David Boundy and David Grossman, A Claim-Drafting Checklist, 104 J. Pat. TM Off. Soc'y (JPTOS) 507 (Oct. 2024)

Abstract

From the time we begin working as patent practitioners, we start picking up rules of thumb for claim drafting. But not all rules are created equal. Some really are more important than others. The most important rules only come into play after your application issues as a patent, so we don’t see them in action during intra-PTO proceedings. Many are motivated by respect for the “unknown unknowns” and unpredictability of facts that will arise over the next 26 years—prior art will arise that you can’t predict today, your client will develop future improvements for which you’d like your original filing date, infringers will seek to design around your claims, infringers’ counsel will seek to argue for claim constructions that you can’t predict, and the case law will evolve. Because these rules are about future events that haven’t happened yet, and aren’t even predictable, they’re really hard to absorb. But they are the rules that will govern value of your patent over decades. This article collects many claim-drafting rules of thumb, and prioritizes them into groups so you know how to balance various concerns against each other.