When drafting a utility patent applications, which component is decided first, the claims (scope) or the embodiments?
Does the claims come first and then the inventor furnish as much embodiments as possible to support the claim scopes?
asked Jun 15 at 6:50
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1A good question. I’ve worked with lawyers who drafted claims first and others who drafted the spec first. I’m not sure there is one best way. Some iteration during editing is inevitable.– Eric SCommented Jun 15 at 16:25
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2 Answers
Q: Which component is decided first, the claims (scope) or the embodiments?
A: In the end it doesn't really matter much, because the main aim is something else. If you have a valuable invention on your hands (and if not, then face it, any money spent on patenting is likely to be wasted) then what you most urgently need to do, is first to try what may be an act of clairvoyance: try to foresee what general and specific forms of the invention are going to be popular and in demand.
Some people approach that best by thinking of overarching principles if there are any, others think best in terms of examples first. Or elements of the two approaches may be combined.
But in either case, when you have generated your ideas, you then need to think through what it is going to take, to make and use all of those forms of the invention that you rate as potentially most popular.
Your description and claims for the invention need not be limited to what you have done already, perhaps as experiments, useful though those are. -- And your description and claims should not be limited to past achievement especially if there are better ways that you can think of, but not yet had time to implement.
You need not (and should not) say you have done something that you have not done, but it is perfectly permissible to describe what you are confident about, by saying 'X can be done' or equivalent potential language. There are of course perils in 'sticking your neck out' too far, and if you make a statement of potential that fails, it may have costs in terms of the validity of the patent, and such mistakes may or may not be rectifiable by cutting the failed things out of the patent and claims by amendment.
Part of the technique of being bold but not too bold here is not to overdo promises of performance, especially untried performance, but be as generous as you can in providing solid practical advice on how to implement all of the different useful options that you contemplate.
After you have done that, you should be in a better place to formulate what the essentials are to put in the claims. When drafted, these should be viewed and reviewed as often as needed to ensure that the valuable things that you plan fall within the scope of a claim or claims, but that the claims are not so broad as to cover non-useful things or anything that in its claimed ensemble has already been described or used.
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This is a valuable answer, thanks. While in college I had the opportunity to meet Harold (Doc) Edgerton (en.wikipedia.org/wiki/Doc_Edgerton), one of the great inventors of the 20th century. He told me to "claim the world". I took this to mean be aggressive in writing broad claims since those can be amended.– Eric SCommented Jun 16 at 1:16
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There is a difference between the “predictable arts” like electronics and physical mechanism and unpredictable arts like biology and chemistry.– George White ♦Commented Jun 16 at 18:28
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@EricS - I met him during the protests in 1970 when the president’s office was taken over. I was in Walker looking bewildered trying to figure out the cafeteria system when he approached me to generously explain it. I assumed he thought I was an “outside agitator”. No one has never been so helpful to an outside agitator.– George White ♦Commented Jun 16 at 18:37
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@Eric S : 'claiming the world': I appreciate the sentiment, not entirely a bad attitude: but it ignores a trap waiting to swallow up inventors. If you do claim 'the world' (i.e. somethng very broad), that claim is ~sure to be rejected in examination. You may succeed in arguing against the rejection or not, but an over-broad-looking claim is a target asking for attack. The difference then between a well- and a poorly-drafted patent lies in the answer to the question, what is left when that claim has to go? Have you a valuable intermediate fallback? and another, if that goes too? And so on?– terry-sCommented Jun 16 at 21:53
Before you get to the drafting stage you need to understand the aspects of your invention that are new and provide valuable benefit to a user/customer.
If a competitor made a similar product without your patented feature how good a product would it be and how would cost be affected? Then think about what is the core of that invention.
Wordsmithing claims can come later but an initial pass at drafting claims can help you focus on that core before you get too far into the description and embodiments.
answered Jun 16 at 18:49
