Claim What's Yours

Claims in a Patent

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One of the key elements to every patent application is what is referred to as claims. Claims are the bread and butter of patent law and crucial to determining whether a suspected infringer has actually committed the act of infringement or not.

What are claims?

According to 37 CFR 1.75, “the specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.” Although this is a circular definition, it gives light that a claim is essentially the scope of what the inventor is identifying as his own invention and possibly more importantly, define the infringeable bounds.

Types of Claims

Although all claims serve, relatively, the same purpose, there are different types of claims that one may come across during their patentability search or even while drafting an application pro se (by themselves).

Apparatus Claims are claims that identify certain elements and limitations of a machine or manufacture.

Method Claims are seen in process-type inventions where the claims will identify the steps that the inventor defines as patentable.

Claims in a Composition of Matter can vary in complexity by including graphics of complex chemical structures that would otherwise be indefinite and not concise if attempted to be put into words. Alternatively, these claims can be put more simply to include the the elements of a mixture.

A Design Claim (singular) is the only claim within a design patent and is phrased as such: “The ornamental design for a *insert title of invention*, as shown and described.”

A Plant Claim like a design claim, is singular and follows the format: “The new and distinct variety of *insert variety of plant* herein described and illustrated and identified by the characteristics enumerated above.”

Claim Formats

Product-by-Process Claims are unique in the fact that they are a cross between an apparatus or composition or matter claim (i.e., a product) and a method claim. Although the format is written to include elements of both, the product that is manufactured as a result of the process is what is protected. The potential problem that may arise through this practice is that the same product, made through a different process, will still count as prior art against the claimed invention.

Means-Plus-Function Claims are claims that are written with the intention to cover as much as allowed by the specification using the phrase “means for,” to describe any apparatus that serves a specific function. (Ex. Rather than claiming a door knob, one might claim a “means for opening a door,” which would increase the scope from a knob to a knob, handle, a push bar, or anything else that is used to open a door.)

Markush Claims are claims that seemingly use alternative language in a specific way that allow the patentee to avoid an indefiniteness rejection that they would otherwise face if they tried to claim alternatives in most any other way. Claiming an “element that is either A, B, or C” is prohibited, however a Markush claim, named after Eugene Markush, is phrased slightly differently but essentially covers the same thing that one might expect. An example of a Markush claim would be “an element selected from the group consisting of: A, B, and C.”

Jepson Claims are unique in the sense that they include a willing admission of prior art in the preamble, followed by the improvement that is sought to be patented. In other words, Jepson claims are directed to improvements of the prior art. Applicants must be cautious when using this claim format, as an examiner may be able to more easily reject the claims as obvious under 35 USC 103.

Beauregard Claims, now relatively unused, are claims directed to computer-readable mediums and instructions. Basically, patentees would draft claims that would include the steps that the computer would have to go through followed by the process that the inventor sought protection for. This became outdated once significant rulings determined that a claim will either be patentable or not under 35 USC 101 depending on its end, regardless of the means (similar to product-by-process claims).

Kit Claims are apparatus claims wherein the elements are unconnected (a requirement under 35 USC 112), but because they form a “kit” are able to be claimed and not be rejected as indefinite.

Independent vs. Dependent Claims

In an application, applicants may submit 20 total claims, 3 of which may be independent claims, before they are hit with a surcharge. Independent Claims are claims that stand alone and do not reference any other claims. Dependent claims are claims that refer to elements in previous claims to add further limitations thereto. See the example below to understand this better.

1. A device comprising elements X and Y. (Independent)

2. A device as in Claim 1, further comprising element Z. (Dependent)

Target Claiming

Target claiming is a strategy where applicants draft claims wherein the first independent claim is as broad as the specification will allow, and all proceeding depended claims further narrow the scope further and further.

Claim Language

Consisting is a term that is commonly used in patent claims and is “closed,” meaning that any additional elements other than the ones claimed, will not be held as infringement.

Comprising, Containing, and Including, unlike consisting, are considered to be “open,” and any additional elements other than what are claimed, will be viewed as infringement.

Consisting essentially of is a term that is used to limit the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics.

Final Note

Claims, from identifying scope, to formatting, to the specific language that applicants must use, can be very challenging to “get right” unless you are an experienced practitioner. To ensure that your application, and hopefully the eventual patent that follows, are not rendered inoperative because of faulty claims, the best advice I can give would be to seek counsel with a licensed agent or attorney.

Warning and Disclaimer: The pages, articles, and comments on IPCleveland.com do not constitute legal advice. The articles published express the opinions and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPCleveland.com.