IP: Drafting Claims

Draft a claim for a disclosed invention or idea

Background

A claim is a single sentence that describes an invention or clarifies methods of use for an invention. Claims may also further clarify parts of other claims (e.g., dependent claims). Initial rough claims are written to describe the important characteristics of intellectual property that will be examined by the United States Patent and Trademark Office (USPTO). Finalized claims provide the framework for legal arguments (Patent Defense and Patent Prosecution) and help determine marketability (Freedom to Operate).

The number of claims can vary (Design and Plant patents can have just 1 claim along with a figure) and require at least 1 broad (independent) claim followed by several narrow (dependent) claims that pertain to the IP. Claims can define the method of use for the invention (utility) and what the invention is made of (composition).

The Process

  1. Review Invention Disclosure.
  2. Draft Rough Claims from Invention Disclosure.
  3. Perform a prior art search using rough claims.
  4. Perform patentability analysis using rough claims.
  5. Finalize claims and submit U.S. Provisional Patent Application.

The Exercise

Rough claims are written using information from the client’s invention disclosure. Your task is to draft and write a description and claim(s) section pertaining to your client’s IP. This will include a description of the object or method along with claims, and at least 1 independent claim. You will need to familiarize yourself with your client’s IP and the terms-of-art (ToA) of the field. These ToA can be used in your claims and will be included in the mock invention disclosure form. For this exercise, you are an intern for a patent attorney.

 

To get you in the mindset for this exercise – Imagine you were writing claims for a pita sandwich. It would look something like:

What is claimed is:

  1. (Independent) A sandwich comprising of: a first bread layer, a filling, and a second bread layer.
  2. (Dependent) The sandwich of claim 1, wherein the filling is adjacent to the first bread layer and the second bread layer.
  3. (Dependent) The sandwich of claim 2, wherein the filling is edible.
  4. (Dependent) The sandwich of claim 3, where in the filling comprises a meat, a sauce, a cheese, and at least one vegetable.
  5. Etc.

Task 1: Draft rough claims

Step 2 from the process. Read the description of the invention (this serves as an invention disclosure for this exercise).

Draft between 5 to 20 rough claims for your client who wants to patent a new method to use an inhibitor that they have been researching. The inhibitor is fidgetin-like 2. For this task, write at least 1 independent claim that identifies the important characteristics of said object or method, and several dependent claims. Remember, claims can define utility and composition. 

For reference, here is the patent for fidgetin-like 2 (Google Patents). Review the different patents filed in 2012, 2014, 2016, and beyond to see differences.

 

The Deliverable

The deliverable will be a mock patent description (background section only) along with claims. Generally, the description comes after the claims. A statement such as “What is claimed is:” precedes the claims which are numbered. Examples are shown. Focus on the claims and description sections. Do not worry about the summary of invention, figures section, or data section

Resources:

Skills used to perform this task: 

  • Strategy
  • Market research
  • Technical writing

Skills used in this field:

  • Technical expertise (STEM field)
  • Legal compliance
  • Project management
  • Collaborating with clients
  • Dealing with conflict

To view detailed lists of skills in job descriptions for policy careers, please see workforce data generated by Boston University’s BEST program.

Additional responsibilities

A professional in the field of intellectual property may also perform these activities:

Read more about careers in intellectual property and patent law in this resource generated by Duke University.

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Simulation author: Luisalberto Gonzalez, PhD

Simulation vetted by patent professionals in Atlanta and St. Louis