Drafting Claims

OMS PATENT SERVICES PVT LTD

Guidelines for Drafting Patent Claims

-Rohini AgadiAssistant patent

engineerOms patent services pvt

ltd


What is Patent Claim?• Claim drafting is the heart and soul of any

patent application. This domain may bring prices less streams of lucks to the inventor, or his/her immediate demise in a market arena.

• After all, claim drafting is only the first base of patent application.

• Claims define the legal scope of a patent and define what can be protected by patent law.


Importance and scope• Patent protection is granted only to the claims.• The claims are of the utmost importance both during

prosecution and litigation.• Claims continue to be important once a patent is

granted, because questions of patent validity and patent infringement are judged by the courts on the basis of the claims.

• The fee required to be submitted with a non-provisional utility patent application is, in part, determined by the number of claims and type of claims.

http://en.wikipedia.org/wiki/Patent_prosecution

http://en.wikipedia.org/wiki/Lawsuit

http://inventors.about.com/od/inventing101patents/f/patenting_fees.htm




Characteristic Features• The description of invention in the complete specification is

to be followed by a “statement of claims” preceded by the prescribed preamble, “I or we claim” as the case may be.

• Claims should start from the fresh page after full description of the invention with the claims serially numbered.

• There is no restriction to the number of claims to be incorporated in the specification. But the applicant has to pay additional fee, if there are more than ten claims.

• A claim (s) of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept and, shall be clear and succinct and fairly based on the matter disclosed in the specification (section 10 (5)).



• A claim must be clear, complete and supported by description. A claim must be clear in the sense that it should not cause the reader to speculate about the claim. For example, if the words like “thin”, “strong”, “a major part”, “such as”, “when required” or “any” are used, then it forces the reader to make a subjective judgment and not an objective observation, unless such expression follows any definite values.

• A claim must be specific and not vague, ambiguous, speculative or hypothetical in nature. Each claim should be complete so that it covers the inventive feature and enough elements around it to put the invention in the proper context.

• Claims must be supported by the description (fairly based on the description). This means that all the characteristics of the invention, that form the part of the claims must be fully explained in the description.

• In addition, any term, which is used in the claims, must be either found in the description or clearly inferred from the description.


Preferred Claim sets

• Independent claims.– Stand on their own– Present the basic design of the invention

• Dependent claims.– Express particular embodiments– Provide fall-back positions


Structure of a Claim• <preamble> <transition phrase> <body of the claim>• Preamble:

– Introductory phrase– Identifies the category of the invention protected by the claim

• Transition phrase:– Characterizes the element that follow– Common phrases: “consisting of…”; “comprising…”; “characterized

in that…”; “containing…”; “involving…”; and so on.• Body:

– Recites the element and limitations of the claims• Example:

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


Structure of a Claim (Cont.)

• Preamble:– Introductory phrase to set the context of a claim– Limitation in preamble may or may not be given

effect– Short preamble is better when possible



• 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



• Other common “Transition phrases”:– “including”; “having”; “containing” and “wherein”• Really not used anymore in the electronics/software

domain



• Body:– Includes material limitations of an invention– New 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



• Example:– I claim:

1. An apparatus consisting of: a pencil; an eraser attached to the pencil; and a light attached to the pencil.


• Claims forms a complete sentence forming the

direct object of the phrase “ I claim”• Note the capital letters and the full stop.• Claims are presented in logical order and

numbered consecutively.• Logical grouping of numbers is allowed (using

a line for example).


Anatomy of an independent claim

• A class, comprising:a element for function;a element connection the element above for function;a element connection the element above for function; anda element connection the element above for function.


Example:1. A method for making a cake comprising: placing flour into a

bowl; pouring milk into the bowl; cracking an egg into the bowl; mixing the contents of the bowl; pouring the contents into a pan; placing the pan in an oven; cooking for one hour; removing from the oven; removing the cake from the pan; allowing the cake to cool; and placing icing on the cake.

2. The method of claim 1 further comprising preheating the oven.3. The method of claim 1 wherein the mixing step is accomplished

by using an electric mixer.4. The method of claim 2 wherein the mixing step is accomplished

by using an electric mixer.


Dependent claims

• A dependent claim is always narrower than its parent claim.

• An additional limitation in a dependent does not reduce the scope of the parent.

• Example:1. A system comprising a memory ….2. The system of claim 1 wherein the memory is a

RAM.


• In general, there is really only one reason to have

dependent claims.– Fear that your independent claims might be found

invalid.

• Make the dependent claims count:– Don’t needlessly repeat them for different claim sets– If possible, include further novel aspects


Claim Differentiation

• Because the dependent is always narrower than its parent, the scope of the parent must always be strictly greater than its child

• Thus in Example:1. A system comprising a memory ….2. The system of claim 1 wherein the memory is a

RAM.• The term “memory” in claim 1 must include

RAMs as well as other kinds of memory


• Use Dependent Claims Wisely• Therefore, add dependent claims that drill down

into the point of novelty of your invention from different directions.

• When considering dependent claims, assume a judge or jury has already decided that your independent claim is invalid.

• If your independent claim was deemed obvious, what is your basis to believe the dependent claim would not also be considered obvious.


Other types of claims

• Multiple dependent claims.• Jepson• Markush• Omnibus


Markush-Type Claims• A Markush claim refers to a chemical structure

by means of symbols indicating substituent groups.

• Mainly used in chemistry to claim multiple functionally equivalent chemical entities allowed in one or more parts of the compound.– Example:1. A composition selected from the group consisting of R1, R2 and R3……


Jepson Claim Structure• Also known as “two-part claim”

– If a preamble comprising “a general description of all the elements or steps of the claimed combination which are conventional or known”,

– A phrase such as “wherein the improvement comprises” and– Those elements, steps, and/or relationships which constitute

that position of the claimed combination which the applicant considers as the new or improved portion.

• Example:I claim:1. A pencil having an eraser, wherein the improvement

comprises a light attached to the pencil.


Omnibus claims

• A so-called omnibus claim is a claim including a reference to the description or the drawings without stating explicitly any technical features of the product or process claimed.

• For example, they may read as "Apparatus as described in the description" or "An x as shown in Figure y


Dependent & Independent Claims

• I claim:1. An apparatus comprising: a pencil; an

eraser attached to the pencil; and a clip; characterized in that a light is attached to the pencil.

2. The apparatus according to claim 1, characterized in that the light emitted is colored pink.

3. The apparatus according to claim 2, characterized in that the light further emits polka-dotted red.

Independent claim

Dependent claim no.1

Dependent claim no.2


Broadening/Diversifying Claims• Use different types of claims– Better protection and leverage on how your patent

can be used• Claim novel features in multiple ways– Consider who may be potential infringers and

draft claims to cover those scenarios• Broaden your claims– In general, shorter claim = broader– Misconception: more claims = broader


Statements that are not considered as a claim

• The statements of the following form given are not to be regarded as claims, in as much as, they do not define the invention:-– I claim to be the inventor of this appliance,– I claim a patent and that no one else shall

use my invention without leave.– I claim that the machine described above is quite

new and has never been seen or used before.– I claim some reward.


Statements that are not considered as a claim (Cont.)

• Also, the claims should not be made, as in the examples given below, for illustrating the efficiency or advantages of the invention:– I claim that this device is better and cheaper and more effectual than

anything known.– I claim that my process or machine will do such and such

things.– I claim the following advantages.– I claim an improved sewing machine.– I claim a mechanism for converting heat into electrical energy

without any loss of efficiency.– I claim a new method of making silk waterproof.
