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How do I write my own patent claims?

I'm trying to write a patent myself and have a question about a possible contradiction in my claims.

Briefly, the 'problem' claims are:

  1. Apparatus (blank), comprising:
    an X (blank);
    a Y on the X; and
    a Z.
  2. The apparatus according to claim 1, wherein the Z is the Y.

Does the inclusion of Z in claim 1, especially following the word 'and', prevent me from saying that Z is Y in the dependent claim 2?

~ New York

Foremost, I can not imagine why you would want to structure your patent claims like this. I can only guess that, without any guidance, you are trying to outsmart and outwit yourself. Please do not be offended, it is a good sign. I think everyone goes through some mental gymnastics on their way to writing good claims. I sure did.

What is the function of the patent claims?

With patent claims, you describe how your invention is different from everything that has come before your invention. And, at the same time, you describe as little about anything else as you can get away. It's tricky. I can spend as much as 40% of my time writing a patent on getting the language and structure of the independent claims correct on an initial application.

First, to be clear, I recommend that everyone use a patent attorney to write and file a patent. There is a lot of nuance in Patent Law, and, you want someone who deals with patent law everyday to do the heavy lifting.

On the other hand, sometimes independent inventors need or want to write their own patents. If that is what you want to do, I suggest that you take the job seriously. Here is the advice I give to anyone who wants to write a patent:

How to train like a Patent Attorney

  1. Start with reading Patent It Yourself by David Pressman. This is just an introduction. Pressman's system is overly simplified for lay people. A better introduction is Jeffrey Sheldon's How to Write a Patent Application.
  2. Take at least one Patent Drafting Course. This will give you hands on experience writing a patent with guidance from a mentor. Here are a couple of popular courses providers, just search for current offerings on patent drafting: PLI and PRG. Be sure the course you take offers CLE credit for lawyers. These courses are typically reviewed by bar organizations to be sure the content keeps lawyers educated over time.
  3. Read (and stay familiar with) the following sections of the MPEP: 600, 700, 900 and especially 2100. The MPEP stands for the Manual of Patent Examination Procedure. It has 27 volumes and 6 appendixes.
  4. Finally, if it is still available, try to get a copy of the "Underground Patent Mentor" by Paul Hentzel. The text is way out of date, but, he has a down-to-earth, old-school approach to patent drafting and prosecution. By seeing the contrast between old school drafting methods, and, new school drafting methods (like in the PLI and PRG courses), you can start to appreciate the nuance.

By following this action plan, you are essentially training to become your own patent attorney. This could be a smart move, especially if you have a lot of inventions or if you need to file many improvements for your invention. This happens often when you begin to build prototypes and commercialize inventions.

Lazy patent claim option

If you are really lazy, there is another option. Do not write any patent claims at all. If you represent yourself before the patent office, the Patent Examiner is required to write a patent claim for you. Be warned, the Patent Examiner probably has not had any training in writing patent claims either. Likely, the Examiner has just read many more claims that you.

Dire warning about Patent Litigation over your future patent claims

This seems like a lot of work. Remember, if the patent enjoys commercial success, an opposing lawyer will likely have a million dollar (or more) budget to pick apart your patent, while trying to invalidate it. If you understand modern patent drafting theory, you can avoid rookie mistakes.

Good luck with your application and your patent claims.

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