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Phillips and Claim Drafting

July 15, 2005

So Dennis Crouch, at his excellent "Patently-O" blog posts some claim drafting tips. For the most part I agree with the thrust of his remarks: after Phillips, drafting the specification in a strategic way will be crucial. What I do disagree with is parts of his recommendations 4 and 5:

4) Your initial reaction may be to make the ensure that the specification contains no limiting features. — That approach may not be the best.  Your patent will be worthless if it attempts to cover the entire world of technology.  Focused patents that stay within their bounds can be extremely powerful.

5) Give the courts 6–months to sort out some details. — But, set-up a docket reminder for January 15, 2006 for a review of all pending applications to (i) ensure that current claim terms are properly defined within the specification and (ii) whether any preemptive amendments are be in order.

But at at this point, I think that Phillips presents only two options to the strategic patent drafter:

A. Curtail the disclosure in the specification as much as possible -- subject to the various 35 USC § 112 limits, of course). This has the benefit (as I noted in an earlier post) of allowing flexibility in claim construction: because the rules are so vague and unpredictable, you can hope to vary the scope of the patent during the course of its life -- typically narrower during prosecution and broader later. The more details you put into the specification, the more opportunities there are for an interpretation to be "discovered" by a court that goes against your interest. So this approach both limits your risk (assuming you can hew closely to the 112 requirements) and enhances the possibility of obtaining a strategically valuable patent.

B. Leave nothing to chance, present a glossary of claim terms in the specification. This approach has the advantage of nullifying the Phillips effect altogether: nobody will be able to mess with your claim scope later on. The risk here is that you (1) can't take advantage of the 'dual meanings' strategy noted above, and (2) need to have a pretty good idea of what you really want your claim to say at an early stage of the process.

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