Claimsby, Arun Narasani
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012
Agenda
● Basics● Claim structure● Claim types
● Drafting● Preparation● Drafting
● Interpretation
● Common questions
© Brain League IP Services Pvt. Ltd. 18 Oct, 2012
Claim Basics
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Claims overview
● 35 USC 112: specification● Claims must define the subject matter being
claimed● Claims must particularly point out and distinctly
claim what applicant regards as his invention– define the boundaries of an invention - “metes and
bounds”
● Claims must be fully enabled by the specification
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Statutory classes
● US: process, machine, (article of) manufacture, or composition of matter, or any new and useful improvement thereof
● India: product or process
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Proper sentence
● Claim forms a complete sentence forming the direct object of the phrase “I claim”
● “I claim: A pencil having an eraser fastened to one end.”
● Note the capital letters and the full stop
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Ordering
● Claims are presented in a logical order and numbered consecutively
● Logical grouping of claims is allowed (using a line, for example)● logical ordering makes it easy to understand the
structure of claims
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Claim structure
● <preamble> <transition phrase> <body of claim>● “A pencil having an eraser fastened to one end.”
● <A pencil> <having> <an eraser fastened to one end.>
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Preamble
● Introductory phrase to set the context of a claim● need to define what the claim is about● cannot say: “A method comprising:”
● Limitations in preamble may or may not be given effect● context specific● ensure that a specific element disclosed in
preamble is also part of the body; else remove it
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Preamble
● Short preamble is better when possible● enough purpose or intended use may be necessary
for categorization
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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
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Transition phrase (contd..)
● Other uncommon transition phrases● “including”, “having”, “containing” and “wherein”
– Really not used anymore in the electronics/software domain
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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
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Body (contd..)
● Double inclusion of elements without separate structures may be rendered indefinite
● Single element performing multiple functions may be claimed using function language
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Claim types – subject matter
● Product claims● compound/ device/ machine/ artcile (of manf.)/
system
● Process/ Method claims● as one or more steps for performing/ treatment/ use
● Apparatus claims● with active components
● Use
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Claims types – subject matter
● Apparatus● with active components
● Article (of manf.)● without active components
● System: ● set of discrete elements (with active components
and/or non active components)
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Claim types – scope
● Markush (selected from group consisting of A, B, and C)● functionally equivalent alternatives
● Mean-plus-function/ Step-plus-function● to cover multiple structures/actions (through
multiple embodiments)● equivalent (same function, substantially same way,
substantially same result)● avoid when possible
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Claim types – scope
● Omnibus● India specific; not allowed in US
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Claim types – scope (to avoid)
● Product by process● patentability assessment only by product● process steps are also considered for infringement● process steps may be considered for validity
● Beauregard (computer readable medium)● no more considered statutory
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Claim types – scope (to avoid)
● Jepson ● (.. wherein the improvement comprises ..)● makes it easier for examiners to reject based on
prior art
● Signal● "an electromagnetic signal carrying computer-
readable instructions for.."● reject anything but a physical form of energy
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Claim types – structure
● Independent claims
● Dependent claims
● Multiple dependent claims (avoid when possible)● alternative form only
– “according to claims 3 or 4”– “either claim 1 or 2”– “any one of claims 1, 2 and 3”
● cumulative claiming not allowed– “according to claims 3 and 4”
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Claim Drafting
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Preparation
● Reasons for obtaining a patent
● Problem that led to the solution● helps in broadening the scope of claims
● Novelty according to inventor● many times inventors may not know
● Prior art according to inventor● known products/services, and literature
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Preparation
● Commercial environment● product/ combination● consider combination claims (ex: Apparatus
comprising a processor)
● Possible applications?
● Likely users / infringers?
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Preparation
● Commercial environment● product/ combination● consider combination claims (ex: Apparatus
comprising a processor)
● Possible applications?
● Likely users / infringers?
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Claim drafting
● Independent claims covering multiple facets● based on commercial and strategy considerations
● Multiple set of independent claims ● broad, medium, narrow● subject to financial considerations
● Dependent claims adding relevant limitations● claim differentiation
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Claim drafting (contd..)
● Claim considerations● overlap with prior art; understand what we are
relying on when it comes to prosecution● circumvention; ensure that claims avoid clearly
known prior art● directing towards target infringers● focus on literal infringement; define terms clearly
(+ve decision based on equivalence is rare)
● Communicate with client● review and iterate
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Claim differentiation
● Every claim is assumed to have a different scope● having dependent claims automatically implies that
broader scope of protection is sought through corresponding independent claim
● So it always good to have one or two limitations pushed to dependent claims● while ensuring that independent claims have novel
elements to rely on
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Clarity of claims
● Ambiguous terms● “like”, “close to”, “almost”, “near” etc
● Glorification● “.. where said greatly improved device comprises
of:”
● Appropriate punctuation● “A tool for manufacturing a machine comprising: ..”● “A tool for manufacturing a machine, comprising:”
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Clarity of claims
● “A tool for manufacturing a machine, said tool comprising:”
● Essential elements● a claim for improved blades for a fan does not need
to recite the fan motor as an element
● Unity of invention● one application must have claims relating to one
inventive concept
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Claim interpretation
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Structure
● Every claim set (set of independent and dependent claims) can be thought as a tree● independent claim will be the trunk● dependent claim will be a branch● a dependent on a dependent will be a branch on a
branch and so on...
● Dependency● based on embodiments
– Linear (chain) vs radial (circle)
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Scope
● Independent claims● covering all embodiments or speicific to an
embodiment● terms specific to an embodiment limits the scope of
the claim● evaluate each term
● Dependent claims● branch out for each embodiment/ new feature● use limitations relating to specific embodiments/
features in dependent claims
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Common Questions
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Questions
● What if I don't understand the invention?● ask the inventors; understand the fundamental
problem being solved
● How many embodiments?● as many as you can; push the inventors for more
information; enables broad claims
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Questions
● How many independent claims?● as many required to cover all novel aspects; ideally
one specific novelty per independent claim
● When to use dependent claims?● for specific embodiments in a broad claim set● for substitutes/variations, for specific elements
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Questions
● Functional limitation● method claims● for products, provide only generally understood
function where possible
● Structural limitation● product claims● for methods, to avoid being abstract (ex: software)
● When to use Means-plus-function?● cover discrete embodiments
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Questions
● Plurality or multiple● plurality: literally means at least two; “one” has also
been considered to part of “plurality”● multiple: definitely means at least two
● Reference numerals in patent claims● do not use in claims unless required by law/rules;
potentially limits the scope of the claim
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● “at least one” or “one or more” ● “at least one of a X, a Y, and a Z”: means minimum
one category
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More Questions?