Evolution of patent claim drafting

In today's technology-driven economy, patents play a pivotal role in:

• creating and maintaining competitive advantage and a strategic market presence;
• contributing significant corporate capital and increasing market share;
• barring competition;
• providing income streams; and
• generating business opportunities.

The scope of a patent is defined by its claims ‒ obtaining meaningful coverage involves many complex processes which require the guidance of competent patent counsel. Ultimately, the value of a patent hinges on well-drafted claims which bar competition in the relevant subject matter.

Claim construction plays a precarious role in almost every patent case and is central to infringement and validity evaluations. It can also determine other significant issues, including:

• enforceability;
• enablement; and
• remedies.

The past two decades have revealed the inherent difficulties of using language to define the boundaries of abstract and intangible rights, particularly those relating to software and business methods. Such challenges have only grown with the rise of information technologies.

Claim drafting does not end with the submission of a patent application ‒ examiners can play a decisive role in determining the language of claims. Like patent prosecutors, they have knowledge of the technical field and experience in claim drafting and evaluations. As with application drafting, communication between prosecutors and examiners travels in both directions ‒ for example, claims are frequently amended during prosecution on the basis of examiners’ actions. An examiner’s primary interest is to ensure that a claim is valid on two points:

• it must not be anticipated, obvious or indefinite; and
• it must be described adequately.

In 1990 the late Judge Rich claimed that “the name of the game is the claim”, reminding us that an expertly written detailed description section of a patent’s specification is pointless if the claims are drafted in a manner that renders their infringement remote.

Artificial intelligence
Artificial intelligence (AI) based software is overcoming the difficulties and faults associated with claim drafting and is recognised as a valuable means of analysing claims comprehensively and meticulously.

For example, IClaim is a seamlessly integrated software tool for users of Microsoft Word 2003. Appearing in the right-click menu, it analyses claims and checks them for errors and accurate numbering.

Another popular software, ClaimMaster, is widely used to:

• identify errors in claims, specifications and figures;
• recover missing antecedents;
• find claim terms without support in patent specifications;
• manipulate claim amendments and indicators; and
• generate claim summaries.

It also provides automated patent proofreading and can detect various errors in claims and specifications, including:

• missing or ambiguous antecedent references;
• incorrect dependencies and status indicators;
• incorrect or redundant amendments;
• syntax errors; and
• scope-limiting ‘patent profanities’.

Further, PatentOptimizer, LexisNexis IP Solutions and TurboPatent use artificial intelligence in order to:

• calculate and generate claim status indicators automatically and in real time;
• generate textual summaries of claim amendments automatically;
• generate live previews of markups while editing, numbering, ordering and adjusting for dependencies; and
• export claims to Microsoft Word format with markup and status indicators.

Comment
Applied in the right context, artificial intelligence can provide a cheaper, quicker and more convenient method for evaluating certain aspects of patent claim drafting than retaining an expert to analyse claims manually.