A patent claim is undeniably an essential, if not the most crucial, part of a patent. It precisely explains what is claimed by the invention and what is to be protected. They are the only ones that define the exclusive rights granted to the patentee. Hence, making them the most significant part of a patent application. However, the language of patent claims can be hard to comprehend. As a practicing patent attorney for over 20 years, I see many inventors give up when they encounter the claim section. This blog aims to explain why the claims are written in a particular way and how claims should be construed. Read on if you are interested in dealing with this important part of patenting.
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What is a Patent Claim?
Patent applications must clearly state the inventor’s invention to be granted exclusive rights. Apart from primary information such as the inventor’s name, filing data, and patent class found on the front page, a patent usually consists of the specification, drawings, and one or more patent claims.
Patent claims define the scope of protection granted by a patent. They specify the boundaries of what the patent holder has exclusive rights to make, use, and sell. The claims are the most important part of a patent because they determine what the patent covers and what it does not cover. They are used to determine if a product or process infringes on the patent, and they form the basis for any legal action taken for patent infringement. Therefore, it is important to draft clear and concise claims that accurately reflect the invention and its scope of protection.
Patent claims are usually a description or a statement of technical facts that describe the invention. A patent claim is an integral part of a patent application. It defines the patent’s boundaries as well as the subject matter the patentee seek to protect. It also clarifies what the invention covers and the scope. Patent specification is the “support” for the claims and describes the invention in detail.
essential characteristics to include in any patent claim:
- Complete: Claims must fully cover the invention.
- Specific: The claim language should be clear to allow others to understand what the patent covers.
- All claims should have support in the drawings and written descriptions.
WIPO defines a patent as a type of intellectual property that grants an inventor the exclusive right to an invention. In short, this can be, a new process, method, product or other intellectual property that gives an inventor exclusive rights to an invention. In addition, the public must be able to access technical information about the invention to obtain a patent. Next, we’ll discuss why patent claims are so important.
What are the importance of patent claims?
Incorrectly drafted patents could lead to invalidity as patent claims define the Patent’s protection. According to the Patents Act 1970, every complete specification must contain a patent claim which describes the invention for which it seek protection.
Properly written patent claims will ensure that your invention gets the protection it requires. Therefore, it is important to create the claims in the correct format. These are the reasons you should accurately write patent claims:
Reason #1: To Protect intellectual property
Well-written claims are the bottom-line of a good patent. These claims allow you to retain all rights to your inventions and designs. Moreover, you can use the rights to sue anyone who creates or sells your invention without your permission.
Reason #2: The technical description of the invention
Patent claims include the technical specification of the invention. Hence stating all the technicalities of the invention broadly is very crucial. In addition, one needs to shed light on other unknown technical aspects fields to which the invention relates.
Reason #3: Alternate uses of the invention
To accurately write patent claims is very important as it includes the alternate use of the invention. The most challenging thing for an inventor is to think of all the possible ways an invention can be used. It is important to state all the aspects which prove to be helpful in the future.
Reason #4: Problem-solving Description
Patent claims must include the solution to the problem the invention is trying solve so, writing might be a difficult task. Patent prosecution can result in a rejection of an invention if the objectives are not clear. Hence, it becomes easier for the patent examiners to grant the patents if one clearly states the problem and the solution.
Can you Ask for Additional Claims after patent Allowance?
Yes, it is possible to apply for new patents to extend the coverage of an allowed patent application, as long as you do this before the application matures into an issued patent. There are several ways to do this:
- Continuation Applications: A continuation application is a type of application that allows a patent holder to add new claims to a pending or issued patent. This can be useful for adding new coverage to a patent that is approaching expiration.
- Divisional Applications: A divisional application is a type of application that allows a patent holder to divide a pending or issued patent into two or more separate patents. This can be useful for creating new patents that cover different aspects of an invention.
- Continuation-in-part (CIP) Applications: A CIP application allows the patent holder to add new matter to a pending or issued patent while still claiming priority to the original application. This can be used to cover new and distinct aspects of an invention that were not previously claimed in the original patent.
- Reissue Applications: A reissue application is a type of application that allows a patent holder to correct errors or omissions in an issued patent. This can be used to correct errors in the claims or to add new claims that were not included in the original patent.
It’s important to note that these applications are subject to the same requirements of novelty and non-obviousness as the original patent and can be rejected for not satisfying those requirements.
Basic Types of Patent Claims
There are two types of patent claims; they describe inventions in patent applications. As a result, the terms describe the patent’s limitations and scope. According to 35 U.S.C. 112, claims can be classified into two types namely, independent and dependent claims.
Before filing an application for a patent, it is essential to understand all types of patents in order to determine the best type of patent for your invention. We will now discuss in detail the different types of claims in a patent application.
Type #1: Independent Claims
According to the USPTO, these are claims independent of any other claims. They are the most comprehensive. These include a preamble as well as all necessary elements for the definition of the invention. So, independent claim sets the tone for patent protection in the invention. As a result, it protects patent infringement according to the doctrine of equivalents. This means that a patentee could be held responsible for infringing any limitation of a claim. If you are filing for a patent, it is important to understand the prior art claims.
1. A method of diagnostics using artificial intelligence, the method comprising:
acquiring a progressive scan of a patient using a multiple pulsed source in motion tomosynthesis imaging system;
performing image construction based on the progressive scan;
using artificial intelligence (AI) to detect a lesion by comparing a prior scan with the progressive
determining with the AI a location of the lesion and lesion growth.
Type #2: Dependent Claims
USPTO states that one or more claims can be presented in a dependent format, this allows referring to or further limiting another claim. Therefore, dependent claims can be based on an independent claim or previous claims made before them and therefore limit their scope of protection.
These are the most basic type of patent claims. Above all, claims must be carefully written to protect the invention against potential infringers to secure patent protection.
2. The method of claim 1, comprising generating a warning and sending one or more recommendations
to examine a region of X-ray interest (ROI) scan or CT scan.
3. The method of claim 1, comprising using AI to construct a model of the performance of each
subsystem in a normal operating mode and each of a plurality of different possible failure modes.
4. The method of claim 3, comprising:
dynamically predicting the performance of each subsystem based upon the response of each of the models to dynamically changing operating conditions.
For instance, the preamble to each claim begins with “A method as recited earlier in claim 1” of an independent claim. Dependent claims are related to the invention. In this instance, it is an apparatus.
Dependent claims do not necessarily cite back to independent claims; on the other hand, they can also cite a dependent claim. These dependent claims define and limit claim 1 (Independent Claims).
Patent Claim Construction: Tips
Firstly, there is no accustomed way to draft a patent claim. Each patent claim is unique and is dependent on the invention. The protection sought by the patent applicant will determine the process used.
However, the type of protection sought can determine whether the claim is narrower or wider in relation to the prior art. Patent claims should not be too broad, thus why it is essential to pay attention. They should not include anything that the applicant hasn’t invented. Or too narrow. As a result, the patent owner could lose their vital protection if this happens. To avoid such inconvenience, a patent attorney can be a good choice to assist you in writing your patent claims.
Three sections that make up a claim:
- The preamble
- The transitional phrase and
- The claim’s body
Preamble defines a category for the invention. It does not define the scope of the invention but rather it is the body of the claim that serves that function. The preamble clarifies whether an invention is a device or a technique.
A transitional phrase follows the preamble. To clarify, there are three types of transitional phrases: consisting, consisting substantially of, and consisting. The “comprising”, the transitional phrase, is popular since it provides the most protection, . 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 body is everything that follows the transitional phrase. consequently, it explains the elements and limitations of the claim. The point of novelty should be the focus of the body of claims.
Secondly, each claim must start with a capital letter and end with a period. Except for abbreviations and periods, they cannot be used elsewhere in claims. To clarify, each claim can only contain one sentence. A line indentation can help you separate a claim that contains multiple elements or steps.
Indefinite claims are those that contain words or phrases with unclear meanings. To clarify, patent law requires that there be an antecedent basis. This requires that patent law claims to “specially claim the subject matter which the inventor considers the invention.” This is known as definiteness. So, claims are considered indefinite if they contain words or phrases with unclear meanings.
This is why every claim element must have an antecedent basis. Most importantly, an indefinite article, such as an, or a, should be used before a noun/noun sentence when first introduced. That is to say, if you use the noun later in the claim, it should precede the definite (e.g. the, or said). Here are some tips to aid you build your claims.
Tip #1: Use the right words in patent claims
Words should be very accurate in a manner while drafting the claims. The technical feature of your invention describes your invention and its variant parts. If you use a word that is new in the claims, make sure to clearly explain its meaning in your description. Pay attention to “relative words” such as slow, long, tall, high, wide, perfect, and so on, unless the claim contains a correlation.
Tip #2: Make sure the description backs up your claims
The claims have to be supported by the description. This means that all the characteristics of your invention that form part of the claims must be fully explained in the description. In addition, any terms you use in the claims must be either found in the description or clearly inferred from the description. That is use consistent terminology and words.
Tip #3: Claim alternative embodiments to the invention
Consequently, consider other embodiments of your invention. When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. This broadens your protection.
Tip #4: Don’t limit yourself too much
Before filing claims, remove all limitations that are unnecessary. Do not file any limitations or technical features that aren’t necessary to cite the invention in its most patentable form. Pay attention to the prior art.
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