have to deal with the other 146. Where only one key
patent is involved, however, an accused party is going to scour the world for the key to freedom.
In such an instance, it is your job to be sure all such art has already been considered and
addressed.
Still another objective might be to build value prior to an IPO, or in an effort to
reach the next round of funding. This latter point is a key part of IP strategy for many start-ups,
where cash flow issues are a constant stress on the business. Here again, claim scope and
enforceability may be viewed as less important than where a key patent is sought with the intent
of asserting it. This may include taking any allowed claims, even if narrow, and filing a
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continuation to pursue the broader claims. This will put a patent in the client’s portfolio and
delay certain costs for later stages of business development.
Only through an investigation of the client’s needs can a practitioner take the core
invention and protect it in a way that is consistent with meeting those objectives.
C. Will the patent protect a core business?
As alluded to above in Section A, if the patent is going to protect a core business,
certain considerations need to be explored. Expanding on the points raised in Section A, a
practitioner should always consider alternative forms of claim protection, no matter what is
defined by the inventor as the primary focus of the invention. It is relatively easy, in most cases,
to take a look at the “core” of the invention, broken down to its barest form, and define it as
either a process or method or apparatus or composition of matter. But usually an invention has
more than one aspect to it, and claims should be explored to cover these aspects, especially when
the invention is key to a client’s core business.
For example, an inventor may develop a particular laminated structure having
certain barrier properties, such as a good blend of low oxygen permeability and low water vapor
permeability. The client’s business may be food packaging. A good practitioner would
immediately think of the claim to the laminated barrier material having certain layers made of
certain components. A great practitioner would think “can this be used in the pharmaceutical
industry?” How is it made? Is the method new? Can we claim the product laminate as a
product made by a particular process? What about having claims directed to the use of the
material to package food? What about claims directed to packaging liquid foods? Claims
directed to liquid pharmaceuticals? Claims directed to a roll of the material in bulk form?
Claims directed to a method of packaging food? A pharmaceutical bottle made of the material?
Flexible food packages made of the material? All of these “areas” are based on the single
invention, but all of them can create patent claims sets or, more likely (given the USPTO’s
generous application of restriction practice), several patents. These sets of patents can offer not
only the multiple fences discussed above, but also a plethora of different licensing opportunities.
These aspects should be considered in all cases, of course, but given the extra expense, will
likely only be pursued for core products.
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D. Will the patent protect a core product in an ancillary business?
Here cost considerations become a bit more important, and a client may want to
limit the overall scope of protection if the invention is not key to its business. A countervailing
thought, however, ought to be licensing or sale, either of the patent rights or the business unit
itself. Remembering that many start-ups and spin-offs are valued largely on intangibles, it is
important to remind your client that simply because an invention is not core to a business does
not mean it should be laid aside or treated lightly. Future considerations about divesting pieces
of the business should be contemplated as much as reasonably possible.
Practitioners and clients should consider “cross-selling” an invention to a field or
application that may not be central to a client’s core business. This is especially desirable where
the licensor and licensee are not even competitors, which is often the case in this scenario. If a
food packager invents a laminate that can be used in the pharmaceutical packaging industry, it
would very likely want to look at licensing it to a pharmaceutical packager. These types of
revenues by a patent holder can have huge impacts on an R&D budget, especially where the
license does not even come into play in the patent holder’s market.
E. Will the claimed invention be licensed?
As noted above, where it is known or likely that an invention will be licensed,
certain considerations should be given to claim scope. One of the key considerations ought to be
with respect to alternative fields of use of the invention.
Licensing is a key consideration to claim drafting. Field-of-use restrictions are a
very nice way for a client/patent holder to maintain a competitive advantage in its own market
place, but still bring in revenue from licensees in other fields. A field-of-use license is
essentially a grant of a license to a party whereby the license is only with respect to a particular
field-of-use. The license is limited, therefore, and the licensee cannot practice the invention
outright, but must stay within the granted field. A classic example is a claim directed to a
particular alloy. The alloy may have been developed for use in a particular surgical implant, but
a claim so limited would be a disservice to the client (assuming broader claims are possible). A
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claim directed to simply the alloy itself would allow for licenses into other fields. An exclusive
license to a jewelry manufacturer, an exclusive license to an eyeglass frame manufacturer, and an
exclusive license to a spark-plug manufacturer, could all be put into place, all while reserving the
use of the alloy for surgical implants.
Another example easily envisioned would be an invention to a particularly strong,
but light-weight, structural composite. Suppose your client invented the composite for use in
boat hulls. Would a patent and its claims limited to boat hulls be a good idea? What about uses
of the material in aeronautics and housing materials? Claims properly drafted (assuming the
prior art allows) could yield huge licensing revenues in these other fields, all while allowing the
patent holder to exclude its boat-building competitors from utilizing the material.
F. Will the patent likely be sold?
Here valuation will be a key factor. Scope and enforceability will be of utmost
importance because the due diligence of a potential buyer will determine price. Extra time and
attention ought to be given to claim scope in light of the prior art and a thorough review of the
prior art ahead of time is typically warranted.
G. Who is the client trying to exclude
Who will infringe? Customers? Horizontal competitors?
This is a very key consideration. It is always necessary to know who the potential
infringers will be for a particular patent claim. If the claim only covers customers of your
competition, your client would be left suing, for the most part, the very customers it would be
trying to get from its competition. Not good business. If, on the other hand, the claims cover
only horizontal competitors, your client would have remedies, but little in the way of licensing
revenue, unless it does not mind its competitors using the invention (which may or may not be a
bad thing). The point is that a good practitioner always has in mind the identity of the potential
infringers and drafts claims accordingly.
Suppose a party’s business is designing, manufacturing, and selling materials
handling equipment and it invents a new machine and a corresponding new method (using the
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machine) for packaging bulk powder into small bags for resale. Suppose further that the party
obtains a patent having as its broad claim a method of packaging bulk material into bags using
the machine that required the step of “packaging bags of said bulk powder . . . .” Who is the
party going to sue? It may be able to sue its horizontal competitors for contributory infringement
or inducement to infringe (as a result of their act of making and selling the machine), but the
only direct infringers are going to be those actually doing the packaging, which are most likely
going to be the party’s own customers! A claim directed to any method of using such a machine
is going to require somebody actually using the machine, and if the party is interested in suing its
horizontal competitors, it is going to need more.
H. What value does the invention have
Does it solve a problem only the client has?
Will anyone care that the client has a patent?
Something that every practitioner and client should consider before spending time
and money on the patent process is whether the effort will actually pay off. In general, ask the
client if anyone will care that a patent issues on the invention. Obtaining a patent simply for the
sake of having it is generally not good business.
Consider the situation where a particular client has a patent on a machine that it
invented several years earlier. It has granted no licenses and is the only party using the patented
machine. Suppose that the patented machine has a drawback, however, in that it can only run up
to 100 units per minute because it jams up at higher speeds. An employee solves the problem by
modifying a key aspect of the patented machine and the client now seeks a patent on the
improvement.
If your client is the only one using the machine to begin with, it might want to
consider not patenting the improvement. First of all, there may be no commercial value in
having the second patent if no one else is even experiencing the problem that lead to the second
invention to begin with. Secondly, the client may wish to keep the improvement a trade secret
with an eye toward expiration of the first patent. To the extent that there is an anticipation by the
client that the first invention will in fact be copied after the first patent expires, it may be able to
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maintain a commercial advantage by running its “improved” machine at higher speeds. Of
course, for that same reason, it might want to get a patent on the improvement. These
consideration would need to be addressed with the client directly, as only it can make the
decision.
I. What are the design arounds?
Finally, and perhaps over-riding all of the above, is a consideration of design-
arounds. Thought should always be given to this area before and after claim drafting. As will be
discussed in more detail below, after a claim is written, the practitioner should take the
proverbial step back and objectively review the claim for possible design-arounds. The
importance of this step cannot be overemphasized. As soon as the patent issues (indeed, as soon
as it is published), competitors will be looking at ways of learning from the invention disclosed
but avoiding the patent’s claims. The careful and effective practitioner has anticipated these
design-arounds and proactively incorporated their impact into the claim scope and patent
specification.
One way to address this part of the process is to take the invention (at the
beginning) and the claim after it is drafted (at the end) to the inventor(s) and go through it step
by step, element by element. At each step, ask “what would a competitor do to get around this
element, or step, of the invention?” This will lead to an understanding of, and hopefully
subsequent coverage of, these equivalents. A surprisingly large number of times, an inventor
will say, “well, he would just do this . . . .” The practitioner would have to, in that case,
incorporate that information into the claim set.
Many a time I have heard a new client say, “we patented this, and as soon as the
patent came out, the competitor just changed this one thing and got around it.” It is imperative to
find out ahead of time just what could be changed by a competitor. If the potential change
results in an adequately inferior product, or sufficiently higher cost, it may be okay to ignore.
But if the change is easy and not noticeable by a customer, it must be dealt with ahead of patent
issuance or the patent will likely have little value. Moreover, if a commercially acceptable
substitute to the patented invention is possible, it must be addressed by the claim in advance, if
possible. Of course, to the extent commercially acceptable substitutes can’t be addressed during
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drafting because of prior art concerns, a client might want to rethink the idea of pursuing patent
protection at all.
IV. Key Concepts and Strategies
After having considered the questions presented above, it is time to start drafting a
broad claim. No matter what the business context is, however, claim 1 should always be as
broad a claim as possible, as long as you think your client is entitled to its scope. Presented
below is an essentially step-wise procedure that you may wish to use as a general outline in
gathering your thoughts and actually drafting a claim.
When drafting mechanical claims, as for drafting claims in other arts, the object is
to prepare strong, broad claims. While drafting claims, therefore, it is important to bear in mind
the analysis undertaken to determine whether an accused product or method infringes a claim.
To determine infringement, the accused product is compared to a claim in the
patent. If each and every claim limitation is found in the accused product or method, that claim
is literally infringed. In the event that a claim limitation is not literally found in the accused
product or method, the claim is infringed only if the equivalent of the (missing) claim limitation
is found in the accused product.
Special considerations arise when a claim limitation is expressed in means-plus-
function format under 35 U.S.C. § 112, paragraph 6. A means-plus-function limitation is
infringed literally only if the accused product or method element performs the identical function
recited in the claim limitation in connection with the corresponding structure disclosed in the
specification, or equivalents thereof.
Although claim drafting is definitely a combination of art and science, a
structured approach to formulating mechanical claims is recommended. The following stages
are proposed.
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A. Proposed Structured Approach to Claim Drafting
1. The “Core” of the Invention
The “core” of an apparatus invention must be extracted from the
disclosure while considering the prior art. Ask: “What structural feature of the apparatus sets it
apart from the prior art and overcomes the problem sought to be resolved by the invention?”
2. Fundamental Structural Elements
The key here is to identify fundamental structural elements of the
apparatus and their interrelationship. Elements necessary for the functionality of the apparatus
must be included in the claim. Any element unnecessary for the intended functionality should be
omitted unless it is necessary to distinguish the apparatus from the prior art. Claiming
unnecessary components only offers competitors a way to design around your claimed invention.
3. Terminology and Interrelationship
Select broad terminology for each structural element. Combine separate
elements into a single element when possible. For each element, identify its relationship to other
elements. Here again the effort results in a broader claim.
4. Claim Review and Revision
After a proposed claim is drafted, the claim should be reviewed to ensure
that it accurately recites the apparatus and that it has an adequate scope. Put yourself in the
shoes of a competitor and ask: “Could I design an apparatus that has the functional benefits of
the invention while avoiding one or more of the claim’s limitations?” Then revise the claim to
remove any unnecessary claim limitations.
This practice is a critical step in claim drafting. It is sometimes difficult,
however, to be objective and think of potential design-arounds after you have just spent 20-30
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hours reviewing a disclosure, interviewing inventors, and drafting a particular claim. It can be
helpful in such cases to ask a colleague or even a non-patent practitioner (but, of course,
someone who is still properly obligated to confidentiality) to review the claim and ask questions
about possible alternatives or design-arounds.
Another, hopefully illustrative, example follows. Before reading through
it, however, just imagine that a single-wheeled wheelbarrow is the invention, and the prior art is
three and four-wheeled carts. Go through the above thought process and consider each phase
independently.
What follows is a simple example of what is discussed above, directed to
the invention of the wheelbarrow.
WHEELBARROW EXAMPLE:
receptacle (body) wheel frame legs (supports) handle
Stage A - The “Core” of the Invention
Prior Art (assumed): Three- and four-wheeled carts.
"Core": Using one wheel in combination with legs (supports) for ground contact to
provide stability and prevent rolling motion when set in place.
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Stage B - Fundamental Structural Elements
Receptacle (body), Wheel, Frame, Legs (supports), Handles.
Stage C – Terminology and Interrelationship
Frame (having support portions), Body (connected to frame), and Wheel (connected to
frame).
Stage D - Claim Review and Revision
Proposed Claim (with Broadening Revisions):
Apparatus for moving materials, said apparatus comprising:
a frame having [at least one handle portion positioned to be grasped for manipulating
said frame, said frame also having] at least one leg [portions] portion positioned for ground
contact to resist movement of said frame with respect to the ground;
a body connected to said frame and configured for holding the materials to be moved;
and
[a] at least one wheel connected for rotation with respect to said frame to
facilitate movement of said frame when said at least one leg [portions are] portion is not
contacting the ground.
B. Claim Drafting Tips Particularly Relevant to Mechanical Claims
1. Claiming Plural Elements
If an apparatus includes several similar elements, recite the minimum
number of elements necessary (e.g., “at least one handle” as opposed to “two handles” for the
wheelbarrow example). If the apparatus includes only one of a specific element but could
include several, then encompass multiple elements (e.g., “at least one wheel” as opposed to “a
wheel”). Some would argue, of course, that a device having “a wheel” includes devices having
multiple wheels. This is actually a pretty good argument, but if you write “at least one wheel”
then the question never even becomes an argument.
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2. Claiming “Holes”
Do not claim holes or openings positively; instead, recite a structure
having a hole (e.g., “a body having a recess configured for holding materials” as opposed to “a
recess”). Another example would be to claim a “tube having a channel extending longitudinally
therethrough” instead of trying to claim simply a “channel.” Moreover, claiming as a
requirement the existence of a lack of something does not work. Claim a positive structural
element that exists, such as a tube, surface, wall, or vessel, having an opening, channel, hole, or
recess formed therein.
3. Claiming “Ends”
Do not claim ends or edges; instead, claim elements having defined
boundaries. Claim end portions or edge portions (e.g., “a support having an end portion
positioned for ground contact” as opposed to “a support having an end positioned for ground
contact”).
4. Claiming Connections
Take care when reciting the relationship between two related components
(e.g., “a body connected adjacent a frame” as opposed to “a body fixed to a frame”; “a wheel
connected for rotational movement with respect to a frame” as opposed to “a wheel mounted to a
frame”). The terms “fixed”, “connected”, “integral”, “adjacent”, “attached”, “mounted”, etc.
should be selected with care.
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5. Claiming the Apparatus
Use the structural relationship between elements of the apparatus to dictate
their order of recitation (e.g., “frame, body connected to frame, wheel connected to frame” as
opposed to “wheel, body, frame to which the wheel and body are connected”).
6. Functional Clauses
When a clause explaining the function of a particular element is used (e.g.,
“a body . . . configured for holding materials to be moved”), the functional clause should
immediately follow the element to which it relates. If a functional clause describes the
interrelationship of several elements, it may be necessary to place the functional clause after the
last of the related elements.
7. Means-plus-function Elements
Historically, “means-plus-function” elements in a claim were afforded
very broad interpretation, but such elements are now interpreted more narrowly in connection
with the structure(s) disclosed in the specification. Because the interpretation and examination
of means-plus-function elements in a claim are subject to change over time, it is generally
recommended to include a claim without any means-plus-function elements when a
corresponding claim includes a means-plus-function element. Conversely, because the definition
and scope of the doctrine of equivalents is always in question and constantly changing, use of a
means plus function claim limitation in addition to claims without such elements may also be a
good idea. This, of course, is because the idea of infringement by “equivalents” is statutory only
for means-plus-function claims (35 U.S.C. § 112 paragraph 6).
8. Drawing the Claimed Apparatus
After drafting an apparatus claim, it is a helpful exercise to actually draw
on a blank sheet of paper the apparatus as it is recited in the claim (as opposed to what you
picture in your head having studied the invention!). If the claim fails to provide adequate
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guidance to draw at least one possible embodiment of the apparatus, then fundamental elements
of the apparatus have probably not been recited and/or the relationship between the elements has
not been adequately described or recited. This is consistent with the idea presented above that
you always review the claims objectively after you have drafted them, and is one objective
review that is particularly helpful with mechanical claims.
V. Conclusion
The key to effective claim drafting is to not wear blinders. Do not under any
circumstances be that “narrow-minded patent attorney” that so many companies are happy to see
working for their competitors. It is my hope that the above thoughts, experiences and
observations are helpful to those who read the words and consider their meaning.
Of course, the above framework is only a cursory overview of what can and
should be considered by those moving forward and contributing to the profession. The existence
of other factors needs to be realized, including changing laws and changing interpretations of
those laws, changing economies, globalization of patent rights, the realities of enforcement here
and abroad, and of course the reality that a client’s business will not be the same 10 or 15 years
from now, in any event.
The challenge to, and frustration of, many a practitioner lends itself to the fact that
the rules change after the groundwork has been set. A claim infringed today may not be
infringed tomorrow, if the definition of infringement changes. This type of uncertainty weakens
an economy’s dependence on the certainty of the exclusionary right guaranteed by the
Constitution. A strong economy is not friendly to doubt or uncertainty.
Another example of uncertainty is the constant ebb and tide between the good of
the patent laws and the impact of the antitrust laws on that good. Of course, no one would argue
that some parties attempt to abuse the patent system and that, where one steps out of the bounds
of reason, there they are met by the good of the antitrust laws. But this interplay is constantly
shifting. The huge antitrust overbearance of the 1970s was tempered by a swing back in favor of
patents in the 1980s and 1990s (due in large part to the creation of the Court of Appeals for the
Federal Circuit in 1982). It seems right now that we are headed back in the other direction.
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Still yet another event impacting claim scope and certainty is the global economy
and its effects on the independence of U.S. patent practice. More and more, foreign rules and
policy decisions, particularly Chinese and European, are affecting U.S. practice. With this
standardization and globalization, and the patent law reform measures now being debated,
partially as a result of that globalization, we are going to see change once again, very soon.
And what about the hugely problematic back-log of applications languishing at
the U.S. Patent and Trademark Office? This backlog is having a direct and noticeable effect on
the willingness of patentees and inventors to take advantage of the protections afforded by our
patent system.
The above issues are presented for consideration, and not as a list of complaints,
although there is likely not much to hide with respect to the underlying beliefs of the author in
these regards. Despite the reader’s opinion on these issues, however, it is certain that these and
other issues will no doubt be a cause of change, some of it good, some bad, some expected, some
surprising, but all of it change nonetheless.
To the extent the factors outlined in Parts I-IV, above, however, are taken into
account, better patents and a better patent system, will result. The irony, of course, is that the
above factors all involve planning and expectations, and the very concept of “planning”
inherently requires the expectation of a future which is by all definitions uncertain.
Compounding the irony, of course, is the fact that patent claim drafting strategies would be less
important if everything was certain! And therein lies the fun.
1 The content, views, and opinions expressed in this paper are those of the author, and not necessarily those of RatnerPrestia, P.C., its shareholders or employees.