Patent Claim Meaning Needs to Make Sense to Person Skilled in the Art

In an before article on patent merits drafting I discussed what you must do before you ever remember about writing patent claims.Meet A prelude to patent claim drafting. Today nosotros pick up from there to discuss in a very basic way what must go into your patent merits.*

Of class, this puts the cart a little bit before the horse. Let's recall that in order to obtain a utility patent on an invention in the U.S. a non-conditional utility patent application must be filed. A utility patent is different from a pattern patent. A utility patent volition define the structure of an invention, as well as the way information technology operates. A design patent merely protects the way a production looks, or in patent speak the ornamental advent. While pattern protection can be quite important for sure inventions, and many inventors pursue both blueprint and utility protection, utility patent protection is much stronger and typically the type of protection most inventors will elect to pursue.

The rights ultimately granted in a utility patent are divers by the patent claim (or claims) reviewed by the patent examiner and ultimately issued in the patent. While the specification (i.e., text and drawings) patent application must define the invention in its total celebrity, if you practise not have claims covering a item aspect of what you have disclosed then you have not been awarded those rights. Thus, the claims are ofttimes described equally the virtually important part of the patent application considering they are said to define the scope of the exclusive rights granted by the regime.

Patent claims are difficult to read and even harder to write. The complexity of patent practise is why many (if not most) inventors will seek professional assistance from a patent practitioner, and the patent claims are the part of the awarding that are the nearly technically complicated.

What the Police force Says About Patent Claims

A nonprovisional patent application must accept at least ane patent claim particularly pointing out and distinctly defining the invention, although most patent applications and issued patents volition have many more than one claim. For the bones filing fee you can have up to three independent claims and up to twenty full claims without incurring whatever additional merits fees. Because a patent with more claims is considered stronger and more valuable as a wide general rule, you might every bit well have at least as many as you can for the price of the basic filing fee.

A merits may exist written in either independent or dependent form. An independent claim stands lone and does non refer to or incorporate any other merits. A dependent merits refers to a previous claim and further limits the invention, either by incorporating an additional chemical element or limitation not previously introduced or further narrowing an element or limitation that was previously introduced. A claim in dependent form incorporates past reference all the limitations of the claim to which information technology refers.

Three Simple Rules for Patent Claim Drafting

First, every patent claim needs a preamble, which is the introductory phrase in a claim.** The general rule is that the preamble of a merits does not limit the telescopic of the claim, only attempt and stay away from functional language if you tin. Functional language is non wrong and it will ordinarily not limit a merits, but why take a chance? Information technology is best do to avert functional language with only a few exceptions. For instance, the patent examiner may be willing to requite y'all a claim if you add some functional linguistic communication. If that is the instance then you need to make up one's mind whether it makes sense to add the language, which in many cases (although not all cases) it will. Then effort something like: "A shovel…" every bit a preamble instead of: "A shovel for digging…"

2d, every patent claim needs a transition.** The most common transitions are: "comprising" and "consisting of." "Comprising" is by far the nearly common considering it means the invention includes simply is non express to the elements identified in the claim. "Consisting of" is closed and means that the invention is only what is described. Mostly speaking, you see "consisting of" equally a transition in the chemical, biotech and pharmaceutical arts, or more broadly in areas where the engineering science is highly unpredictable.*** For mechanical and electrical inventions, software and methods, you lot will almost universally encounter "comprising" used because it volition result in the broadest protection.

Third, the commencement time you introduce a limitation (i.e., an chemical element, characteristic, internal reference, etc.) in a patent merits you MUST introduce it with either "a" or "an", equally is grammatically advisable. (i.eastward., Primary ancestor basis). Subsequently you refer to the already introduced limitation by either "said" or "the." (i.due east., Secondary antecedent basis). This tin be quite difficult for beginners because the 3 nigh common words in the English language language — a, an and the — are all terms of art for patent claim drafting.

Patent Claim Drafting Examples

Below in an instance of an independent claim that applies the higher up stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titledMultiple component headgear organisation. I have put the preamble in a blood-red box, the transition in a blueish circle, and I've bolded and underlined the primary and secondary antecedent basis. I've used "said" in this example. The word "the" could have been used, merely for those starting out "said" is probably best considering it is a little more forced, which will hopefully help you lot brand certain you applying this rule properly.

Illustrative independent claim 1, which is inspired by U.S. Patent No. 6,009,555.

Below are examples of dependent claims, again using the invention found in the '555 patent as our guide. One time once again, the preambles are in scarlet, the transitions are in blue, the ancestor basis are assuming and underlined. There are a couple things to notice, however. Starting time, for dependent claims the preamble must match up with the preamble from the broadest contained claim in the concatenation. Here the invention is a headgear apparatus, then all of the dependent claims will be to a headgear apparatus. 2nd, the transition for a dependent merits will either exist "wherein", which is used when something already introduced is being further narrowed, or "further comprising" when something new is existence introduced for the start time. Tertiary, notice that claims v and 6 exercise not depend from merits i, just rather dependent from other dependent claims. This is how you chain claims together. Finally, If you look at the patent you lot will find this is not the order of the claims. There is a technical mistake in the order of the claims as issued in the patent, which could be raised by an examiner but typically is not whatever more. Yous are supposed to have all claims that depend on merits i earlier you have any claims that depend from claim 2 and and then on. If you wait at the '555 patent you will see that our dependent claim 4 corresponds with issued merits 8, which would pb to a Rule ane.75(g) objection if yous exercise that in your application.

Illustrative dependent claims inspired by U.S. Patent No. 6,009,555.

Additional Information

For more tutorial information delight meet Invention to Patent 101: Everything Yous Need to Know. For more than information specifically on patent application drafting please see:

• Tin can Yous Refile a Provisional Patent Application?
• Ten Common Patent Claim Drafting Mistakes to Avoid
• It's All in the Hardware: Overcoming 101 Rejections in Computer Networking Engineering science Classes
• Two Key Steps to Overcome Rejections Received on PCT Drawings
• Drafting Lessons from a 101 Loss in the Eastern Commune of Texas
• From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
• Understand Your Utility Patent Awarding Drawings
• Getting a Patent: The Devastating Consequences of Not Naming All Inventors
• Getting A Patent: Who Should be Named every bit An Inventor?
• Brand Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
• Avert the Patent Pit of Despair: Drafting Claims Away from TC 3600
• A Tale of 2 Electric Vehicle Charging Stations: Drafting Lessons for the New Eligibility Reality
• Background Pitfalls When Drafting a Patent Application
• Eight Tips to Get Your Patent Approved at the EPO
• What to Know About Drafting Patent Claims
• Beyond the Slice and Dice: Turning Your Idea into an Invention
• Examining the Unforeseen Effects of the USPTO's New Department 112 Guidelines
• Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
• Software Patent Drafting Lessons from the Key Lighthouse Cases
• Patent Drafting Basics: Instruction Manual Detail is What You lot Seek
• How to Write a Patent Application
• Admissions as Prior Fine art in a Patent: What they are and why you need to avoid them
• Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
• Patent Drafting: Proving You're in Possession of the Invention
• Patent Drafting: Understanding the Enablement Requirement
• Patent Drafting 101: Say What Y'all Mean in a Patent Application
• Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Awarding
• Learning from common patent application mistakes past inventors
• Defining Computer Related Inventions in a post-Alice World
• Patent Application Drafting: Using the Specification for more than the ordinary obviously pregnant
• Patent Strategy: Avant-garde Patent Claim Drafting for Inventors
• Patent Drafting 101: The Nuts of Describing Your Invention in a Patent Application
• Patent Drafting for Beginners: The beefcake of a patent claim
• Patent Drafting for Beginners: A prelude to patent claim drafting
• The Inventors' Dilemma: Drafting your ain patent awarding when you lack funds
• Patent Drafting: Describing What is Unique Without Puffing
• 5 things inventors and startups need to know almost patents
• Drafting Patent Applications: Writing Method Claims
• An Introduction to Patent Claims
• Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
• Patent Language Difficulties: Open up Mouth, Insert Pes
• Patent Drafting: The Employ of Relative Terminology Can Be Dangerous
• Patent Drafting: Distinctly identifying the invention in verbal terms
• Patent Drafting: Agreement the Specification of the Invention
• Tricks & Tips to Depict an Invention in a Patent Application
• Invention to Patent 101 – Everything You Need to Know to Get Started
• Patent Drafting 101: Beware Groundwork Pitfalls When Drafting a Patent Application
• Describing an Invention in a Patent Awarding
• The Key to Drafting an Excellent Patent – Alternatives
• The Price of Obtaining a Patent in the Usa

UPDATED on Tuesday, Dec thirteen, 2016, at 2:42 pm ET to add the annotate establish beneath at **.

_______________

* This and other articles on IPWatchdog.com should non be viewed every bit encouragement for those who can afford professional person aid to cut corners and do things themselves. If you can afford to hire a patent practitioner you should. Of course, the more you read and sympathise the better prepared you will be to meaningfully assist your called patent chaser or agent. For many, however, the choice volition be either to do it yourself or give up. The reality facing all entrepreneurs is that there is never enough time or money to do everything; that is the nature of being a start-upwardly entrepreneur or serial inventor. This tutorial, and the many other articles on IPWatchdog.com are required reading for those who have consciously decided to pursue a patent process on their own. Proceeding on your own comes with smashing gamble. Read as much as y'all can, educate yourself to the greatest extent possible, and try and notice professionals who will assist you lot piece by piece as necessary.

** A preamble and transition should be thought of as absolutely required unless y'all are claiming a new compound or synthetically created element. For example see U.Southward. Patent No. 2,699,054 (particularly merits 2), which covers tetracycline. Also see U.S. Patent No. 3,161,462, which covers Element 96. Information technology is the boggling situation where claims volition not have a preamble and/or a transition.See alsoMPEP 2173 (t).

*** A full caption equally to why this is true goes across the scope of this article. Suffice it to say for now that when you use "consisting of" as a transition you lot narrow the universe of possible prior art. Additionally, in unpredictable fields this can be useful because you want to merits what you know works and not capture too many things in your merits that will not work, which could render the claim invalid.

Gene Quinn Cistron Quinn is a patent chaser and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named i of the top 50 about influential people [...see more]

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com practise non found legal advice, nor do they create any attorney-customer relationship. The articles published express the personal stance and views of the author as of the time of publication and should not be attributed to the author's employer, clients or the sponsors of IPWatchdog.com. Read more.

woodsprintregarry.blogspot.com

Source: https://www.ipwatchdog.com/2016/12/10/patent-drafting-anatomy-patent-claim/id=75575/

Share this post