Service

Spec/Claims Drafting for CIP, Continuation, or Utility Patent Application

Our general guidance regarding Claims Drafting for Continuation/Utility Patent Applications

Based upon your disclosure and claims priorities list, we quote our flat-fee quotes, which is our fee to only suitably revise, or draft Claims for a patent application in the US, with no new spec matter.  Usually, Claims Drafting is for a Continuation Application, to either make claim fixes, pursue broader claims or to claim embodiments in the application that were not previously claimed in any allowed claims; otherwise, such unclaimed novelties would be automatically dedicated to the public.  If you instead want to add new matter (i.e., new description and/or drawings) then a Separate specification and drawings drafting work needs to be quoted and ordered, and a continuation-in-part (CIP) patent application must instead be done, and a separate quote for such CIP would be needed before engaging us for any work.  Other situations with the service may apply is if client is applying the specification and drawings, and we are drafting the claims, and maybe the abstract.

Our quote above does not include any other fees, by way of example and not limitation: USPTO fees, formal drawings, PCT filing, Prosecution, any out-of-pocket expenses (e.g., overnight mailing, etc.), responding to USPTO notices/letters that are not due to our action or inaction, etc.  

The ‘Basic’ Claims Drafting level will generally adjust the last claims entered into the application (usually the claims allowed) to match your new claims goals, which you specify to us.  This level makes the minimum effort, if any, with respect to reviewing the prosecution history or trying to design broader or tighter claims. The basic review level is geared towards minimally amending existing claim. 

The ‘Good’ Claims Drafting level goes beyond the ‘Basic’ level by making some effort to review the prosecution history to design hopefully more viable broader claims along the lines of your new claims goals, and makes more significant effort towards closing patent loopholes and avoiding common litigation pitfalls.  The “Good” level is geared towards more extensive efforts to adjust and tighten the existing claims to be more defensible, yet harder to design around. 

The ‘Top’ Claims Drafting level goes beyond the ‘Good’ level by making significant effort to review the prosecution history to design hopefully more viable broader claims along the lines of your new claims goals, and makes a strong effort towards closing patent loopholes and avoiding common litigation pitfalls.  In cases where client is not clear on what else in the specification might be the basis for a more likely allowable claim, the top level service may, upon client’s written request at the time of disclosure submissions, to a, very limited extent, “farm” the spec for some other unclaimed matter which has at least some expectation of forming an allowable claim, which would otherwise have been dedicated to the public.  The “Top” level is geared towards very extensive efforts to draft tight, allowable and defensible claims using common best practices and in light of the specification and any prosecution history.