A patent can be divided into three sections: a specification, drawings, and patent claims. To obtain exclusive rights to an invention, the law requires that the patent application specifically claim and clearly state the subject matter the inventor considers his or her invention.
The patent claims are the only ones that define the exclusive rights granted to the patent applicant. The rest of the patent sections are intended to aid in understanding the claimed invention. The most important step in evaluating a patent claim is to determine whether it covers all aspects of the invention.
What is a patent claim?
Patent claim is a description of the invention or a statement about technical facts that describe the invention. Patent claims are an integral part of patent applications. It defines the patent’s boundaries and the subject matter that the patentee is trying to protect.
A patent claim is what defines the exclusive rights conferred by a grant of patent. A patent that is not properly drafted could be invalid. The patent specification does not provide a detailed explanation of the invention. Claims describe the legal rights that are granted when the patent is issued. According to 35 U.S.C 112 each complete specification must include a patent claim (or a series of patent claims) that describes the invention to which protection is sought.
types of patent claims
The claim(s) must be on a separate page and should appear after the detailed description of the invention. Claims can be classified into two types namely: independent and dependent claims.
Type #1: Independent Claims
According to the USPTO, these are claims independent from any other claims. They stands alone and includes a preamble as well as every element necessary to describe the invention. Independent claim sets the tone for patent protection in the invention.
Type #2: Dependent Claims
USPTO states that a claim or a group of claims can be presented in a dependent format. This allows for the referencing or further limitation of another claim. Dependent claims can therefore be based upon an independent claim, or other claims that were made before them. This will limit their scope of protection.
Dependent claims must limit the claim they depend on. You can achieve this by narrowing the claim scope or adding additional elements. It will be considered an improper dependent claim if it expands the claim it relies on.
sections that make up a claim
- The preamble: Preamble defines a category for the invention. The preamble clarifies whether an invention is a device or a technique.
- The transitional phrase: there are three types of transitional phrases: consisting, consisting substantially of, and consisting. The U.S. trademark and patent office state that “consisting” is a transitional phrase that means the invention is restricted to the elements contained within it.
- The claim’s body: It explains the elements and limitations of the claim. The point of novelty should be the focus of the body of claims.
How To Evaluate Patent Claims?
In order to file a patent application with the Patent Office, you must include a complete and detailed description of your invention. The addition of new material to an application is not allowed. However, rearranging an application is allowed. The applicant can use the description in the specification, the drawings and the claims filed to determine the scope of the original filing. Below we discuss the references of patent evaluation:
#1. Points of novelty
Patentees may be challenged for a lack of novelty when they include a range of parameters in their claims. A range that is substantially different from prior art is novel. A recent case involving a process for clarifying water with an alkalinity of 50 ppm or less is clear proof of this. In the case of ClearValue Inc. v. Pearl River Polymers Inc., the patentee’s claims covered an alkalinity range between 50 and 150 ppm. However, the court found that these parameters were not novel.
The point of novelty test is used to distinguish conventional elements from unknown ones. Points of novelty may also be known as a point of departure from prior art. The point of novelty test is also used to determine whether a patentable element is new when compared to known elements. The concept is applied to patent-eligibility after dissecting the conventional parts.
The application description should provide enabling information that will support the claims. The Federal circuit has applied the point of novelty approach to enablement in a case where the claims were supported by a prior art document. The case of Automotive Technologies International v. BMW North America Inc. (01-CV-71700, July 21, 2005) involved mechanical airbag sensors. The company argued that electronic sensors were known in the prior art, but the court noted that the application’s disclosure of mechanical airbag sensors was novel.
The scope of a patent claim may be limited in many ways. For example, an examiner may refuse to grant a patent if it fails to clearly define the invention. In such cases, the applicant may choose to rewrite the claims in a different way to address the examiner’s concerns.
While it is possible to grant a patent to a competitor who implements your invention, you must be sure that the claim scope is broad enough to protect the technology. Otherwise, you will risk wasting valuable time in the patent office. This is why it is important to know the scope of your patent claims and the financial returns that can be realized from exploitation. The commercial value of a patent depends on the ability of the innovating firm to exploit the invention and the extent of its scope.
One of the most common ways to limit the scope of a patent is through continuation practice. The written description requirement is an example of how continuation applications can restrict the scope of a patent. In many cases, continuation applications are used to change patent claims, and some judges have argued that this is the proper role of a continuation application. If the patent is not wide enough, the applicant may not be able to rely on the doctrine of equivalents.
When evaluating patent infringement, you must first determine if the claimed invention actually infringes the patent. Many times, the drawings or specification are broader than the actual patent claim. This means that you may have to narrow the claims during the examination process. For example, a drawing may show the entire product, but the patentee may have changed the claims to exclude the product from their patented invention.
One way to limit the scope of an accused process or device is by applying the doctrine of equivalents, which imposes a lower standard on infringement than literal infringement. This doctrine requires a substantial similarity between the accused device or process and the claimed invention. The accused device or process cannot simply read on prior art, nor can it recapture a patentee’s costs. The prosecution history estoppel and prior art are also considered in evaluating the scope of the claimed invention.
Once your invention is patented and you can determine whether your patented invention has been infringed, you must consider the potential remedies. You may seek a temporary or permanent injunction, as well as damages for the loss of profits that you suffered as a result of the infringement. Damages are not capped at a fixed amount, and if the patent is licensed, you cannot ask for less than a reasonable royalty. Moreover, if the alleged infringements have been involved in the creation or sale of the patented item, you may ask for damages up to treble that amount.
The complaint for patent infringement must provide notice to the accused infringer. This notice should be concise and clear. It doesn’t need to be full of detailed factual allegations. Moreover, you must make a plausible claim for relief. You should note that the term “probable” does not necessarily mean that the claim is true. Rather, the patent infringement complaint must make the claim more probable than facially plausible.
#4. Prior art
Often, the process of evaluating a patent claim involves assessing whether a claimed invention has been made known or is already known. For example, comic books and movies cannot serve as prior art because they do not provide enough information to support a patent suit. However, certain types of non-enabling prior art can be useful to show whether a claimed invention is obvious. This includes abandoned patent applications or provisional patent applications that were not converted to non-provisional applications.
Regardless of the reason for prior art, the effective date of the prior art must be at least one year before the patent application filing date. Prior art published one year earlier may also be relevant in determining if a claimed invention was already known. However, it is not uncommon for a publication to become prior art even after the patent owner files a patent application. This can lead to an overly broad scope of patent claims.
Various countries have different definitions of prior art. Some recognize oral disclosures as prior art. Others grant grace periods for inventors to publish before the filing date. In the United States, the prior art published during the grace period is not considered prior art under 35 US Code 102(b). Japan, on the other hand, gives an inventor six months to publish an earlier version of an invention. This period does not reduce the inventor’s novelty.
The most common ways in which prior art can be evaluated include: publication in an enabling document, publication in a journal, and public display. However, the audience of the publication is not relevant. The invention may have been described in a highly technical electrical engineer’s journal or in a junior high school textbook. The latter is considered prior art if it is known to the public before the filing date of the patent application.
As you can see, prior art can be a valuable tool for patent claim examination. When evaluating patent claims, patent examiners must evaluate whether the prior art relates to the claimed invention. This can help establish the validity and patentability of the claimed invention.
Remember that a valuable patent protects the inventor’s invention even years after it is written. A skilled patent drafter will combine science and art to achieve this goal. By crafting claims and supporting specifications the patent’s value should increase with the technology it protects.
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