Claim Drafting Tips

George Wheeler has published an article (pdf) that should be read by anyone and everyone doing prosecution work. Unlike most law review articles, the prose is easy to read and the advice is practical.

Here are some of George’s tips:

1. Write claims that will be literally infringed.
2. Do not rely on means-plus-function claims.
3. Write the specification expansively.
4. Claim in a circle, not a chain.
5. The Examiner is never wrong.
6. Cite the MPEP, not case law.
7. Do not add unnecessary claim limitations.
8. Do not write your opponents’ trial exhibits.
9. Do not just obtain a patent, build a patent position.

Update (April 19, 2004) Read Judge Paul Michel's claim drafting tips or tips on drafting claims from About.com.