A patent application contains many parts. These include components such as a specification, claims, an abstract and drawings. While drawings are not required, all of the other components are.
Perhaps the most important required part of the patent application is the claims. When they are new to patent prosecution, most people don’t know what a patent claim is. That’s why working with a skilled intellectual property attorney is so vital. They can walk you through the process and craft a claims set that protects your invention from every angle.
What Is a Patent Claim?
The patent claims define in technical language the scope or extent of the protection that is granted by the patent. Effectively, the claims define the specific subject matter that the patent covers. A competitor that begins making and selling a similar product may be accused of infringing the claims of an existing patent.
A patent basically grants the right to exclude other people from making, using, selling or importing any items that are covered by the claims of an issued patent. While claims may cover an “apparatus,” they also may be written to cover a process. When this occurs, the claims are referred to as method claims. These claims define the steps required to complete an innovative process. Accordingly, a competitor is precluded from being able to use the steps of the protected process.
How Important Are Patent Claims?
Drafting a sufficiently broad yet narrow set of claims is an incredibly difficult process. It’s important to cover all new and inventive aspects of the apparatus or method. At the same time, the claims need to be narrow enough to avoid the risk of infringing other existing patents that are focused on the same industry.
Suppose an inventor creates a widget that requires components A, B and C. The inventor obtains a patent that protects each of these components. Then, a competitor comes along and begins manufacturing a similar widget that contains components A, B and C. The original inventor will have an excellent case for patent infringement against the competitor.
However, if one competitor is using component A but not components B and C and yet another competitor is using component B but not A or C, then it would be virtually impossible to make a case for patent infringement because neither of these competitors is making the widget with all three components.
This means that it is essential for the claims to be drafted with extreme care. They must be written so that infringement by one entity is possible. This offers the patentee the greatest breadth of protection.
What Are the Types of Patent Claims?
Claims may be directed to an apparatus, device or item. Accordingly, they will describe the various components of the invented item.
On the other hand, an inventor may have developed a new process for doing something. It will be necessary to draft method claims to define the process for attaining an intended result.
This type of patent claim stands alone. That is, an independent claim is one that is unattached to other claims. Accordingly, they do not refer back to any other claim.
Typically, an independent claim includes a preamble or an introduction before moving on to identify all of the components that are necessary for defining the subject invention. The introduction names the invention and also may detail the use of the invention. A transitional phrase follows to serve as a connection between the introduction and the various components. Next, the independent claim lists the components.
It is common for the first claim in a patent application to be an independent one. Broader than the claims that follow it, the independent claim is written in a manner that is designed to anticipate the efforts of would-be infringers to get around the independent claim.
In general, independent claims are written in one of three forms. These are designed to claim one of: an invention, a method of making an invention or a method for implementing an invention.
These claims are so named because they refer back to an earlier independent or dependent claim, thereby limiting the scope of those earlier claims. Accordingly, dependent claims are relatively narrower in scope than the previous claim from which they depend. Under U.S. patent law, a dependent claim must make an additional limitation to the independent claim.
It also is possible that a dependent claim will identify various trivial aspects, optional features or a variety of non-essential features that are not included in the earlier claims.
Dependent claims are an essential part of patent applications in the United States. This is because the U.S. Patent and Trademark Office charges additional fees for every independent claim in excess of three independent claims in a single patent application.
It is most common for patent applications in the United States to include between one and three independent and multiple dependent claims. However, sometimes there are situations in which special claim types are necessary.
These special claims may include:
- A Beauregard Claim – which is a claim relating to a method implemented by a computer
- A Markgush Groups Claim – which is a claim that combines elements to limit the number of claims
- A Jepson Claim – which is a claim that separates the new and old elements of the invention
What Is a Patent Claim Limitation?
Claims typically are made up of three parts. These are a preamble that gives context for the invention. Next comes a transitional phrase that establishes the claim as being open, closed or partially open. Effectively, this transitional phrase states just how much the claim is limited to only the recited elements in the body of the claim.
It is the third part of the claim, or the “body,” that contains the patent limitations. These include the structure or steps that are needed to define the invention. The terms must be full yet clear and concise, which is not an easy balance to achieve.
Each dependent claim effectively defines a further limitation to the independent claim.
Ask an Intellectual Property Attorney
If you have invented a new product or process and are interested in obtaining patent protection, then contact the experienced practitioners at Williams IP Law. Their skill at drafting strategic patent claims will ensure that you get the broadest and most meaningful protection possible.