US Patent Claim Drafting: Skills and Pitfalls - from an Examiners Perspective

This presentation will talk about claim drafting in English for patent applications to be filed before the USPTO. It will start off by explaining the basic concepts and types of claims, their relationship to the rest of a patent application, and their legal status. It will then move on to present criteria for determining what is a "good claim", as well as giving examples of "bad claims" (in particular for claims which were originally written for a Japanese patent application, and then translated into English) - identifying common problems and useful fixes to make them more patentable and valuable under US patent law. It will also describe the process used by examiners in the USPTO to examine applications and to evaluate claims for novelty and inventive step. Where possible it will use examples of claims/specifications originally written for a Japanese application, and the prosecution history of US applications for Japanese clients.