Patent Drafting for Beginners:

The anatomy of a patent claim

By Gene Quinn Print Article
December 10, 2016

Inan earlier article on patent

claim dra ing I discussed what
you must do before you ever think
about writing patent claims.See A
prelude to patent claim dra ing.
Today we pick up from there to
discuss in a very basic way what
must go into your patent claim.*

Of course, this puts the cart a little

bit before the horse. Lets recall
that in order to obtain a utility
patent on an invention in the U.S.
a non-provisional utility patent
application must be filed. A utility
patent is di erent from a design
patent. A utility patent will define
the structure of an invention, as well as the way it operates. A design patent merely
protects the way a product looks, or in patent speak the ornamental appearance.
While design protection can be quite important for certain inventions, and many
inventors pursue both design and utility protection, utility patent protection is
much stronger and typically the type of protection most inventors will elect to
pursue.
The rights ultimately granted in a utility patent are defined by the patent claim (or
claims)reviewed by the patent examiner and ultimately issued in the patent. While
the specification (i.e., text and drawings)patent application must define the
invention in its full glory, if you do not have claims covering a particular aspect of
what you have disclosed then you have not been awarded those rights. Thus, the
claims are frequently described as the most important part of the patent
application because they are said to define the scope of the exclusive rights granted
by the government.

Patent claims are di icult to read and even harder to write. The complexity of
patent practice is why many (if not most) inventors will seek professional assistance
from a patent practitioner, and the patent claims are the part of the application that
are the most technically complicated.

Do You Have a New Invention Idea?

CLICK HERE to Submit your Invention. 100% Confidential. No Obligation.

What the Law Says About Patent Claims

A nonprovisional patent application must have at least one patent claim particularly
pointing out and distinctly defining the invention, although most patent
applications and issued patents will have many more than one claim. For the basic
filing fee you can have up to three independent claims and up to twenty total claims
without incurring any additional claim fees. Because a patent with more claims is
considered stronger and more valuable as a broad general rule, you might as well
have at least as many as you can for the price of the basic filing fee.

A claim may be written ineitherindependent or dependent form. An independent

claim stands alone and does not refer to or incorporate any other claim. A
dependent claim refers to a previous claim and further limits the invention, either
by incorporating an additional element or limitation not previously introduced or
further narrowing an element or limitation that was previously introduced.A claim
in dependent form incorporates by reference all the limitations of the claim to
which it refers.

 Create Non Disclosure Agreement Powered By:

Non Disclosure Agreement CREATE DOCUMENT

Three Simple Rules for PatentClaim Dra ing

First, every patent claim needs a preamble, which is the introductory phrase in a
claim.** The general rule is that the preamble of a claim does not limit the scope of
the claim, but try and stay away from functional language if you can. Functional
language is not wrong and it will ordinarily not limit a claim, but why take a chance?
It is best practice to avoid functional language with only a few exceptions. For
example, the patent examiner may be willing to give you a claim if you add some
functional language. If that is the case then you need to decide whether it makes
sense to add the language, which in many cases (although not all cases) it will. So
try something like:A shovel as a preamble instead of: A shovel for digging

Second, every patent claim needs a transition.** The most common transitions are:
comprising and consisting of. Comprising is by far the most common because
it means the invention includes but is not limited to the elements identified in the
claim. Consisting of is closed and means that the invention is only what is
described.Generally speaking, you see consisting of as a transition in the
chemical, biotech and pharmaceutical arts, or more broadly in areas where the
technology is highly unpredictable.*** For mechanical and electrical inventions,
so ware and methods, you will almost universally see comprising used because it
will result in the broadest protection.

Third, the first time you introduce a limitation

(i.e., an element, characteristic, internal
reference, etc.) in a patent claim you MUST
introduce it with either a or an, as is
grammatically appropriate. (i.e., Primary
antecedent basis).Subsequently you refer to
the already introduced limitation by either
said or the. (i.e., Secondary antecedent basis). This can be quite di icult for
beginners because the three most common words in the English language a, an
and the are all terms of art for patent claim dra ing.
Patent Claim Dra ing Examples
Below in an example of an independent claim that applies the above stated three
simple rules, which is taken from U.S. Patent No. 6,009,555, titledMultiple
component headgear system. I have put the preamble in a red box, the transition in
a blue circle, and Ive bolded and underlined the primary and secondary antecedent
basis. Ive used said in this example. The word the could have been used, but for
those starting out said is probably best because it is a little more forced, which
will hopefully help you make sure you applying this rule properly.

Illustrative independent claim 1, which is inspired by U.S. Patent No. 6,009,555.

Below are examples of dependent claims, again using the invention found in the
555 patent as our guide. Once again,the preambles are in red, the transitions are in
blue, the antecedent basis are bold and underlined. There are a couple things to
notice, however. First, for dependent claims the preamble must match up with the
preamble from the broadest independent claim in the chain. Here the invention is a
headgear apparatus, so all of the dependent claims will be to a headgear apparatus.
Second, the transition for a dependent claim will either be wherein, which is used
when something already introduced is being further narrowed, or further
comprising when something new is being introduced for the first time. Third,
notice that claims 5 and 6 do not depend from claim 1, but rather dependent from
other dependent claims. This is how you chain claims together. Finally, If you look at
the patent you will notice this is not the order of the claims. There is a technical
mistake in the order of the claims as issued in the patent, which could be raised by
an examiner but typically is not any more. You are supposed to have all claims that
depend on claim 1 before you have any claims that depend from claim 2 and so on.
If you look at the 555 patent you will see that our dependent claim 4 corresponds
with issued claim 8, which would lead to a Rule 1.75(g) objection if you do that in
your application.

 Illustrative dependent claims inspired by U.S. Patent No. 6,009,555.

Still to come in this series writing method claims and advanced claim dra ing
strategies. Stay tuned!

UPDATED on Tuesday, December 13, 2016, at 2:42 pm ET to add the comment

found below at **.
 _______________

* This and other articles on IPWatchdog.com should not be viewed as

encouragement for those who can a ord professional assistance to cut corners and
do things themselves. If you can a ord to hire a patent practitioner you should. Of
course, the more you read and understand the better prepared you will be to
meaningfully assist your chosen patent attorney or agent. For many, however, the
choice will be either to do it yourself or give up. The reality facing all entrepreneurs
is that there is never enough time or money to do everything; that is the nature of
being a start-up entrepreneur or serial inventor. This tutorial, and the many other
articles on IPWatchdog.comarerequired reading for those who have consciously
decided to pursue a patent process on their own. Proceeding on your own comes
with great risk. Read as much as you can, educate yourself to the greatest extent
possible, and try and find professionals who will assist you piece by piece as
necessary.

** A preamble and transition should be thought of as absolutely requiredunless you

are claiming a new compound or synthetically created element. For example see
U.S. Patent No. 2,699,054 (particularly claim 2), which covers tetracycline. Also see
U.S. Patent No. 3,161,462, which covers Element 96. It is the extraordinary situation
where claims will not have a preamble and/or a transition.See alsoMPEP 2173 (t).

*** A full explanation as to why this is true goes beyond the scope of this article.
Su ice it to say for now that when you use consisting of as a transition you narrow
the universe of possible prior art. Additionally, in unpredictable fields this can be
useful because you want to claim what you know works and not capture too many
things in your claim that will not work, which could render the claim invalid.

Tags: antecedent basis, claim dra ing for beginners, famous inventors, functional
limitations, how to write a patent application, independent inventor, independent
inventors, inventor, nonprovisional patent, nonprovisional patent application,
nonprovisional patent applications, patent, patent application, patent claim
dra ing, patent claims, Patent Dra ing, Patent Dra ing Basics, patents, preamble,
transition phrases, utility patent
Posted In: Educational Information for Inventors, Inventors Information,
IPWatchdog.com Articles, Patent Basics, Patent Dra ing, Patent Dra ing Basics,
Patents
There are currently 21 Comments comments.

1.
AAA JJ December 10, 2016 10:55 am
 First, every patent claim needs a preamble

No it doesnt.

Second, every patent claim needs a transition.

No it doesnt.

2.
Gene Quinn December 10, 2016 2:27 pm

AAA JJ-

You are wrong.

-Gene

3.
step back December 10, 2016 5:42 pm

It would be stoop8 not to have a transition (comprising or consisting essentially of) but it
would not be impossible.

Example: What is claimed is: Compound A mixed with compound B in accordance with a
mixture ratio A/B equal exactly to Pi.

4.
step back December 10, 2016 5:45 pm

Yes I know, 112 indefiniteness.

(Not as to the value of Pi but as to meaning of mixture ratio )

5.
Benny December 11, 2016 5:31 am

Gene at 2,
True, but there are exceptions. See claim 1-8 of US3161462 for a rather extreme example.
6.
Gene Quinn December 11, 2016 1:17 pm

I love it. I write a basic claim dra ing tutorial that by the express statements in the article
are intended for those who are newbies and know nothing about patent claim dra ing
and the learned patent attorneys among us are taking issue with the statement that
every patent claim needs a preamble because out of the millions of patents that have
been issued there is one example of a patent that was issued on a synthetic element
having an atomic number 96, and rather than following proper protocol, which is to have
a preamble, which could have (or probably even should have) read A synthetical
element, the patent examiner allowed a claim to read: Element 96.

As I explain whenever I teach patent bar students, the rules are the rules and what you
will be tested on. The fact that some examiner will ignore the rules and let you get away
with something that is not allowed doesnt mean that the rule is not the rule.

So please, be my guest and write your claims without preambles and transitions. But for
those who dont want to have their claims rejected and objected to you will include a
preamble and a transition in every claim.

Hoping that an examiner will allow a claim without a preamble and transition is stupid.
Expecting a claim that has issued without a preamble and a transition to remain valid
upon challenge is even more stupid.

7.
step back December 11, 2016 3:03 pm

Well let that be a lesson to your newbie patent law students here of how persnickety the
law can be.

There is a di erence between absolutist words like need must shall and less
rigorous words like should.

Every patent claim should be written with a preamble and a transition phrase because
those two items can respectively provide important benefits such as

And Ill the teacher fill in the rest.

8.
 Gene Quinn December 11, 2016 3:27 pm

I suppose I should have written it saying that unless you are a Nobel Prize winning level
independent inventor working in your garage you must have a preamble in your claim
and you must have a transition.

I probably should have just deleted these comments rather than run the risk that any
newbie would want to listen to the well you really dont need a preamble or a transition
line. Because if youve ever worked with independent inventors or those who are new to
the field youd know that if you said that then what they would hear is simply a preamble
and a transition is unnecessary.

Interestingly, this article comes from a slide deck prepared years ago in cooperation with
the United States Patent and Trademark O ice.

For me, when teaching newbies, if you need to do something in 99.9999999999999999

percent of cases Im comfortable saying that asymptotically approaches 100% and Im
comfortable with how I characterized the rule. Im sure I could look up the applications
you file I wouldnt find any examples of claims without preambles or transitions, but I get
it. What I said is only right in 99.9999999999999999 percent of cases and clearly that is not
always.

So please, go ahead and file claims without a preamble and without a transition. Im sure
that is a wonderful strategy! I just ask you report back and let us know of your great and
glorious success with that strategy.

9.
Prizzi's Glory December 12, 2016 4:46 am

I would explain the issue di erently.

Element 96 is well understood physicist terminology that implicitly expresses patentese

idiom as follows.

An atomic structure comprising: a nucleus that has exactly exactly 96 protons.

An expert would a irm that Element 96 is tremendously clearer to a PHOSITA than the
patentese form of the claim.
 Gene should have stood his ground. All patents have preamble and transition, but in
certain technological arts the preamble and transition can be subsumed into well
understood domain specific nomenclature, abbreviations, or (even) diagrams.

Patent practitioners must have at least some non-legal technical knowledge.

10.
Edward Heller December 12, 2016 4:25 pm

AAA JJ is right.

One of my colleagues got a patent on an article of manufacture having two words, one of
them A.

I long ago stopped using any preambles other than the broad classification: apparatus,
process, system, composition,or manufacture. Too o en in litigation the preamble comes
back to haunt.

11.
Prizzi's Glory December 12, 2016 5:26 pm

Here are 1 word claims from US3775489.

The individual words are all domain specific terminology that subsumes the patentese
preamble and transition. A pure patentese form of the claim would be far less clear to a
PHOSITA than the one word domain specific language.

12. Perfiuoroperhydrocoronene.

13. Perfluoroperhydrodecacyclene.

14. Perfiuoroperhydronaphthacene.

15. Perfluoroperhydroovalene.

16. Perfluoroperhydropentacene.

17. Perfluoroperhydro-9,10benzaphenanthrene.

18. Perfluoroperhydro-1,2-benzanthracene.

19. Perfluoroperhydro-l,3,6,8-tetraphenylpyrene.
12.
Prizzi's Glory December 12, 2016 5:28 pm

We find a similar situation in the tetracycline patent.

2. Tetracycline.

13.
AAA JJ December 12, 2016 9:06 pm

What rejection or objection to the claim could the examiner make for lacking a preamble
or transition phrase? What section of 35 USC requires a claim to have either?

14.
AAA JJ December 12, 2016 9:08 pm

Youre comfortable with how you characterized the rule? What rule is that?

15.
Prizzi's Glory December 12, 2016 10:23 pm

Here is the rule for a chemical formula in a claim.

2173.05(t) Chemical Formula [R-11.2013]

Claims to chemical compounds and compositions containing chemical compounds

o en use formulas that depict the chemical structure of the compound. These
structures should not be considered indefinite nor speculative in the absence of
evidence that the assigned formula is in error. The absence of corroborating
spectroscopic or other data cannot be the basis for finding the structure indefinite.
See Ex parte Morton, 134 USPQ 407 (Bd. App. 1961), and Ex parte Sobin, 139 USPQ
528 (Bd. App. 1962).

A claim to a chemical compound is not indefinite merely because a structure is not

presented or because a partial structure is presented. For example, the claim
 language at issue in In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) referred to a
chemical compound as a polypeptide of at least 24 amino acids having the
following sequence. A rejection under pre-AIA 35 U.S.C. 112, second paragraph, for
failure to identify the entire structure was reversed and the court held: While the
absence of such a limitation obviously broadens the claim and raises questions of
su iciency of disclosure, it does not render the claim indefinite. Chemical
compounds may be claimed by a name that adequately describes the material
to one skilled in the art. See Martin v. Johnson, 454 F.2d 746, 172 USPQ 391 (CCPA
1972). A compound of unknown structure may be claimed by a combination of
physical and chemical characteristics. See Ex parte Brian, 118 USPQ 242 (Bd. App.
1958). A compound may also be claimed in terms of the process by which it is made
without raising an issue of indefiniteness.

16.
Joachim Martillo December 13, 2016 6:25 am

I am taking the patent bar exam on Dec. 27 and am studying for the exam by means of the
PLI patent bar preparation course.

One of the post course sessions goes over patent 5,402,728 which has the following claim.

1. A releasable attaching apparatus comprising:

(a) an attaching member having walls defining a cavity therein and having a failure
zone adjacent to said cavity;

(b) actuating means within said cavity, said actuating means being a composition
that undergoes a phase change from a solid to a liquid wherein the volume of said
liquid is larger than the volume of said solid, said larger volume causing a pressure
build-up within said cavity until said attaching member breaks at said failure zone;
and

(c) initiating means for initiating said phase change within said actuating means.

I really hate nominative absolutes, and the phrases below are examples:

1) said actuating means being a composition that undergoes a phase change from a
solid to a liquid and
2) said larger volume causing a pressure build-up within said cavity.

Nominative absolutes provide attendant circumstance to the verb, which in this case is
claim from the phrase I claim, which precedes the list of claims.

Because the nominative absolute construction can be construed to have temporal,

causal, conditional, or concessive force, the construction is inherently ambiguous even if
not indefinite in BRI sense. Nominative absolutes can be painful to translate into other
languages.

A wherein clause provides further delineation of a limitation, and from the grammatical
standpoint wherein is equivalent to the prepositional phrase in which and the
antecedent of wherein should be the noun phrase to which the claim is directed. In this
case the noun phrase is a releasable attaching apparatus.

When I write claims, I prefer to put a list of wherein relative adverbial clauses a er the
recitation of the limitations (thus at the same grammatical nesting level as the
transition that also modifies the noun phrase to which the claim is directed). I then place
the last of nominative absolutes a er the relative adverbial clause list. Because the
nominative absolutes modify the verb that precedes the claim list, the nominative
absolutes are at the next lower grammatical nesting level in relation to the list of
relative adverbial clauses.

The claim writer was not as precise with respect to grammar as I am. I would have written
the claim as follows.

1. A releasable attaching apparatus comprising:

(A) an attaching member having walls defining a cavity therein and having a failure
zone adjacent to said cavity;

(B) actuating means,

(i) which is within said cavity, and

(ii) which is a composition that undergoes a phase change from a solid to a
liquid,

(a) whose volume is larger than the volume of said solid, and
(b) whose larger volume causes a pressure build-up within said
cavity until said attaching member breaks at said failure zone; and
 (C) initiating means for initiating said phase change within said actuating means.

I eliminated the nominative absolute and the wherein clauses because they seem more
appropriate to dependent claims. In the above formulation, the relative pronouns of the
relative clauses show the correct intended relationship of modifier and modificand
something that should be immensely useful in any infringement trial.

I do not deny that nominative absolutes can be useful in claims. I only prefer to avoid
promiscuous use of them and to employ them only in circumstances where possible
ambiguity is minimized. Nominative absolutes might also be useful in introducing claim
specific terminology and definitions, but I have never seen them so used.

In case readers have not guessed, I am building an automatic claim parser to assist in
clarifying what a claim will mean to a grammar-aware judge in an infringement trial.

An automatic claim parser that produces a clear modifier-modificand chart may also help
during a Markman hearing and in persuading a jury of the validity of an infringement
complaint.

17.
Joachim Martillo December 13, 2016 6:30 am

I meant the list of nominative absolutes and not the last of nominative absolutes.

18.
Gene Quinn December 13, 2016 2:56 pm

Ive amended the article to take into account the comments. Obviously, it is possible to
have a claim without a preamble and a transition if you claim a compound and/or a
synthetically created element. If anyone has any other examples Ill amend the article
further.

As for whether Im comfortable with saying a claim needs a preamble and a transition, I
am. That is how claims are written. To suggest otherwise is to look for the extreme
exception and then attempt to make that extreme exception into the rule by suggesting
that a claim body would be definite enough without any context.
 Earlier in the thread In In re Fisher is used as an example, but that example includes a
preamble and a transition. polypeptide of at least 24 amino acids would be the
preamble and having would be the transition. See MPEP 2111.03.

19.
Anon December 13, 2016 7:12 pm

Gene,

I suppose one lesson from the exchange to the audience that you were aiming at is that
patent law can be complex, and exceptions abound.

Like other areas of complex law, there are definitely traps for the unwary.

20.
Vince S January 14, 2017 1:41 am

Hi Gene,

I truly appreciate what you are doing here. Could you kindly give any indication when you
might get to writing method claims and advanced claim dra ing strategies. Stay tuned!

I am dra ing a provisional patent for something that, relative to the examples given, is so
big I struggle to know how to deal with the translation to minutia, or if I should even try.
This is akin to inventing a car if all we had is motorbikes. Sure some people did put extra
wheels on their wheelbarrows and motorise them, and others did build passenger jets
without wings and put wheels on them, which is the kind of prior art around, but nobody
looked at it from the perspective of mass transport of a population. Not quite, but
su iciently illustratively for the purpose, I am trying to patent a car in the modern era
where lots of the bits exist but just never assembled as a 5 person personal transport
device. Do I just patent an aerodynamic box with doors, 4 wheels and a method to propel
and steer them? which could be anything from lightweight kevlar boxes that are self
propelled to the biggest stonker of a boat engine or anything in-between.

I am not meaning to ask for advice as I dont think that is what you want to do here, just
point out that people with big ideas have a heck of a lot to wade through, and even how
to approach the whole patent task when that is where you are coming from is pretty
opaque. It needs to be knocked down to bite sized chunks, but if I was patenting a car I
could easily write a few hundred claims as I would have ideas about how each of the sub-
 systems should be done, and able to claim them widely enough that I could intend for
example to use mechanical, hydraulic and electric power assisted steering which took
the real inventors some decades to get through that set of developments. I already know
a lot about the pathway of where I will be taking this thing, despite that much of it is just
conceptual ideas in my head. Could write many pages describing this, but as you point
out, the practical execution of the protection all comes down to the claims so I am
starting there. Love some tips!

By way of background, for 18 years I have had this idea for a methodology to knock 20%
o the road toll at population scale level and, now that some of the last bits of supporting
technology is available, I am finally building an (expensive!) proof of concept prototype.
All funds are going into that and it would be a poor value case to put money into a patent
.vs. getting the details sorted, and I even wonder if I should patent it at all as what I am
doing is simple enough to copy big picture but the devil is in the details, and I have a
lifetime of experience getting details right in big complex projects. It may just be the big
picture concept I should patent and leave the details out entirely

All very confusing? What I will actually be doing is submitting a provisional patent
application in the coming week then I have a year to get the funding together for the first
major roll-out, which WILL include having a patent lawyer assist with the filing of the
formal patent. I am also going to try asking for a pro-bono patent review of the
provisional before submitting it, which if it can happen might get better protection.
Eventually the story will turn up on http://www.vrdriversim.com, there is a teaser there
now.

All this adds up to I am pretty keen to read your further thoughts on advanced claim
strategies any chance you will be getting that one out any time soon? Thanks again for
all that you have done in this space.

21.
Gene Quinn January 14, 2017 1:26 pm

Vince-

I have some information on writing method claims here:

http://www.ipwatchdog.com/2016/06/18/patent-applications-method-claims/id=70212/

I will try and circle back with more on method claims over the next couple weeks.

-Gene