Patent Drafting Method: Pros & cons of drafting claims and converting claims to descriptions



What are the advantages and liabilities, if any, of drafting patent claims for an invention first, and then converting the claims into a provisional patent specification with the same wording and structure as that used for writing claims? [omitting, of course, the use of the word 'claim' or 'claimed'].

For example: 1. A desk means for use on a desk top wherein: (a); (b); and (c) the improvement wherein: (d); (e); and (f); whereby: (i) and (ii).

  1. The desk means as described in description 1 wherein; (a) X (12) comprises Y (14) and Z (16); (b) said Y is capable of supporting M (18), comprising H (18a) and I (18b), in an inclined position facing frontward; and (c) said Z is capable of supporting N (20), comprising J (20a) and K (20b), in an inclined position facing frontward.

  2. The desk means as described in description 2 further including ....

Luke Lisle

Posted 2016-05-20T23:09:51.037

Reputation: 53



Many practitioners draft claims before drafting the specification. When you think about claiming you think broadly. If you start the specification first you are likely to start, and possibly end, with describing a specific embodiment. After the thought that goes into preliminary drafting of claims one is in a better position to generate a wider range of embodiment and variations on those embodiments.

However the language of claims and the language of a description are very different. Specification describes and claims define. The description should be reasonably reader friendly. Structuring it like "2. the item 1 of description with further addition of . . ." is not what anyone would want to read to understand your invention.

Also, in the U.S., the word "means" means something very specific. If you do know the meaning of the term-of-art "means", by all means do not use it.

George White

Posted 2016-05-20T23:09:51.037

Reputation: 21 648