By Chris Hall

Womble Carlyle Sandridge & Rice, LLP

Here is a technique for rapidly drafting claims, for a patent application. This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing. Patent claims, after all, are collections of words in a highly stylized format, describing an invention. Grab a piece of paper, pencil and eraser, or pen. Or use a whiteboard or a computer application. While thinking about the invention to be claimed, write down a phrase that is at or near the point of novelty. Or, write down a few sentences or a paragraph describing the invention. Get another piece of paper, if necessary, or continue on the same paper.

On the paper, write, optionally with a circle or shape around each one, key words, phrases, actions that are part of or essential to the invention. Draw lines connecting some of these. Write words or phrases on some of the lines, in explanation of the connections.

Now it’s time to start writing the claim. What is the invention? An article, a system, a method? Pick one type of claim, and write the preamble to the claim, naming the invention or describing a purpose or function of the invention, using some of the words from the paper. If actions are involved, what is the actor for a system or method claim?

What are the pieces of the invention, and how do they interact or fit together? If a method, what are the pieces that are used in the method, and what do they do or what is done to or with them? Choose some of the words or phrases for the pieces, and some of the words for actions and/or connections. Put these together into a sentence fragment, and write that down as part of the claim. Repeat this step, forming other sentence fragments. It is not necessary at first cut to connect all of the sentence fragments, although sometimes that is the way to proceed. It is not necessary to arrange the sentence fragments in the final order for the claim, at first, although sometimes that happens.

Connect one sentence fragment and another sentence fragment, with an action or a connection, again using words from the drawing. Any of the above may prompt adding some more words, lines for connections, or notes on the drawing. And, that may prompt picking more words for sentence fragments are connections between sentence fragments. Draw arrows to show rearrangement of phrases, other connections to capture. Draw arrows to show causes, results, and attach words to these. When you have enough written out this way, do a more formal draft of the claim using a word processor and computer screen. Proceed from one independent claim to another and another, or to dependent claims, or back and forth among these.

The process is iterative, free-flowing, dynamic. There is no one correct way to do this, if any of it helps you write a claim, it’s useful. Alternatively, you can do all of this in your head, and use the above as a conceptual framework for claims drafting. Of course, claims refinement should be practiced along the way. Decide what claim terms, actions, connections etc. should be moved to dependent claims, and which claim terms can be simplified or broadened, as well as which claim terms need to be narrowed or made more specific. Crosschecking back to client disclosure, original thoughts or notes, to make sure that claiming is on track with best understanding of the invention and client needs is a good process to do more than once. All part of the art of patenting.

Chris Hall counsels clients in preparing and prosecuting patents in the electrical, telecommunications, computer software, and mechanical arts. In addition, he has 17 years of industry experience as a professional engineer, and is named as sole inventor or co-inventor on 15 granted patents. Hall is a co-author of the High-Tech Patent Agent, a blog on high-tech patent issues in Silicon Valley.