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.