Green-Arrow IP Helping Entrepreneurs Manage IP

Many patent attorneys will tell you that claim drafting is best left to the professionals.  That makes some sense given the legal microscope that claims will be put under if a patent is ever challenged.  And if the technology turns out to be valuable, the patent will be challenged.  However, Gene Quinn at IPWatchDog.com has just shared two excellent presentations on claim drafting for inventors that I think points out the real value to be gained when inventors understand the claim drafting process, and draft claims for their own inventions. I've embedded Gene's presentations here, and I think they're valuable for inventors even if you plan to have a patent attorney draft the claims that ultimately get submitted to the USPTO.

Advantages to Drafting Claims for Your Own Invention

• it focuses you on what the real invention is
• it makes you think precisely about how your invention compares with the prior art
• it makes you think clearly about the terms you've used in the description of the invention (the "specification")
• it puts you in the mindset of someone who may eventually challenge your patent
• it helps a patent attorney better understand what you think the invention is
• it potentially saves money if you hand the final drafting over to a patent attorney

Disadvantages to Drafting Your own Claims

• you may miss the truly inventive part of your invention
• your framing of the technology may cause the attorney to view the invention too narrowly
• you may find the technicalities of claim language annoying and a waste of time
• if you submit your claims without having an attorney review them, you've missed the opportunity for an experienced second set of eyes on your drafting.
• you get what you pay for

Having given that list, I always encourage inventors to take a stab at drafting at least the core claims for an invention.  I think it makes our work together more productive, and allows us to step back and really discuss the invention, and the prior art, which is the most important counsel I think a patent attorney can provide for an inventor.

So thanks Gene, you've given the community a truly valuable contribution.