The importance of sound, patentable claims in a patent application has always been important, but its importance has only increased since the implementation of first-to-file standard in March 2013 in the wake of the America Invents Act. Here are three tips for giving a patent application’s claims section the best foundation for success once you file it with the USPTO.
The claims section of the application is not the place to make introductions. If a claim refers to “the oscillating widget,” the patent examiner who is assessing that claim should already have learned all about “an oscillating widget” while reading the description of the invention. If they have not, they will almost always issue a non-final rejection for the application. Any portion of an invention that supports that invention’s claims in any way must first be introduced and described in the disclosure section of the application.
If the claim references any portion of the invention that was not previously described, the claim is lacking an antecedent basis. A missing antecedent basis in one or more claims is one of the most common reasons for rejection under Section 112. More careful patent drafting can spare an application the resulting delay and its attendant costs.
Make the invention’s distinctiveness obvious to any examiner. Experience changes perspective. As skilled and capable as most patent examiners are, some may be in the early stages of their careers, especially given the rate with which the USPTO has had to hire to keep up with the explosion in patent filings over the past decade. Veteran patent practitioners may view or interpret a proposed invention’s claims differently than a less experienced examiner.
One way this issue can manifest is when an examiner is comparing claims against those of any inventions they may have identified as prior art. These may include works that the applicant already identified and ruled out as infringement possibilities during their own prior art search. Rather than ignoring these earlier inventions during the drafting process, the safer course is to anticipate them as potential red flags for the examiner.
Be objective. Try to look at the earlier inventions with a fresher, broader perspective. Re-examine the claims in the application against those of the would-be prior art. Try to determine whether there are opportunities to redraft the claims language to better distinguish itself from the prior art, even if you believe the previous draft has established the uniqueness of the new invention.
Employ a patent thesaurus. When drafting or revising claims, access to an extensive patent thesaurus can make life much easier for a patent practitioner. Just as the concept of “prior art” can be subjective, so can the terms and phrases that are used to describe an invention or to articulate the invention’s claims.
This is particularly true when prosecuting patents internationally, when variances in personal understanding of technology concepts are compounded by language differences. Make sure any patent thesaurus you use is populated with not only with a USPTO-based dictionary, but also with terms from the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO), if not other, smaller international patent authorities.