This document discusses developing good patent claims and is presented as a guide for fellows. It explains that developing patent claims is a two-step process that involves identifying the invention and then properly expressing it in claim language and syntax. The identification step involves understanding the purpose and differences between the invention and prior art, including which differences provide commercial advantages. The expression step means drafting the claims using proper legal terminology from the patent disclosure form. It emphasizes identifying the key features to include in the claims to protect the intellectual property from competitors.

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Developing Good Patent Claims:
A Fellow’s Guide to Successful Interaction With the OTC
Jim Patterson
August 8, 2016
Developing patent claims.
Writing patent claims.
The rest of the story.

2. SM
© 2015 Patterson Thuente Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Developing Good Patent Claims:
A Fellow’s Guide to Successful Interaction With the OTC
August 8, 2016
®

3. Developing Patent Claims: A Two Step Process
1. Identify the Invention
2. Express the invention in
proper claim lexicon
and syntax
Identification
90%
Expression
10%
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4. What is the product, really?
Where did the idea of the product originate?
What motivated the decision to spend time, effort and money developing the
product?
What problems are being solved?
What is the purpose of the product?
What is the intended impact of the product?
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Developing Patent Claims: Identify the Invention

5. What is the current state of the art?
What key words should be used in patent and literature searches
What is the prior art?
What are competitors’ products?
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Developing Patent Claims: Identify the Invention

6. What are the differences between the product and the prior art?
How is this intellectual property different from existing technology?
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Developing Patent Claims: Identify the Invention

7. Which differences have economic value?
Which differences provide a commercial advantage?
Why is this intellectual property better than existing technology?
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Developing Patent Claims: Identify the Invention

8. Which differences are new, useful and non-obvious?
35 USC §101,102,103
Don’t be a lawyer!!
Instead, ask yourself:
Which differences will help us gain market share if we are the only ones
who can make, use, sell or offer to sell the product?
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Developing Patent Claims: Identify the Invention

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Developing Patent Claims: Express the Invention
University of Minnesota Intellectual Property Disclosure Form

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Developing Patent Claims: Express the Invention
University of Minnesota Intellectual Property Disclosure Form

11. University of Minnesota Intellectual Property Disclosure Form
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Developing Patent Claims: Express the Invention

12. Writing Patent Claims: The Product
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13. Writing Patent Claims
1.3 What are the applications of this Intellectual Property?
1.4 How is this Intellectual Property different from existing technology?
1.5 Why is this Intellectual Property better than existing technology?
1.6 Please list the key words to use in patent literature searches
5 Prior Art
6 Commercial Market
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14. Writing Patent Claims
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15. Writing Patent Claims
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16. Writing Patent Claims: Describe Key Features
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17. Writing Patent Claims: The Claim
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18. The Rest of the Story
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19. Questions?
Jim Patterson | patterson@ptslaw.com | 612.349.5740
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