Patent Theory’s Guide to Drafting Input Claims

Patent Theory, July 17, 2020

Patent Theory is always improving the algorithm. However, the following are some tips related to getting the most out of the system now.
  • Wherein clauses shouldn’t start on their own line, and shouldn’t follow a semicolon. Patent Theory recognizes new claim elements when they are separated by a semicolon and start on a new line. If you have a large wherein clause, consider separating it from a previous claim element by a comma instead.
  • Further, if you have a wherein clause that contains a list, consider separating items in the list with commas rather than semicolons. For example, use "wherein the widget comprises: a first widget, a second widget, or a third widget" but avoid "wherein the widget comprises: a first widget; a second widget; or a third widget".
    • As another example, say you want to introduce a list of wherein clauses with one "wherein" recitation, try not to use semicolons:
      • The method of claim 2, wherein the widget comprises one or more of:
        • a switch;
        • a circuit;
        • and a host device.
    • Instead, we suggest you use commas, and no line breaks:
      • The method of claim 2, wherein the widget comprises one or more of a switch, a circuit, and a host device.
  • Wherein clauses should start with “wherein.” For example, if you start a wherein clause with “the retrieving being based on …,” Patent Theory may not be able to detect that this a wherein clause without a wherein. So, instead consider using “wherein” where applicable, for example “wherein the retrieving is based on …”.
  • Method steps should start with their action verb in gerund form, rather than some other linking phrase where possible.
    • For example, the use of “in response to” at the beginning of the method step is troublesome, as Patent Theory may not reliably identify the right action verb following such recitation. Therefore, if you can put any “in response to” statements after the verb associated with your method step, preferably in a wherein clause, the Patent Theory system will work as it should. (i.e., “determining xyx ... wherein determining is in response to ... abc” is better than “in response to ... abc ..., determining xyz.”)
    • As another example, “based on xyz” at the beginning of the claim element may be troublesome. Therefore, if you can put any “based on” statements after the verb associated with your method step, the Patent Theory system will work as it should. (i.e., “determining xyx ... based on ... abc” is better than “based on ... abc ... determining xyz.”)
  • The use of “said” can be problematic. Patent Theory uses NLG techniques to ID verbs of your method step to create associated modules/elements of the software described. Since “said” is a verb as well as an adjective, Patent Theory can confuse “said” with the action verb of the method step, as opposed to the correct verb i.e., “said widget is configured to determine”. So, use "the widget" and avoid "said widget."
  • Avoid the use of bullet points or numerical/alphabetic identifiers in the method steps, (i.e., "a. identifying ... b. recording ... and c. generating ....") and instead simply list the steps (i.e., “identifying ... ; recording …; and generating ...."). Aside from having legal implications related to order, Patent Theory may inadvertently and unnecessarily include the order identifiers in the output text.
  • Try to use a comma to separate the preamble from "comprising" or "wherein." For example, "A method for controlling interactions, comprising/wherein:" is preferred over "A method for controlling interactions comprising/wherein:", and the same is true for "wherein clauses" for example, use this "A method for controlling interactions, wherein the interactions are controlled by ... , the method comprising." and not this "A method for controlling interactions wherein the interactions are controlled by ... the method comprising."
  • If you run into parsing error, check that all of your claims are numbered correctly. Patent Theory expects claims to be numbered, and to be numbered correctly.
  • A note on the "Patent Purpose" field. It used to be that preambles contained a lot of information. However, with the trend going towards small preambles, the information that is useful for automation in the preamble is gone. Therefore, we just prompt the user for a statement. For example, if your preamble states "A method, comprising:" the tool will prompt you for a statement of the "Patent Purpose" which is meant to be a statement including a gerund and an object such as "generating patent language." This is then used in the Abstract, Title, Field of the Invention, and to introduce claim types in the Summary as well as Figures.
  • Avoid using "the step" of in your method claims. Instead, jump straight to the action verb that defines the step. There may be some legal reasons for this, but in terms of Patent Theory, if you include the extra wording for "the step of" this wording will be used in your output text. ( "In some cases, the system may further be configured to the step of including ... ." vs. what you should have in: "In some cases, the system may further be configured to include ... .").

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How To Use The Templates

Templates are a great way to customize Patent Theory to your liking. You can create different templates based on a given technology, a given client, etc. Patent Theory allows user’s to customize the template as much as they’d like. If you have any questions about the templates, please make sure to reach out to us at To understand how the templates work, here are a few points to get started.

  • The “Default Software Template” provided by Patent Theory is uneditable by default. While we are often improving that template, we wanted users to have a working ground truth that will not be compromised.
  • When you select “New Patent Template” the fields will be pre-populated based on the Default Software Template, so that you don’t have to start from scratch. Soon, you will also be able to start from any of your saved templates as well, so creating nuanced changes will be very easy.
  • You will notice detailed descriptions of various fields in the templates. The variables are indicated in brackets (<...>) and are used by our natural language processing system to take what you have provided in the claims into natural language prose at various points throughout the draft.
  • The variables include:
    • <VERB>
    • <INTRO>
    • <SYSTEM_ID>
    • <NETWORK_ID>
    • <MEMORY_ID>
    • <STEP>
    • <BLOCK_ID>
  • For an understanding of how each of the variables is used, review the template in detail, and feel free to play around with different configurations. The idea behind Patent Theory is to create a system that you can use, modify, and customize to be a part of everyday patent drafting.

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A Guide to Drafting Patent Claims for the Novice Claim Drafter

New to drafting a claim? Or, have you tried to draft a few before? Whether you are new to drafting or you have some experience, but would like to learn some basics, Patent Theory invites you to read through some of these guidelines put together and reviewed by our own experienced patent attorney advisor team.