Patent Drafting and Claim Strategy
An English overview of Hideki Takaishi's Japanese commentary on drafting original specifications and choosing claim language in light of subsequent litigation.
Preserve options for future claims
Consider not only the initial claims, but also possible narrowing amendments, divisional applications and corrections. The original disclosure should support the configurations and combinations that may later become important in response to validity challenges or competing products.
Consider how the stated problem affects the patent
The formulation and placement of the problem to be solved can affect claim construction, support, amendments, divisional applications, corrections and inventive step. The article does not treat a more detailed statement of the problem as invariably advantageous; the relationship between the whole specification and potential future claims matters.
Explore different ways to express the claims
The article discusses twelve approaches, including amendments in response to examination, dependent claims, functional and subcombination claims, use limitations, disclaimers, parameters, claimed effects, method claims, separate applications, terms of degree, and claims addressing indirect or multi-party infringement. Their suitability depends on the invention and the support in the original disclosure.
Read the original article
Hideki Takaishi, 「特許『出願』価値の最大化戦略－当初明細書の工夫＋クレーム文言の工夫＜12選＞－」, Patent, Vol. 75, No. 8 (2022), pp. 91–104.