The Purpose of a Patent Claim
The main objective of a patent claim is to precisely outline the scope of the claimed invention. When a patent application is granted, the patent claims become the defining boundaries of the protection granted by the patent. Any infringement of the patent claims can result in liability for damages and a prohibition on competition with the patent holder.
Patent Claim Example
To illustrate a patent claim, let’s consider a wooden pencil. An example of a patent claim for a wooden pencil might look like this:
Determining the Scope of a Patent Claim
Every non-provisional patent application must include at least one claim. However, it’s important not to simply satisfy the legal requirement by including a claim. When drafting a claim, consider the words used, as they determine the breadth of the claim and what you intend to protect as your invention.
Let’s refer back to the wooden pencil example to understand how a modified pencil might infringe on the original pencil claim. The wooden pencil claim consists of three elements: A, B, and C. To infringe on this claim, a writing instrument must incorporate all three elements.
To further clarify, let’s consider five different embodiments of a writing instrument:
- Writing instrument #1 includes elements A, B, and C. It infringes on the patent claim because it incorporates all the required elements.
- Writing instrument #2 includes elements A and B, but not C. It does not infringe on the patent claim because it lacks element C.
- Writing instrument #3 includes elements B and C, but not A. It does not infringe on the patent claim because it lacks element A.
- Writing instrument #4 includes elements A and C, but not B. It does not infringe on the patent claim because it lacks element B.
- Writing instrument #5 includes elements A, B, C, and an additional element D. It infringes on the patent claim because it incorporates all the required elements. The inclusion of the extra element D does not affect infringement.
Make sure to fully grasp this example before moving forward. If needed, please reread this section.
Interpreting the Language of a Patent Claim
The interpretation of claim language is crucial as it determines the breadth of the claim and the examiner’s evaluation of novelty and obviousness. During the examination of a patent application, the claim language is broadly interpreted. It’s generally more cost-effective to avoid debating the examiner’s interpretation of claim language unless absolutely necessary.
If an examiner assigns a specific meaning to a claim term, it’s better to use a different term that restricts the broad interpretation. The examiner’s interpretation of a claim term can be deduced implicitly by comparing the claim elements, limitations, and language to the relevant parts of the prior art reference. Note that the interpretation of claim terms varies during examination and litigation. In litigation, claims are given their ordinary meaning, which is narrower than the broadest reasonable interpretation during examination.
Independent Patent Claims Should Focus on the Invention’s Point of Novelty
When arguing for the patentability of a claim, the analysis centers around the claimed invention as a whole. However, when drafting a basic patent claim, it’s helpful to identify the unique benefit and work backward to the structure that achieves that benefit. By focusing the independent claim on the point of novelty, you can typically secure broader patent protection.
Remember, this exercise is only for drafting the initial claim and does not cover mastering the art of claim drafting.
Two Types of Patent Claims
Every patent claim falls into one of two categories: apparatus claims or method claims. Apparatus claims are directed towards physical objects or images, while method claims revolve around steps in a process. Method claims can pertain to actions performed by people or machines.
Writing a Basic Patent Claim
A patent claim comprises three sections: the preamble, the transitional phrase, and the body of the claim.
The preamble is the beginning of the claim and identifies whether it pertains to an apparatus or a method. For instance, in the writing instrument claim, the preamble could start with “An apparatus for making a mark on a writing surface” or “A method for making a mark on a writing surface”.
The transitional phrase is typically “comprising”. It offers the broadest protection and is commonly used. Other transitional phrases, such as “consisting of” or “consisting essentially of”, can also be utilized. The body of the claim follows the transitional phrase and defines the elements and limitations of the claim. It’s crucial to focus the body of the claim on the point of novelty.
The claim is written as a single sentence, with semicolons and commas separating different elements and limitations.
Special Claim Language
A means-plus-function limitation allows the quick claiming of multiple embodiments described in a patent application. While it is not always the preferred approach, in limited cases, it can be a useful tool for a patent attorney. For example, if a patent application describes multiple ways of attaching a part to a base, the various attachment methods can be claimed as a “means for attaching a part to a base”. This phrase broadly encompasses all the described methods. However, means-plus-function limitations require specific support in the patent claim and specification to avoid invalidation during litigation.
Functional language is frequently used in patent claims. While it does not add patentable weight to the claim, it provides context to the claim as a whole. Be mindful that functional language could inadvertently trigger the means-plus-function style of claiming, potentially leading to invalidation.
Basic Claiming Strategy
A recommended strategy for solo inventors and startups is to initially submit claims of medium breadth. While some inventors desire broad protection across multiple technical fields, drafting overly broad claims invites the examiner to cite prior art from a wide range of fields. Broad claims may also lead to increased costs due to numerous office actions and responses required to overcome examiner rejections.
Instead, consider introducing a patent claim specifically focused on the primary competitive market of the inventor or startup. These medium breadth claims protect the core area in which they intend to sell their products.
Narrow claims have their place in the overall strategy but should be avoided initially unless there is a specific purpose for including them. Keep in mind that narrow claims are easily designed around, resulting in minimal competitive disadvantage for copycat products.