Patent claims are of paramount importance to any patent application. They are instrumental in defining the right of exclusivity as well as the patent’s scope of protection.
Every patent application consists of one or more claims that illustrate the nature of the invention as well as aspects of it that will prevent others from using or selling their invention. Below we elaborate on the functions, parts, and types of patent claims for a better understanding of how patent claims work.
As per the PCT Article 6- “claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.” Claims are not only essential to the patent filing process but also in protecting the patent once granted.
Particularly in patent infringement cases, it is the claims that are scrutinised to determine the scope of protection offered by a patent. Claims, if not drafted carefully may render a patent worthless in case of legal matters. Thorough and clearly worded claims on the other hand can expedite the patent prosecution process as well as guaranteed protection from infringement.
Now that we understand what a patent claim is, it is also vital to know the function it performs, which are:
With the help of a patent claim, the inventor informs the world about their invention and what they seek to protect. The precise scope of protection is highlighted in a claim, and once a patent is granted this becomes public knowledge. Despite its obvious importance, patent claims are a fairly recent phenomenon in the USPTO as well as patent offices of other countries.
Prior to patent claims, the responsibility to ascertain the scope of the patent rested with the courts. It was done after identifying the core of the invention after thoroughly studying the technical specifications submitted by the applicant.
However, this proved problematic as the courts could not ascertain the protected element without supporting documents. This led to the practice of patent claims being included in the patent application itself. Patent claims now serve the important function of Public Notice Dissemination.
Section 10(4)(c) of the Patents Act, 1970 mandates every specification to end with a claim or claims which explains the scope of the invention that needs protection. It is the claim that grants legal security to a patent. A patent without a claim does not enjoy any exclusivity or defence from infringement. Besides infringement issues, patent claims are also crucial in determining the validity of a patent. This is how patent claims work.
Claims are comprised of 3 parts:
As the name suggests, a preamble is an introduction to a patent that categorises the patent based on article, apparatus, method or process, and composition. It is imperative for the preamble to be in consonance with the invention title as well as clearly state the objective of the invention. Examples: Object of the invention: making ice cream
A METHOD FOR MAKING ICE CREAM
Object of the invention: treating Polio
A COMPOSITION FOR TREATING POLIO
Transitional phrases serve the important function of linking the preamble to the rest of the body. The type of transitional phrases used will determine if the patent is limited to stated components or has a broader application. ‘Consisting of’ and ‘Comprising’ are two commonly used transitional phrases. The former is a close-ended phrase and limits the claim to the features mentioned in the body. The latter on the other hand is considered open-ended and implies that the claim may cover additional details as well.
The body is where a detailed description of the claim is drafted. It is the last part and bears worth as all the components, limitations, and steps of the claim are mentioned in detail here. The body is instrumental in establishing a relation between the various aspects listed in a claim and producing a coherent and intelligible document.
In common practice, the preamble and transitional phrase are separated using a comma, while the body is separated using a colon.
Claims are categorised based on various parameters as listed below:
Based on the drafting technique employed claims can be of 3 types:
An independent claim is a stand-alone claim that comprises all limitations that are required to define an invention. It may be a claim for something, a method of using something, or a process for making something. It must consist of prior art as well as the novel features that distinguish the invention.
Dependent claims make a reference to previous claims and therefore have a narrower scope. They may include non-essential features and minor aspects that have been skipped in the independent claim.
Example: Independent Claim – A box to store liquids
Dependent Claim – that is in round or rectangular shape
Such a claim uses descriptions/drawings as the subject matter of the claim. They expand the boundaries of the claim to include aspects that are visible in the drawing but not expressly highlighted in the claims. These types of claims are not accepted in countries like Australia, the USA, and China among others.
Three types of claims can be found based on this classification:
In a Jepson Claim format, the preamble points to an existing patent, and thereafter claims an enhancement over it. Such claims are drafted when an invention is an improvement over existing technology.
Essentially used in biotech or chemical inventions, the Markush claim was first used by Eugene Markush in 1920. It allows for various groupings of an invention to be filed in one patent.
Originally approved by the Swiss Patent Office, these claims cover subsequent uses of an already known substance or composition. These also fall under the category of process claims.
The following claims exist on the basis of invention:
Process claims elaborate on a method or process that is novel and yields an optimal result.
If the invention is a product with practical applicability, then product claims are utilised.
Widely used in the USPTO, software claims cover inventions if it forms part of computer hardware or software. In such claims, it is advised to state usage of the invention in the real world to avoid rejection of the application.
There are two types of claims based on structure:
This type of claim is present when the invention being patented involves chemicals. It is useful in defining the chemical elements that form a part of the process or product.
Such claims are characterised by a lack of proper structure as they emphasise describing the functionality of a feature in the invention. Also referred to as ‘step plus function’ they are used to narrate the functions performed by components of an invention.
A well-drafted patent claim is the backbone of any patent application. It is the foundation on which rests the protection of your patent. For this reason, it is crucial that patent claims be complete, clear, and supported.
They should provide adequate coverage of the invention and not leave room for any speculation. Claims must be supported by drawings and documentation that make for a complete patent filing application. Drafting patent claims is a complex task and given their centrality to your patent application, it is best to hire experienced patent attorneys for the job.
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