Proposing and Writing Claims
| Author | Donald S. Rimai |
| Profession | Recently retired from Eastman Kodak where he worked as a researcher and intellectual property manager in digital printing and adhesion science |
| Pages | 107-130 |
107
Why Should Inventors Write Claims?
e claims are the backbone of a patent. ey are what give you the legal
rights to exclude others from practicing your invention. Should not, there-
fore, the attorneys write the claims? If inventors are writing the claims,
what is le for the attorneys to do? Let us address these issues before delv-
ing into what to include in claims and how to write them.
Yes, your attorney will ultimately write the claims that are submitted in
your patent applications and will most likely signicantly revise those that
you have proposed. In fact, it is likely that your attorney will propose revi-
sions throughout your proposed application. But, as previously discussed,
your attorney is a legal expert, not a technical expert. Even attorneys who
are part of an in-house legal team will not have your expert knowledge
of the problems encountered and their solutions. Nor would they neces-
sarily know what is in the related art. It is really up to the inventors to
describe the problem and its solution. at is what constitutes the inven-
tion. And, as a reminder, the claims, especially the rst independent claim,
is the description of the invention. In other words, for your patent to be
of value, you need to convey to your attorney an accurate description of
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Proposing and Writing Claims
108 A Guide for Implementing a Patent Strategy
the invention. e best way to do that is to write the claims. Do not worry
about getting all the legalities in order. at is the job for your legal coun-
sel. However, you need to provide an accurate and exact description of the
invention in the claims.
ere are other reasons why it is important for you, the inventor, to write
the claims. Over the years that I have worked with inventors, I have heard
the refrain many times that they described the invention to the attorneys,
but could not understand what the attorneys actually wrote. ey could
not see the connection between their inventions and the patent application
in general and the claims in particular. is is a serious issue as the inven-
tors, upon signing the application, are swearing, under penalty of law, that
they have read and understood the application.
At other times, attorneys have misinterpreted the information conveyed
to them by the inventors or have tried, on their own, to circumvent prior art.
Sometimes these situations are rectied. At other times, the inventors just
get frustrated with the entire patenting process, sign the required adavits,
and walk away. And, on still other occasions, the inventors simply give up
trying to understand the claims as written. None of these scenarios are good.
Now let us fast forward to sometime aer your patent has issued and
you or your company decide to assert it against an alleged infringer. You
will likely be called to the witness stand to explain to the members of a jury
your invention and why the prior art did not anticipate your invention.
You will have to explain it in sucient clarity that lay people will not just
understand your invention, but will also appreciate why the solution that
you proposed to the technical problem that you solved was not obvious.
ere is no better way to feel comfortable with your claims than writing
them yourself.
Finally, you need to discuss your invention and its relationship to the
prior art in your disclosure without discussing material that is not directly
related to your invention. In other words, as previously discussed, every-
thing presented in your disclosure is there to support your claims and
establish their novelty and non-obviousness. is is particularly impor-
tant when your disclosure is part of an overarching patent strategy aimed
at obtaining a holistic patent portfolio. Along with this you will have to
prioritize your proposed applications so that they do not conict with the
disclosures and claims of the other forthcoming applications. e easiest
way to achieve these objectives is to write the claims.
Yes, writing claims and, aer that, the disclosure is time consuming.
Moreover, many technically-oriented people do not care for writing. at
being said, submitting a relatively complete description of the invention,
the suggested claims, and the background of the problem to your legal
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