Claims

by, Arun Narasani

Agenda
● Basics
● ●

Claim structure Claim types Preparation Drafting

● Drafting
● ●

● Interpretation ● Common

questions
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Claim Basics

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claims overview
● 35

USC 112: specification

Claims must define the subject matter being claimed Claims must particularly point out and distinctly claim what applicant regards as his invention

define the boundaries of an invention - “metes and bounds”

Claims must be fully enabled by the specification

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Statutory classes
● US:

process, machine, (article of) manufacture, or composition of matter, or any new and useful improvement thereof product or process

● India:

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Proper sentence
● Claim

forms a complete sentence forming the direct object of the phrase “I claim”

“I claim: A pencil having an eraser fastened to one end.”

● Note

the capital letters and the full stop

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Ordering
● Claims

are presented in a logical order and numbered consecutively grouping of claims is allowed (using a line, for example)

● Logical

logical ordering makes it easy to understand the structure of claims

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claim structure
● <preamble>

<transition phrase> <body of

claim>

“A pencil having an eraser fastened to one end.”

● <A pencil>

<having> <an eraser fastened to

one end.>

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Preamble
● Introductory
● ●

phrase to set the context of a claim

need to define what the claim is about cannot say: “A method comprising:”

● Limitations
● ●

in preamble may or may not be given effect
context specific ensure that a specific element disclosed in preamble is also part of the body; else remove it
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Preamble
● Short

preamble is better when possible

enough purpose or intended use may be necessary for categorization

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Transition phrase
● “comprising”:
● ●

open means “including but not limited to”

● “consisting”/”consisting
● ●

of”:

closed useful in chemical arts

● “consisting
● ●

essentially of”:

partially open useful in chemical arts
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Transition phrase (contd..)
● Other

uncommon transition phrases

“including”, “having”, “containing” and “wherein”

Really not used anymore in the electronics/software domain

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Body
● Includes ● New

material limitations of an invention

element introduced by an indefinite article (e.g. “a” or “an”)
further references to the same element may use a definite article (e.g. “the”)

● An

element not introduced by an indefinite article is not allowed
said to have no antecedent basis

● Elements

may be claimed in function language
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Body (contd..)
● Double ● Single

inclusion of elements without separate structures may be rendered indefinite element performing multiple functions may be claimed using function language

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claim types – subject matter
● Product

claims

compound/ device/ machine/ artcile (of manf.)/ system

● Process/

Method claims claims

as one or more steps for performing/ treatment/ use with active components

● Apparatus

● Use

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claims types – subject matter
● Apparatus

with active components

● Article

(of manf.)

without active components set of discrete elements (with active components and/or non active components)

● System:

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claim types – scope
● Markush

(selected from group consisting of A, B, and C)
functionally equivalent alternatives

● Mean-plus-function/

Step-plus-function

to cover multiple structures/actions (through multiple embodiments) equivalent (same function, substantially same way, substantially same result) avoid when possible

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claim types – scope
● Omnibus

India specific; not allowed in US

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claim types – scope (to avoid)
● Product
● ● ●

by process

patentability assessment only by product process steps are also considered for infringement process steps may be considered for validity

● Beauregard

(computer readable medium)

no more considered statutory

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claim types – scope (to avoid)
● Jepson
● ●

(.. wherein the improvement comprises ..) makes it easier for examiners to reject based on prior art

● Signal

"an electromagnetic signal carrying computerreadable instructions for.." reject anything but a physical form of energy
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Claim types – structure
● Independent ● Dependent ● Multiple

claims

claims

dependent claims (avoid when possible)
alternative form only
– – –

“according to claims 3 or 4” “either claim 1 or 2” “any one of claims 1, 2 and 3” “according to claims 3 and 4”
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

cumulative claiming not allowed

Claim Drafting

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Preparation
● Reasons ● Problem

for obtaining a patent that led to the solution

helps in broadening the scope of claims

● Novelty

according to inventor

many times inventors may not know

● Prior

art according to inventor

known products/services, and literature
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Preparation
● Commercial
● ●

environment

product/ combination consider combination claims (ex: Apparatus comprising a processor)

● Possible

applications?

● Likely

users / infringers?
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Preparation
● Commercial
● ●

environment

product/ combination consider combination claims (ex: Apparatus comprising a processor)

● Possible

applications?

● Likely

users / infringers?
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Claim drafting
● Independent

claims covering multiple facets

based on commercial and strategy considerations

● Multiple
● ●

set of independent claims

broad, medium, narrow subject to financial considerations

● Dependent

claims adding relevant limitations
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

claim differentiation

Claim drafting (contd..)
● Claim

considerations

overlap with prior art; understand what we are relying on when it comes to prosecution circumvention; ensure that claims avoid clearly known prior art directing towards target infringers focus on literal infringement; define terms clearly (+ve decision based on equivalence is rare)

● ●

● Communicate

with client
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

review and iterate

Claim differentiation
● Every

claim is assumed to have a different

scope

having dependent claims automatically implies that broader scope of protection is sought through corresponding independent claim

● So

it always good to have one or two limitations pushed to dependent claims
while ensuring that independent claims have novel elements to rely on
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Clarity of claims
● Ambiguous

terms

“like”, “close to”, “almost”, “near” etc “.. where said greatly improved device comprises of:”

● Glorification

● Appropriate
● ●

punctuation

“A tool for manufacturing a machine comprising: ..” “A tool for manufacturing a machine, comprising:”

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Clarity of claims

“A tool for manufacturing a machine, said tool comprising:”

● Essential

elements

a claim for improved blades for a fan does not need to recite the fan motor as an element

● Unity

of invention

one application must have claims relating to one inventive concept

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Claim interpretation

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Structure
● Every
● ● ●

claim set (set of independent and dependent claims) can be thought as a tree
independent claim will be the trunk dependent claim will be a branch a dependent on a dependent will be a branch on a branch and so on... based on embodiments

● Dependency

Linear (chain) vs radial (circle)

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Scope
● Independent

claims

covering all embodiments or speicific to an embodiment terms specific to an embodiment limits the scope of the claim evaluate each term

● Dependent
● ●

claims

branch out for each embodiment/ new feature use limitations relating to specific embodiments/ features in dependent claims
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Common Questions

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Questions
● What

if I don't understand the invention?

ask the inventors; understand the fundamental problem being solved

● How

many embodiments?

as many as you can; push the inventors for more information; enables broad claims

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Questions
● How

many independent claims?

as many required to cover all novel aspects; ideally one specific novelty per independent claim

● When
● ●

to use dependent claims?

for specific embodiments in a broad claim set for substitutes/variations, for specific elements

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Questions
● Functional
● ●

limitation

method claims for products, provide only generally understood function where possible

● Structural
● ●

limitation

product claims for methods, to avoid being abstract (ex: software)

● When

to use Means-plus-function?

cover discrete embodiments
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Questions
● Plurality

or multiple

plurality: literally means at least two; “one” has also been considered to part of “plurality” multiple: definitely means at least two

● Reference

numerals in patent claims

do not use in claims unless required by law/rules; potentially limits the scope of the claim

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

● “at

least one” or “one or more”

“at least one of a X, a Y, and a Z”: means minimum one category

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

More Questions?

© Brain League IP Services Pvt. Ltd.

18 Oct, 2012

Master your semester with Scribd & The New York Times

Special offer for students: Only $4.99/month.

Master your semester with Scribd & The New York Times

Cancel anytime.