1. Be Consistent<\/strong> \u2013 A claim term should be used consistently in patent claims. The use of inconsistent terms can cause unintended consequences during patent examination or later during patent litigation. For example, if a \u201cmotor\u201d has been mentioned in the claims, it is advisable not to refer to “the motor” as “the drive” or with any other nomenclature other than the first name given to the element. Furthermore, it is improper to add more details to an element when referring back to it. For instance, if “a gear” has been stated once, it would be incorrect to refer to \u201cthe gear\u201d as “the plastic gear” or \u201cthe worm gear\u201d or \u201cthe drive gear\u201d. This will add an “indirect limitation” on the claimed element.<\/p>\n\n\n\n2. Correct Antecedents \u2013<\/strong> The first time an element or part is introduced in the claim, it should be preceded by an indefinite article (“a” or “an”). Thereafter, the element or part is preceded by a definite article (“the”) or by “said”. The patent drafter should be consistent in the usage and must not alternate between “said” or “the”. Sometimes, an element is preceded by a numerical adjective when it is introduced in a claim such as “two containers” or \u201ca plurality of wires\u201d or \u201cat least one stand\u201d. Lastly, avoid using the expression “the said”.<\/p>\n\n\n\n3. Avoid Means-Plus-Function Terminology \u2013<\/strong>Use of means-plus-function terminology should be avoided in a U.S. patent application as it generally leads to an indefinite rejection by a U.S. Examiner. For example, instead of using \u201cattaching means\u201d that will attract an indefiniteness type rejection, a coupler is a better terminology. Also, contrary to the broad appearance of the means-plus-function, it does not cover every means for performing the recited function provided in the mean-plus-function terminology. Instead, the means-plus-function is limited to the specific structures, materials, or acts disclosed in the specification.<\/p>\n\n\n\n4. Focus on the Objective of Literal Infringement \u2013<\/strong> Claims should be drafted to target literal infringement. So, it is advisable to avoid dependency on the doctrine of equivalents while drafting. This is because, in the first stage of patent infringement, the elements of the claim are analyzed to be present in the product\/process. Then, the scope is construed in the literal language of the claim. The patent infringement analysis then proceeds to the second stage if the literal infringement is not established. The doctrine of equivalents should be applied to each claim element and not to the whole invention. It cannot remove an element completely. Further, both prior-art and the prosecution history of the patent legally limit the scope of the equivalents.<\/p>\n\n\n\n5. The Problem of Vagueness and Indefiniteness \u2013<\/strong> Quite often, <\/strong>claims are rejected or invalidated based on their vague and indefinite nature. Use of the terms such as “thick”, “heavy”, “small”, \u201ctop\u201d, \u201cleft\u201d, \u201cright\u201d, \u201chigh\u201d, and \u201clow\u201d in the claims can be considered vague by the examiner. The remedy here usually is to describe the product with reference to some other element or an external standard such as “smaller than the …” or “having a specific gravity greater than water”.<\/p>\n\n\n\n<\/span>Conclusion<\/span><\/h2>\n\n\n\nAll the points mentioned above are intended to make you aware of the practical strategies and considerations while drafting patent claims. A carefully drafted claim can create a high-value patent application and become part of a valuable IP portfolio that may save millions of dollars in litigation costs for your organization.<\/p>\n\n\n\n
If you are seeking support for drafting patents, Sagacious IP has got you covered. Our Patent Drafting service aims to not only draft patent applications that meet the patent office requirements but also make the draft future-proof by tweaking the ideas for ensuring the broadest possible coverage. To know more about our service, click here<\/a>.<\/p>\n\n\n\n– Yojit Bhugra (Engineering Patent Drafting & Prosecution) and the Editorial Team<\/p>\n\n\n\n
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