The “Specification First, Claims Later” School Just Closed Down Permanently. Thanks to AI.

What is drafted first, the specification or the claim?

Call this the chicken-egg problem of patent drafting. For a long time now, scholars have debated on what is the better approach to patent drafting—should the claims be drafted first followed by the specification (or the description as it is known is some countries) or is it the other way around? Historically, the claims were the last part of the written specification to evolve and that's the reason why some of the early patent legislation expressly say that the specification shall end with the claims. As early as 1884, a legislation in the United Kingdom mentioned this: “A specification, whether provisional or complete, must commence with the title, and in the case of a complete specification must end with a distinct statement of the invention claimed.” But historical evolution doesn't necessarily reveal the optimal state. For instance, if you are looking to design the most ergonomic and efficient keyboard, the QWERTY layout—developed for now-obsolete typewriters—may not be the best strategy.

The History of Textual Representation

The representation of the invention before the patent office evolved differently in the two countries that contributed significantly to the development of patent law: the United Kingdom and the United States. In the UK, patents began as Royal privileges that allowed for the introduction of new technologies from continental Europe. The early grants came with the condition of training local apprentices that is some way contributed to the transfer of technology. In 1561, Elizabeth I granted a patent for saltpetre, a key ingredient in the manufacture of gun power, to a German captain to come to England to teach her subjects the art of making saltpetre, on condition that the process will be reduced to writing. This was an early instance of reducing the invention to writing, but the practice was far away from the modern patent specification, which became mandatory in the late 19th century in the United Kingdom.

The history in the United States evolved differently. We do not see any mention of the description or written representation of the invention in the early days. Rather, miniature working models were submitted to the patent office which offered a material representation of the invention. Various factors—including three devastating fires at the patent office that destroyed many models and the challenges of proving infringement in legal cases—led to the invention being represented primarily through detailed textual descriptions rather than physical models. Here again, the claims evolved at a later stage as a tool to distinguish the invention from the prior art.

The Two Schools

The order in which the parts of a specification are drafted in a matter of debate with some practitioners preferring to draft the specification (description of the invention) first and then drafting the claims, while others who create the claims first before writing the description of the invention.

Claims are conventionally placed at the end of the specification. So, if you take a linear approach to patent drafting, claims should be come after the rest of the specification—technical field, background, description of drawings, embodiments, examples etc. However, in some countries, claims precede the specification. We can broadly classify these approaches as Claims First and Specification First Approaches.

Claims First

The authors of the book Patent it Yourself advocate the "Claims First" approach. They say:

Patent attorneys almost always draft the claims before drafting the specification and drawings. Why? Because the specification must show in a figure, and describe in text, every element of every claim. If you draft the claims first, they will provide a good checklist as you draft the specification.

The author of Patent Application Drafting: A Practical Guide also advocates a “Claims First” approach, but with a slight twist:

Here is my own personal trick of the trade: As many practitioners do, I write my claims first, before anything (actually, I do my drawing sketches first, then I draft my claims using the sketches).

The author of How to Write a Patent Application also prefers the “Claims First” approach:

Practitioners, such as the author, who prefer to start with the claims usually revise the claims and add claims after drafting the remainder of the specification. It is generally recommended that the drafting of a patent application begin with the claims.

Specification First

The Specification First approach is discussed in Faber on Mechanics of Patent Claim Drafting. It calls for listing all the various elements in the preferred embodiment in the disclosure—the drawing and the specification.

Then with the drawings and/or the specification, the main claim is prepared by selecting, out of the catalogue of elements, those elements which are deemed critical for the invention. Other elements are saved for inclusion in dependent claims.

The Philosophy behind the Schools

Though books on patent drafting do not delve into the philosophies behind the approaches to drafting, it is not difficult to unearth the driving force behind these approaches to creative writing. The specification first, claims later approach reminds us of an approach to fiction writing where you start off without exactly knowing how it will end.

Driving with the Headlights on

E. L. Doctorow said: "Writing is like driving at night in the fog. You can only see as far as your headlights, but you can make the whole trip that way." Starting with the specification (description) would certainly give the impression of not being in complete control of the process. At least, when compared to the claims first, specification later approach.

Thinking Slow, Acting Fast

In his award-winning book, How Big Things Get Done, Professor Bent Flyvbjerg explains the "Think slow, act Fast" approach for managing large scale projects. Drafting a patent cannot be compared to, say, decommissioning a nuclear reactor, but the lessons offered by this approach are valuable and can be replicated in different situations. The "Think Slow" phase involves deliberate and careful analysis and planning and the "Act Fast" phase symbolizes quick and decisive execution. This approach is best explained in the book with the example of Pixar Planning: how Pixar spends about two years in a deliberate planning phase where ideas are iteratively refined through extensive story-boarding and script development.

Once the creative vision is thoroughly vetted and the plan is set, Pixar shifts gears into a rapid production phase. The books says that a Pixar movie usually goes through the cycle from script to audience feedback eight times—all in-house—before the actual movie is shot. What the public get to see is the 9th version of the movie.

The claims first approach involves the "Think Slow" phase where the inventive concept is clarified, the problem-solution statement is created, the embodiments are determined and once the claim is finalized, the "Act Fast" phase of completing the remaining parts of the specification and filing the patent application is executed.

The School which AI goes to

Many of the modern AI models are trained on a diet of patents. Consider this. A study on C4 (Colossal Clean Crawled Corpus)—a massive text dataset created from processing and cleaning data another massive data set the Common Crawl web corpus—notes that the single most represented website in the corpus is patents.google.com., indicating that much of the documents used for training were patent documents. Another training dataset called "The Pile" uses large amounts of USPTO Backgrounds in its training material. Given the amount of "patent" training AI have already received, with millions of patent specifications used as a part of the training, AI models inherently understand the value of patent claims. You are more likely to get better results if you first draft the claim and then go about generating the other parts of the specification. Some of the specialized drafting software will generate the "summary of the invention", "abstract", "title", "description of drawings" just by submitting the claim and clicking a button.

5 Reasons Why Claims should come First

Here are some justifications as to why the claims should be drafted first.

1. Inverse thinking is a great mental model: The claims encapsulate the invention’s essence, providing a clear endpoint that guides the rest of the application. By flipping the traditional approach and beginning with the claims, you anchor the invention’s core essence. This inversion creates a clear endpoint that not only guides but also shapes the drafting of the entire application. This is inline with the mental model first used by Carl Jacobi and popularized by Charlie Munger, "Invert, always invert."

2. Auto-generation using AI tools is much easier: With claims in place, sections like the Summary, Abstract, and Description naturally follow their structure and content.

3. The ends justifies the means: Drafting claims early promotes uniform language throughout the specification, avoiding later inconsistencies and some of the internal objections like claims not based on the matter disclosed etc.

4. Helps address sufficiency requirement through drawings: Early claims preparation helps identify and order all necessary drawings for the application.

5. Best way to train new practitioners: Starting with claims is a proven method for teaching new practitioners how to draft a complete and efficient patent application.

The last point, training new practitioners of the art, is the sole reason why this newsletter exists.

Notes:

Faber, Robert C. Faber on Mechanics of Patent Claim Drafting. 7th edition. Practising Law Institute, 2017.

Attorney, David Pressman, and David E. Blau Attorney. Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office. Twentieth edition. Berkeley, California: NOLO, 2020.

Rosenberg, Morgan D. Patent Application Drafting: A Practical Guide. 1st edition. Oxford U.K.: Oxford University Press, 2012.

Weinberg, Gabriel, and Lauren McCann. Super Thinking: The Big Book of Mental Models. Illustrated edition. London: Portfolio, 2019.

Slusky, Ronald D. Invention Analysis and Claiming: A Patent Lawyer’s Guide, Second Edition. Second edition. Chicago: American Bar Association, 2013.

Sheldon, Jeffrey G. How to Write a Patent Application. 3 edition. New York City: Practising Law Inst, 2015.

Flyvbjerg, Bent, and Dan Gardner. How Big Things Get Done: The Surprising Factors That Determine the Fate of Every Project, from Home Renovations to Space Exploration and Everything In Between. Crown Currency, 2023.