Patent Claims

What are Patent Claims?

Patent claims are the legal statements that define the boundaries of an invention. They describe the specific features that make an invention unique and set the scope of protection that the patent provides. Utility patents can have one or more claims, each of which defines a separate aspect of the invention. Design patents or plant patents will only have one claim.

The primary purpose of patent claims is to precisely describe the invention and distinguish it from prior art. Claims define the specific elements, components, processes, or characteristics that make an invention novel, non-obvious, and patentable. By clearly outlining the boundaries of the invention, claims provide legal protection against infringement, allowing inventors to safeguard their creations.

The 11 Types of Patent Claims

There are 11 different types of patent claims that could be used to construct the claims. Each of these types could also be either an independent or dependent claim.

An independent claim is the broadest claim and describes the core features of an invention. This basic claim type stands alone and does not refer back to any previous claim, extending the scope of protection. In a patent application, there can be more than one independent claim; however, in the United States, there is an additional fee if the application has more than three independent claims.

A dependent claim must refer back to an independent claim or another dependent claim. This basic claim type cannot extend the scope of protection of the invention like independent claim(s). These claims are used to add additional limitations or features, making them narrower in scope than independent claims. 

The 11 specific claim types:

1. Beauregard: this claim type, sometimes called a “floppy disk” claim, is a claim to a computer program in the form of a computer-readable medium such as a floppy disk or CD-ROM. This type got its name from the legal case In re Beauregard (1995). In this case, the patent applicant claimed their invention this way and it was rejected by the USPTO. The applicant then appealed and the appeal was accepted. Beauregard claims are uncommon today because the courts did not expressly rule that Beauregard style claims are acceptable.
2. Exhausted Combination: this claim type combines an already known element or device with a novel device or feature. The term “exhausted” refers to the fact that the individual components or elements have already been “used up” or “exhausted” in prior patents or disclosures. For example, an exhausted combination claim might describe a new type of electronic device that combines a touch screen display, a wireless communication module, and a processor to provide a novel user interface. The claim would define the device as being “a combination of elements comprising a touch screen display, a wireless communication module, and a processor, the combination being characterized by [the unique feature or result].”
3. Functional: this type of claim describes the invention’s functional characteristics or capabilities, rather than in terms of its physical structure or components. Functional claims are often used in patents for software, electronics, and other types of complex systems or processes. Functional claims frequently use language such as “… a means for …” and “… the steps for …”  
4. Jepson: this type of claim is used when the invention is an improvement or modification of an existing product or process, and the claim explicitly sets forth the elements or steps that distinguish the invention from the prior art. A Jepson claim typically begins with a preamble that describes the existing product or process that the invention is modifying or improving upon. The preamble is followed by a transitional phrase such as “wherein the improvement comprises” or “wherein the modification is” that sets forth the new elements or steps that distinguish the invention from the prior art. The Jepson claim is named after the patent case Ex parte Jepson, 243 Off. Gaz. Pat. Off. 525 (Ass’t Comm’r Pat. 1917).
5. Markush: this type of claim is used to describe a group or class of related chemical compounds that share certain common characteristics or features. Markush claims are often used in patents for pharmaceuticals, chemicals, and other types of complex compounds. Rather than claiming each individual compound separately, the Markush claim defines a broad class of compounds that share a certain set of characteristics, such as a specific chemical structure or functional group. For example, a Markush claim might describe a group of compounds that are useful as inhibitors of a certain enzyme. The claim would define the compounds as “compounds having the structure [generic chemical structure], wherein the structure includes one or more substituents selected from the group consisting of [list of substituents].” This type of claim was named after Eugene Markush who first used this type of claim in an allowed patent.
6. Omnibus (only design patents): this type of claim broadly claims any and all embodiments of an invention, without specifying the particular features or characteristics that are essential to the invention. An example of this kind of language is “The invention substantially as herein described.” Omnibus claims are not allowed in the U.S. because they do not meet the requirement for definiteness and clarity. As described in 35 U.S.C. 112, this type of claim fails to “particularly point out and distinctly claim the subject matter which the applicant regards as his invention.”
7. Product-by-Process: this type of claim defines the product by the process used to make it. In other words, the claim describes the product not by its physical or chemical properties, but by the process that was used to manufacture it. For example, a product-by-process claim could be used to describe a specific type of plastic that is made by a particular manufacturing process. The claim would define the plastic as being “a plastic made by the process of heating and compressing polymer material at a temperature of 300 degrees Celsius for 2 hours.”
8. Programmed Computer: this type of claim covers a computer or other electronic device that has been programmed to perform a specific function or set of functions. A programmed computer claim is used in patents for software or computer-implemented inventions. For example, a programmed computer claim could be used to cover a software application that performs a specific task, such as image processing or data analysis. The claim would define the application as being “a computer program stored on a non-transitory computer-readable medium, comprising a set of instructions that, when executed by a processor, cause the computer to perform the steps of [the claimed function].”
9. Reach Through: this type of claim seeks to cover a future invention that is not yet known or described in the patent application. Rather than claiming a specific invention, a reach-through claim seeks to claim a class of compounds or a method of using those compounds based on their potential future utility. An example of a reach-through claim might be a claim to a class of compounds that are predicted to bind to a specific target molecule, without actually describing any specific compounds that have been tested and shown to bind to that target. This type of claim could potentially block other researchers from developing related compounds that might also bind to the target, even if those compounds were independently discovered and developed.
10. Signal: this type of claim covers a signal or data structure that is used to transmit information between electronic devices. Signal claims are typically used in patents for telecommunications, computer networks, and other types of electronic communication systems. For example, a signal claim might describe a wireless communication system that uses a particular type of signal to transmit data between two devices. The claim would define the signal as being “a wireless signal comprising a carrier frequency of 2.4 GHz and a modulation scheme based on frequency-shift keying (FSK) with a data rate of 1 megabit per second.”
11. Swiss-type: this type of claim is used in the pharmaceutical industry to protect the use of a known compound for a new medical indication. For example, a Swiss-type claim might describe the use of a known anti-inflammatory drug for the treatment of a specific type of cancer. The claim would define the drug as being “a compound that is already known for its anti-inflammatory properties, for use in the manufacture of a medicament for the treatment of [the specific type of cancer] in a patient in need thereof.” The name “Swiss-type” refers to a 1984 decision by the Swiss Federal Supreme Court that first recognized this type of claim.

Patent Claim Format

A patent claim consists of three parts: preamble, transitional phrase, and body. 

Preamble

The preamble is an introductory phrase that identifies the category of the invention and provides a general context or purpose for the claimed invention. This part of a claim may include phrases like “a method for…” or “an apparatus for…” The preamble should be kept consistent with the title of the invention. 

Transitional Phrase

The transitional phrase connects the preamble to the body of the claim and typically starts with phrases such as “comprising,” “consisting of,” or “consisting essentially of.” The scope of a claim can be expanded in this part by allowing for other elements or limitations. There are two types of transitional phrases: open-ended and closed. “Comprising” is considered an open-ended transitional phrase because even if the accused infringing device includes additional components and elements, the accused infringing device will not avoid infringement as long as the accused infringing device incorporates all of the elements recited in the body of the claims or the claim elements. 

Closed transitional phrases work a bit differently. “Consisting of” and “consisting essentially of” are referred to as closed because adding an additional component or element to the accused infringing device may avoid infringement of the claim even if the accused infringing device incorporates all of the limitations and elements recited in the body of the claim.

For claims using “consisting of,” the accused infringing device does not infringe the claim only if an added element is related to the invention. For claims using the transitional phrase “consisting essentially of,” the accused infringing device does not infringe the claimed invention if the accused infringing device includes an added component or element that materially affects the basic and novel characteristic of the invention. 

Body

The body of the claim includes the specific elements or limitations that define the invention. These elements describe the structural or functional features of the invention that make it unique and different from existing prior art. Each element is typically written in clear and concise language to avoid ambiguity.

All patent claims of an invention or design must be written in a heavily punctuated single sentence. A comma should separate the preamble from the transitional phrase and a colon should separate the transitional phrase from the body. The small paragraphs that define and describe the logical elements should be separated with semi colons. Additionally, the claims must be preceded by a claims identifier such as “Claim 1.” 

All elements in the patent claim must have the correct antecedent basis. This refers to the description in the specification that supports the elements or limitations mentioned in the claim. It helps provide context and ensure that the claim is adequately supported by the disclosure. Antecedent basis is a requirement of the USPTO that mandates that claims must be explained in the specification to ensure references to claims can be clearly understood. A claim is considered to be indefinite if it contains words or phrases that have an unclear meaning.

Proper antecedent basis is the usage of an indefinite article (“a” or “an”) when introducing an element for the first time. Consistency is important, therefore, a definite article (“said”) must be used when referring back to the introduced element.

Drafting Effective Patent Claims

Drafting effective patent claims is critical to ensuring the enforceability of a patent. Poorly drafted claims can lead to a lack of patentability, limited scope of protection, and inadequate definition of the invention. Some key considerations and tips to keep in mind during the process:

1. Understand the Invention: Thoroughly understand the invention and its unique aspects. Identify the key components, features, or steps that make the invention novel and non-obvious. This understanding will form the basis for drafting comprehensive and accurate claims.
2. Conduct a Prior Art Search: Perform a comprehensive search to identify any existing inventions or prior art similar to your invention. This step helps to understand the existing landscape and ensures that the claims are distinct and not anticipated by prior inventions.
3. Start Broad, Narrow Down: Begin by drafting broader claims that cover the core concept and overall functionality of the invention. Broad claims provide a wider scope of protection. Subsequently, narrow down the claims by adding specific limitations, elements, or variations to capture the finer details and unique aspects of the invention.
4. Use Clear and Precise Language: Write the claims using clear, concise, and unambiguous language. Avoid unnecessary technical jargon or complex terminology that may create confusion. Each claim element should be described in a manner that leaves no room for interpretation or misunderstanding.
5. Be Specific and Explicit: Ensure that each claim element is explicitly defined. Clearly specify the structure, function, relationship, or characteristics of each component or step. Precision and specificity strengthen the claims and leave little room for competitors to argue infringement based on minor variations.
6. Anticipate Potential Infringement Scenarios: Consider potential ways in which competitors might attempt to design around your invention. Draft claims that cover various possible embodiments or variations to anticipate and protect against such strategies.
7. Use Appropriate Terminology and Format: Adhere to the accepted patent claim format and use appropriate terminology consistent with the field of the invention. Follow the guidelines provided by the respective patent office to ensure that the claims meet the required standards.
8. Seek Professional Assistance: Consider engaging a patent attorney or patent agent who specializes in drafting patent claims. Their expertise and knowledge of patent laws and regulations can significantly enhance the quality and effectiveness of your claims.
9. Continuously Review and Refine: Regularly review and refine the patent claims as you gain more insights into the invention, perform additional research, or receive feedback from patent professionals. Continuously improving the claims strengthens the patent application and increases the likelihood of success.

Responding to Patent Claim Rejections

It is common for patent claims to be rejected during the application process. Responding to a claim rejection requires a thorough understanding of the basis for the rejection, amending the claims to overcome the rejection, and potentially arguing against the rejection.

Conclusion