Introduction

• Author: Ronald D. Slusky
• Pages: 81-82

Introduction to Part II:

Drafting Individual Claims

Drafting patent claims can be a challenging task, particularly for the nov-

ice. The specter of that blank sheet of paper or empty computer screen

can be daunting.

However, if a problem-solution statement has already been devel-

oped following the principles presented in Part I, the hard part will

have already been done. Problem-solution statement in hand, the patent

attorney can begin claim drafting not with an empty screen, but with a

substantial kernel of inventive essence. The time invested in getting the

problem-solution statement just right will now bear fruit. Far from being

an isolated activity, drafting the claims becomes through this approach

the capstone of a comprehensive invention-analysis process.

PART II—Drafting Individual Claims—shows how it is done.

CHAPTERS SEVEN and EIGHT present two techniques for drafting the

patent application’s broadest claims. Both techniques take advantage of

the hard work that went into developing the problem-solution statement.

These two techniques complement each other, helping us to achieve a

healthy measure of diversity in the claim suite—the subject of Chap-

ter Sixteen. The claim-drafting technique described in Chapter Seven

is problem-solution-based claiming. This technique develops a claim

directly from the problem-solution statement itself, with very little being

added or taken away. Little thought needs to be given to the inven-

tion itself. All the thinking and analysis that went into developing the

problem-solution statement gets directly applied to the claim. Chapter

Eight’s technique is inventive-departure-based claiming. This approach

also relies heavily on the problem-solution thought process. It is more

open-ended, however. The claim drafter is set free to bring creativity

to bear, resulting in a virtually limitless variety of claim structures and

ways of expressing the broad invention.

Claims of intermediate and narrow scope are the subject of CHAPTER

NINE. These are claims that qualify or limit the broadly claimed inven-

tion by reciting additional elements, particularizing already-recited ele-

ments, or particularizing relationships among the recited elements. One

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