Problem-Solution-Based Independent Claims

• Author: Ronald D. Slusky
• Pages: 83-94

CHAPTER SEVEN

Problem-Solution-Based

Independent Claims

The author has often thought of publishing a gag gift book entitled “Pat-

ent Claim Forms.” All of its pages would be blank. The joke is one that

only a patent lawyer can fully appreciate. Every invention is different,

and there is no such thing as fill-in-the-blanks claiming. This start-from-

scratch aspect of claim drafting is what makes it so challenging.

The claim-drafting technique described in this chapter—problem-

solution-based claim drafting—is an effective way of meeting the chal-

lenge. It arrives at a claim by transforming the problem-solution statement

into claim form, with very little being added or taken away. That such a

technique exists should come as no surprise. Stringham reminds us that

an invention is not a thing, but a definition.1 A definition is made up of

words. Thus no matter what format we may use to define an invention—

a claim or a problem-solution statement—the words that inform that defi-

nition ought to be pretty much the same in either case.

The Five Steps

Problem-solution-based claim drafting transforms the problem-solution

statement into claim form in five steps:

1. Choose one or more claim settings (as discussed below).

2. Choose one or more statutory claim types for each setting (as discussed

below).

3. Remove the problem-related language and the boilerplate “The problem of

. . . is solved by,” but retain language defining the environment or context

in which the problem arises.

4. Stitch the remaining language into one or more claims, adding as few

words as possible.

1. See p. 5.

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