CLAIMS

Manish Singh
Intellectual Property Consultant
&
Patent Agent
manishsingh@patentlab.co.in

PatentLab 1
 Preparing the Claims
• Define the Invention in the novel and non obvious
context in which the patent is enforceable.
• Serve as template for the rest of the patent
• Legally enforceable part of the application
• Each claim is evaluated on its own merit.
• Claim scope determined by gap between prior art
and invention
• Specification must conclude with at least one claim
• “We claim……….” or “What is claimed is……..”
• Enablement requirement
• Single inventive concept – divisional application –
escalates prosecution cost
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 Guidelines for drafting claims
• Avoid ambiguous terms- close to, almost,
near, like etc.
• Use only those terms which either add to
description or help in defining the boundary
of protection sought.
• Avoid glorification- ‘greatly improved’-
• Use appropriate punctuation and references
to remove any ambiguity in claims.

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 Example-
A tool for manufacturing a machine
comprising…..
– Not clear whether the text that follows the word
‘comprising’ is part of the machine or tool.
Should be re-written as-
A tool for manufacturing a machine, said tool comprising……
• Avoid including material that does not form part
of the invention.
• Claim nesting- from broader to narrower.

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 Claim Components and Formatting
Single Sentence, heavily punctuated, ending with a period.
Three Parts
• Preamble – Introductory
• Transition – Separates Preamble and Body of the Claim
• Body – Elements of Invention and how they cooperate
and interrelate
 Antecedent Basis – Use of ‘a’, ‘the’ or ‘said’
Example: A wagon comprising:
A platform, two axels and wheels
 In case of heavy interrelated elements, reference may
be made to numbers.
Example: An apparatus, comprising:
A first element (4);
A second element (6) on the top of the
first element comprising:
A first sub-element (8), and
A second
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sub element (10); and …..
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 Preamble
• It identifies the category of invention
protected by the claim e.g. apparatus, article ,
composition, method or process.
• Caution-Preamble should not limit the
invention.
e.g. (1) An apparatus for cooking rice.
An apparatus for cooking grains
An apparatus for cooking.
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(2) A method for making tea
A method for making a plant beverage
(whether hot or cold?)
A method for making a warm beverage
(whether plant based or non-plant based?)
A method for making a beverage

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 Transition Clause
Close Partially
Open Ended
Ended Closed
• Comprising • Consisting of • Consisting
• Comprises of • Constituting essentially of
• Including (Compositions)
• Containing
• Characterized
by

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 Claim Body
 Recites essential elements and how they
interrelate
 Name, purpose, features etc. of the
specific embodiments.
 Names might be specific e.g. A nail,
or broad e.g.
-a fastening component or
-fastening means

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 Types of Claim
Differentiated on the basis of:

Drafting Invention Field Structure

• Independent • Product • Jepson • Pure

• Dependent • Process or Claim Structure
• Omnibus Method • Markush • Structure
• Apparatus Claim plus function
• Use • Swiss Claim • Means plus
• Beauregard function
Claim • Structure is
function
• Pure
function
• Step plus
function

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 Claim punctuation
• Preamble, transition phrase:
Element 1;
Element 2; and
Element 3.

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 Example of a claim:
Independent and Dependent claim
Preamble Claim Punctuation
1. A device , comprising:
a pencil; and Transition phrase
a light attached to the pencil. Period
Proper antecedent basis

2. The device claimed in claim 1 wherein the

light is detachably connected to the pencil.
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 Multiple dependent claim:
3. A pencil as in any of the previous claims in
which…..
or
A pencil as in either claim 1 or claim 3, further
comprising…..
or
A pencil as in any of the claims 1, 3 or 9-13, both
inclusive, in which…..
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 Patent Claim Design: Broad and
Narrow Claims
• Independent Claim
1. An apparatus for turning lead into gold, comprising:
a box like metal frame;
an electric motor mounted inside the box like metal
frame;
a bowl for retaining scrap lead housed on a surface of
the box like metal frame; and
a lead-gold zapper element attached underneath the
bowl and inside the box like metal frame and
configured to receive electric power from the electric
motor

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An apparatus for turning lead into gold, comprising:
an electric motor;
a bowl for retaining scrap lead; and
a lead-gold zapper element operably coupled to the
bowl and configured to receive electric power from
the electric motor

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An apparatus for turning lead into gold, comprising:
a power source;
a bowl for retaining scrap lead; and
a lead-gold zapper element operably coupled to the
bowl and configured to receive power from the
power source.

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An apparatus for turning lead into gold, comprising:
a power source;
a lead retainer;
a lead-gold zapper element operably coupled to the
lead retainer and configured to receive power from
the power source.

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 Dependent Claims
2. The apparatus of claim 1, further comprising:
a box- like metal frame , wherein the power
source and the lead-gold zapper element are
retained inside the box –like metal frame.
3. The apparatus of claim 1, wherein the power
source is an electric motor.
4. The apparatus of claim 1, wherein the lead
retainer is a bowl.
5. The apparatus of claim 4, wherein the lead
retainer is configured to receive scrap lead.

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