In a
patent
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
or
patent application
A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...
, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent (or sought to be protected by the patent application). This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid
infringement liability. The claims are of the utmost importance both during
prosecution
A prosecutor is a legal representative of the prosecution in states with either the common law adversarial system or the civil law inquisitorial system. The prosecution is the legal party responsible for presenting the case in a criminal trial ...
and
litigation
-
A lawsuit is a proceeding by a party or parties against another in the civil court of law. The archaic term "suit in law" is found in only a small number of laws still in effect today. The term "lawsuit" is used in reference to a civil actio ...
alike.
For instance, a claim could read:
* "An apparatus for catching mice, said apparatus comprising a base, a spring member coupled to the base, and ..."
* "A chemical composition for cleaning windows, said composition substantially consisting of 10–15% ammonia, ..."
* "Method for computing future life expectancies, said method comprising gathering data including X, Y, Z, analyzing the data, comparing the analyzed data results..."
Background
In most jurisdictions, a patent is a right to exclude others from making, using, importing, selling or offering for sale the subject matter defined by the claims when the claim is for a thing (apparatus, composition of matter, system, etc.). If a claim is for a method, the right to exclude would be to exclude any single party from carrying out all the steps of the claim. In order to exclude someone from using a patented invention, the patent owner, or patentee, needs to demonstrate in a court proceeding that what the other person is using falls within the scope of a claim of the patent; therefore, it is more valuable to obtain claims that include the minimal set of limitations that differentiate an invention over what came before (''i.e.,'' the so-called
prior art
Prior art (also known as state of the art or background art) is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria f ...
). But the fewer the limitations in a claim, the more likely it is that the claim will cover, or "read on," what came before and be rejected during examination or found to be invalid at a later time for obviousness or lack of
novelty
Novelty (derived from Latin word ''novus'' for "new") is the quality of being new, or following from that, of being striking, original or unusual. Novelty may be the shared experience of a new cultural phenomenon or the subjective perception of an ...
.
History
Patents have not always contained claims. In many
Europe
Europe is a large peninsula conventionally considered a continent in its own right because of its great physical size and the weight of its history and traditions. Europe is also considered a Continent#Subcontinents, subcontinent of Eurasia ...
an countries, patents did not contain claims until the 1970s. Before that time, it was often difficult to decide whether a product infringed a patent, since the sole basis to know the extent of protection was the description, in view of the prior art. Claims have been necessary parts of U.S. patent applications since the enactment of the Patent Act of 1836.
However, even among patent legal systems in which the claims are used as the reference to decide the scope of protection conferred by a patent, the way the claims are used may vary substantially. Traditionally, two types of claiming systems exist:
* the "central claiming system", according to which the claims identify the "centre" of the patented
invention
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an i ...
. The exact scope of the protection depends on the actual nature of the
inventor
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an ...
’s contribution to the art in the concerned
technology
Technology is the application of knowledge to reach practical goals in a specifiable and reproducible way. The word ''technology'' may also mean the product of such an endeavor. The use of technology is widely prevalent in medicine, science, ...
.
* the "peripheral claiming system", according to which the claims identify the exact periphery, or boundary, of the conferred protection. In this system, the burden of drafting good claims is much higher on the patent applicant (or on his or her
counsel
A counsel or a counsellor at law is a person who gives advice and deals with various issues, particularly in legal matters. It is a title often used interchangeably with the title of ''lawyer''.
The word ''counsel'' can also mean advice given ...
). The applicant receives the protection he or she requested and almost nothing more, provided that the invention is
new
New is an adjective referring to something recently made, discovered, or created.
New or NEW may refer to:
Music
* New, singer of K-pop group The Boyz
Albums and EPs
* ''New'' (album), by Paul McCartney, 2013
* ''New'' (EP), by Regurgitator ...
and
non-obvious. This theoretically makes it easier for third parties to examine whether
infringement may exist or not.
No patent system today is a purely either ''central'' or ''peripheral'', but the system used in
Germany
Germany,, officially the Federal Republic of Germany, is a country in Central Europe. It is the second most populous country in Europe after Russia, and the most populous member state of the European Union. Germany is situated betwe ...
and most of the other countries of
continental Europe
Continental Europe or mainland Europe is the contiguous continent of Europe, excluding its surrounding islands. It can also be referred to ambiguously as the European continent, – which can conversely mean the whole of Europe – and, by ...
is considered more central than the system currently used in the
United Kingdom
The United Kingdom of Great Britain and Northern Ireland, commonly known as the United Kingdom (UK) or Britain, is a country in Europe, off the north-western coast of the continental mainland. It comprises England, Scotland, Wales and North ...
, the
United States
The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country primarily located in North America. It consists of 50 states, a federal district, five major unincorporated territorie ...
, and especially
Japan
Japan ( ja, 日本, or , and formally , ''Nihonkoku'') is an island country in East Asia. It is situated in the northwest Pacific Ocean, and is bordered on the west by the Sea of Japan, while extending from the Sea of Okhotsk in the north ...
, which are more peripheral. In recent years, Japan's system has become more peripheral, while the system used in the United States was becoming more central because of the increasing resort in US patent litigation to the
doctrine of equivalents
The doctrine of equivalents is a legal rule in many (but not all) of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope ...
to expand claim scope unpredictably, until the US Supreme Court reversed that trend in the ''Warner-Jenkinson'' case in 1997.
Requirements and structure
In most modern patent laws, patent applications must have at least one claim, which are critical defining elements of the patent and the primary subject of examination. In some patent laws however, a
date of filing may be obtained for an application which does not contain any claim.
European Patent Convention
Under the
European Patent Convention
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to w ...
(EPC), a claim must define the matter for which the protection is sought in terms of technical features. These technical features can be either structural (e.g. a
nail
Nail or Nails may refer to:
In biology
* Nail (anatomy), toughened protective protein-keratin (known as alpha-keratin, also found in hair) at the end of an animal digit, such as fingernail
* Nail (beak), a plate of hard horny tissue at the tip ...
, a
rivet
A rivet is a permanent mechanical fastener. Before being installed, a rivet consists of a smooth cylindrical shaft with a head on one end. The end opposite to the head is called the ''tail''. On installation, the rivet is placed in a punched ...
) or functional (e.g.
fastening
A fastener (US English) or fastening (UK English) is a hardware device that mechanically joins or affixes two or more objects together. In general, fasteners are used to create non-permanent joints; that is, joints that can be removed or disman ...
means).
Regarding the structure of a claim, under the EPC, what is called the "preamble" is different from the meaning the "preamble" has under U.S. patent law. In an independent claim in Europe, the preamble is everything which precedes the expression "characterized in that" or "characterized by" in a claim written according to the so-called "two-part form", and therefore everything which is regarded as known in combination within one prior art document, namely the closest prior art document. For this reason, in Europe, the preamble of a claim is sometimes also called "pre-characterizing portion".
United States
A claim may include the following parts:
* A preamble that recites the class of the invention, and optionally its primary properties, purpose, or field: "An apparatus..." "A therapeutic method for treating cancer..." "A composition having an affinity for protein X..." This preamble may also reference another claim and refine it, e.g., "The method of claim 1..." (See "dependent claim" below.).
* A
"transitional" phrase that characterizes the elements that follow. The phrases "comprising", "containing" and "including" are most often used and (under some patent laws, specifically US) preferable, as it means "having at least the following elements..." and are therefore open (inclusive) and do not exclude additional limitations. The phrases "consisting of" and "consisting essentially of" are (under some patent laws, specifically US) more limiting, as they mean "having all and only" or "virtually only" and are therefore closed (exclusive). In the US, the phrase "consisting of" excludes additional limitations, while the phrase "consisting essentially of" excludes additional limitations that would "materially affect the basic and novel characteristic(s) of the claimed invention".
[USPTO MPEP 2111.03](_blank)
/ref>
* A set of "limitations" that together describe the invention: "an X, a Y, and a Z connected to the X and the Y." The elements should be described as though they interact or cooperate to achieve the desired result.
* Optionally, a purpose clause that further describes the overall operation of the invention, or the goal that the invention achieves ("wherein the Z simultaneously controls the X and Y," or "wherein the Z accomplishes purpose W by controlling X and Y," etc.). "Wherein" clauses limit the scope of the claim. Other forms of purpose language are "whereby" and "thereby" clauses, similar to the "wherein" clauses just described,[See, e.g., ''Griffin v. Bertina,'' 285 F.3d 1029, 1033-34 (Fed. Cir. 2002) (distinguishing "whereby" and "wherein" clauses, and explaining that whether they express limits on the scope of a claim is fact specific).] and statements of intended use in a claim preamble (depending on facts of case, preamble may or may not limit claim scope; in this case it was the "essence of the invention").
Interpretation or claim construction
The claims often use precise language. Certain words commonly used in claims have specific legal meanings determined by one or more court decisions. These meanings may be different from common usage. For instance, the word "comprises", when used in the claims of a United States patent, means "consists at least of". By contrast, the word "consists" means "consists only of", which will lead to a very different scope of protection.
Furthermore, in U.S. patent practice at least, inventors may "act as their own lexicographer
Lexicography is the study of lexicons, and is divided into two separate academic disciplines. It is the art of compiling dictionaries.
* Practical lexicography is the art or craft of compiling, writing and editing dictionaries.
* Theoreti ...
" in a patent application. That means that an inventor may give a common word or phrase a meaning that is very specific and different from the normal definition of said word or phrase. Thus a claim must be interpreted in light of the definitions provided in the specification of a patent. The specification of a patent is a written description of how to make and use the invention (see also: sufficiency of disclosure
Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fu ...
). In U.S. law, a claim is given its broadest reasonable interpretation consistent with the specification during prosecution of the application; however, in a suit for patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may v ...
, a claim is interpreted in a Markman hearing
A ''Markman'' hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim, when patent infringement is alleged by a pl ...
.
Basic types and categories
There are two basic types of claims:
* the independent claims, which stand on their own, and
* the dependent claims, which depend on a single claim or on several claims and generally express particular embodiments as fall-back positions.
The expressions "in one embodiment", "in a preferred embodiment", "in a particular embodiment", "in an advantageous embodiment" or the like often appear in the description of patent applications and are used to introduce a particular implementation or method of carrying out the invention. These various embodiments may or may not each be claimed with specificity. They might serve as multiple examples of a more general "genus" that is claimed. In some cases the examiner might declare that what the applicant presented as variations of one invention are actually separate inventions that need to be examined individually.
An independent ("stand alone") claim does not refer to an earlier claim, whereas a dependent claim does refer to an earlier claim, assumes all of the limitations of that claim and then adds restrictions (e.g. "The handle of claim 2, wherein it is hinged.") Each dependent claim is, by law, narrower than the independent claim upon which it depends. Although this results in coverage narrower than provided by the independent claim upon which the second claim depends, it is additional coverage, and there are many advantages to the patent applicant in submitting and obtaining a full suite of dependent claims:
:* Clarification/broadening of the independent claim: Independent claims are typically written with broad terms, to avoid permitting competitors to circumvent the claim by altering some aspect of the basic design. But when a broad wording is used, it may raise a question as to the scope of the term itself. If a dependent claim is specifically drawn to a narrower interpretation, then, at least in the U.S., the doctrine of claim differentiation states that the scope of the independent claim is strongly presumed be different from, and therefore broader than, the scope of the dependent claim. The doctrine dictates that it "is improper for courts to read into an independent claim a limitation explicitly set forth in another claim." This means that if an independent claim recites a chair with a plurality of legs, and a dependent claim depending from the independent recites a chair with four legs, the independent claim is not limited to what is recited in the dependent claim. The dependent claim protects chairs with four legs, and the independent claim protects chairs with four legs as well as chairs having two, three, five or more legs. Similarly, it may be unclear whether a "base" includes a "set of legs." A dependent claim, including the phrase, "wherein said base comprises a set of legs," if allowed by the patent examiner A patent examiner (or, historically, a patent clerk) is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the Unit ...
, clarifies that the word "base" in the independent claim does not necessarily include legs. In practice, dependent claims are often used to home in on the inventor's preferred embodiment of the invention (e.g., the actual product design that the inventor intends to use.) The independent claim broadly describes the invention; dependent claim #1 describes the invention in a narrower aspect that more specifically describes the preferred embodiment; dependent claim #2 is narrower still; etc.
:* Possible invalidity of independent claim: It is impossible to know, when beginning the application process and even at the time of patent issuance, if a patent claim is valid. This is because any publication dated before the application's priority date
Priority date is a United States immigration concept – it is the date when a principal applicant first reveals his or her intent of immigration to the US government. For family-sponsored applicants, the priority date is the date an immigration ...
and published anywhere in any language can invalidate the claim (excluding publications by the inventor published during the grace period in certain countries such as U.S., Canada and Japan). Furthermore, even applications that were not yet published at the time of filing, but have a priority date prior to the priority date of the application, can also invalidate the claim. As it is impossible to gain an absolute and complete knowledge of every publication on earth, not to mention unpublished patent applications, there is always some degree of uncertainty. If the independent claim is determined to be invalid, however, a dependent claim may nevertheless survive, and may still be broad enough to bar competitors from valuable commercial territory.
Under the European Patent Convention
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to w ...
, when a claim in one particular category (see below), e.g. a process claim, depends on a claim from a different category, e.g. a product claim, it is not considered to be a dependent claim but an independent claim. Under U.S. law, this is still counted as a dependent claim, regardless of the class change.
The rules of claim drafting also permit "multiple dependent claims" that reference more than one other claim, e.g.: "3. Method of claim 1 or 2, further comprising..." The rules for this are quite specific: specific claims must be referenced ("the method of any of these other claims" is incorrect); the claims must be referenced in the alternative ("the method of claims 1 and 2" is incorrect); etc. While still acceptable, this claim style is seldom used in the U.S. because it is counted for filing fee purposes according to the number of claims that it references. Thus, if the claim depends from three former claims, it is counted for fee purposes as three dependent claims. In light of the "excess claim" fees currently imposed by the USPTO
The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...
, this tactic can quickly become expensive. Multiple dependent claims are, however, very commonly used in other jurisdictions, including Europe.
Claims can also be classified in categories, i.e. in terms of what they ''claim''. A claim can refer to
* a physical entity, i.e. a product (or material) or an apparatus (or device, system, article, ...). The claim is then called respectively "product claim" or "apparatus claim"; or
* an activity, i.e. a process (or method) or a use. The claim is then called respectively "process claim" (or method claim) or "use claim".
In the United States, these categories are called the four statutory categories of invention and are called process
A process is a series or set of activities that interact to produce a result; it may occur once-only or be recurrent or periodic.
Things called a process include:
Business and management
*Business process, activities that produce a specific se ...
es, machine
A machine is a physical system using Power (physics), power to apply Force, forces and control Motion, movement to perform an action. The term is commonly applied to artificial devices, such as those employing engines or motors, but also to na ...
s, manufactures, and compositions of matter.MPEP § 2106 Patent Subject Matter Eligibility
from the Manual of Patent Examining Procedure
The ''Manual of Patent Examining Procedure'' (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be follo ...
Special types of claims
In addition to the above basic claim types, there are also many special types of claim which are used in different circumstances. Sometimes a particular claim form is required by law if a patent is to be granted for a particular invention, such as for a second medical use of a known substance where the "
Swiss-type" claim might be required. Another reason to use a particular claim might be to catch a particular class of infringer.
See also
* ''
Catnic Components Ltd. v. Hill & Smith Ltd.'' (1982)
*
Claim chart
*
Clearance search and opinion
*
Cloem
Cloem is a company based in Cannes, France, which applies natural language processing (NLP) technologies to assist patent applicants in creating variants of patent claims, called "cloems". According to the company, these "computer-generated claim ...
, a company creating computer-generated variants of patent claims
*
Disclaimer
A disclaimer is generally any statement intended to specify or delimit the scope of rights and obligations that may be exercised and enforced by parties in a legally recognized relationship. In contrast to other terms for legally operative langua ...
*
Doctrine of equivalents
The doctrine of equivalents is a legal rule in many (but not all) of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope ...
* ''
Probatio diabolica'', in relation to product-by-process claims
References
Further reading
* ''The construction of product-by-process claims'', 11th
European Patent Judges' Symposium The European Patent Judges' Symposium (french: Colloque des juges européens de brevets, german: Symposium europäischer Patentrichter) is a biennial symposium, with the claimed aim of providing a platform for national judges from legal systems wi ...
, Copenhagen, Official Journal of the EPO 2003, Special Edition, No. 2, p. 20-75
pdf
External links
* European Patent Convention
** defining the extent of protection
*
** defining the role of claims
** (previously ) expressing the legal requirements regarding the form and content of the claims
* US patent law (Title 35 of the US Code)
*
patentable subject matter
*
specification and claims
* Studies on patent claims
*
This paper addresses issues in measuring the voluminosity of patent applications (number of claims and pages) and highlights patterns in its evolution.
{{DEFAULTSORT:Claim (Patent)
Patent law