Always Draft the Claims First

Earlier this week, there was a comment thread on Patently-O which debated an interesting patent prosecution question—Do you start a new patent application by drafting the claims first? I am amazed that this is even a question. Let me jump ahead to the correct answer: Always.

The contrarians argue that for complicated technology, it works better to prepare the detailed description first, during which process they come to understand the invention. And then, after they understand the invention, they are able to write the claims.
I agree that you have to understand the invention before you draft the claims. So that is the true first step. But you still have to draft the claims before you prepare any other part of the application.

The claims really are the patent, at least the meaningful enforceable part of the patent. The only purpose of the other parts of a patent—the detailed description, the figures, the background etc.—is to give life to the claims by telling others in the field how to implement the invention. And until the claims are written, there is just no way to know what is needed in the other parts of the application. Once the claims are written, then they need appropriate supporting figures, background, and description.

So one problem with writing the description before the claims is that you don’t know yet what needs to be in the description, or what can be left out. And a good patent application leaves out a lot of interesting material related to the invention, material that is not needed to support the claims and which the client can protect as a trade secret. A poorly prepared description written before the claims can bleed trade secrets everywhere, for no reason.

But some would say that they can go back and revise the description after they have written the claims to remove unnecessary material. First of all, that is easier said than done—removing existing discussion is difficult to do so that everything you don’t need is gone and everything you do need remains. Moreover, everything that gets revised out was never needed in the first place and was a waste of time. Either the client pays for that unneeded time, or the partner writes it off the bill, but either way it was time stolen away from the central problem and task of writing a patent application, writing the best possible claims.

Always draft the claims first.