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[Patentstudent]

I have a question with respect to the sequence of claiming means and method.
Let's presume that I want to write the claims for a new method of performing a certain medical procedure and for the novel instrument to perform the new medical procedure.
Are there specific reasons or benefits in claiming the method first and then claiming the instrument to perform that method or the other way around? Or doesn't it really matter?
Thank you.

[JimIvey]

I don't think it matters, legally.

Just as a matter of how to get the claims out, I start with the most natural embodiment of the invention.  Is the invention really the device whose use happens to be novel, too?  Start with the device.  Or is the invention really the method and a device that facilitates the method just happens to be novel?  Start with the method.

Either way, crafting claims for one will probably enhance or at least influence the crafting claims for the other.

Regards.

[khazzah]

Are there specific reasons or benefits in claiming the method first and then claiming the instrument to perform that method or the other way around? Or doesn't it really matter?

I don't think it matters, legally.

Whether the method or the apparatus claim is listed first has absolutely no effect on claim scope.

I do feel compelled to mention that 37 CFR 1.75 has something to say about claim order:

(g) The least restrictive claim should be presented as claim number 1...

But I've never had an Examiner complain about my claim ordering, nor have I seen this issue brought up at the BPAI.

I wonder if that's because it's really hard to say which claim is the "least restrictive". You can almost always argue that the first independent claim is narrower in some ways than the second independent claim even if that first one is broader in others.

[Patentstudent]

Thank you both.

[Simpletown]

If it is a surgical device and method...you generally focus on the device. In many instances you can't sue anyone for infringement if a surgical method is used anyway. Check 35 U.S.C. §287. Patent eligible (yes), able to sue for infringement (no). But do whatever your client will pay for or wants.