From the Practical Patents series

In this edition of Practical Patents, Neil Kardos makes a provocative statement that challenges the conventional wisdom of patent drafting: the traditional order of drafting a patent application may be fundamentally backwards.

The Traditional Approach

For decades, the standard method for drafting a patent application has followed a predictable sequence: first, create the figures; then, write the specification to describe those figures; and finally, draft the claims. This approach feels intuitive—build the visual foundation, describe it in detail, and then define the legal boundaries of protection.

However, Kardos argues that this traditional method often necessitates significant rework. By the time a drafter reaches the claims, they frequently discover that the specification and figures do not adequately support the claim scope they want to pursue. This leads to costly revisions, added figures, and restructured specification sections—all of which could have been avoided.

The Claims-First Advantage

Kardos proposes turning traditional patent drafting on its head by starting with the claims. This claims-first approach offers three distinct advantages:

  1. Clarity in Novelty and Non-Obviousness: By drafting claims first, the practitioner is forced to think critically about what makes the invention novel and non-obvious before investing time in figures and specification. This upfront analysis ensures that the most important aspects of the invention are identified early and given appropriate emphasis throughout the application.
  2. Efficiency in Drafting: When the claims are already defined, all subsequent steps in the drafting process become more streamlined. The figures can be designed specifically to support the claimed elements, and the specification can be written with a clear understanding of what needs to be disclosed and emphasized. This eliminates the back-and-forth revisions that plague the traditional approach.
  3. Strategic Focus: A claims-first methodology ensures that the specification and figures emphasize the crucial aspects of the invention—those that define the scope of protection. Rather than writing a comprehensive technical document and then trying to extract claims from it, the drafter builds the entire application around the strategic core of the patent.

A Paradigm Shift

The claims-first approach turns traditional patent drafting on its head, but its logic is compelling. By beginning with the end goal—the claims that define the scope of patent protection—every subsequent step in the drafting process becomes more purposeful and efficient.

When you start with the claims, you start with the strategy. Everything else follows naturally.

For practitioners willing to adopt this approach, the result is a more coherent, well-supported patent application that requires less revision and more effectively protects the inventor's innovation.