A patent claim is indisputably the most important part of a
patent specification. It defines the boundary of the patent. To
break it down, a patent claim defines exactly what is claimed by
the invention and therefore what is sought to be protected. It
clearly lays down what the patent does and does not cover. Simply
put, the extent of protection conferred by a patent is defined by
the patent claims. A claim is usually expressed as a statement of
technical facts expressed in legal terms, defining the scope of the
invention sought to be protected.
Why is a patent claim so important?
The preceding paragraph would have made the immense importance
of a patent claim evident. A patent claim is that part of the
specification, which after the patent is granted, tells third
parties what they can and cannot do insofar as the invention is
concerned. The exclusive right conferred by the grant of a patent
is defined by a patent claim. Any mistake in drafting patent claims
could result in an utterly useless patent. Only the patent claims
define the scope of protection granted by a patent. The rest of the
patent specification only helps explain the invention in detail. Claims define the contours of legal rights
when the patent is granted. Section 10 (4) (c) of the Patents Act,
1970 states that every complete specification must end with a
patent claim or patent claims that defines the scope of the
invention for which protection is claimed.
How to draft a patent claim?
There is no straightjacket formula for drafting a patent claim.
Drafting patent claims depends on each invention. It depends on
what protection the Applicant seeks to claim on that invention.
Depending on the protection sought by the applicant the claim may
be constructed in a broad or narrow manner in reference to existing
prior art. However, care must be taken to ensure that the patent
claims are neither too broad (it cannot include what the applicant
has not invented) nor too narrow (where the applicant may lose out
on a necessary protection). Given the difficult nature of drafting
patent claims, it is clear that drafting expertise is required to
draft proper patent claims. It is always better to engage
professional services to draft a patent specification.
What are the types of patent claims?
Essentially, claims are of two types: Independent claims and
They are 'stand alone' claims that do not bear reference
to any other claim. It contains a preamble and all the elements
necessary to define the invention. The first claim is usually an
independent claim that sets the tone for the protection claimed by
the invention. Independent claims are usually broader as compared
to the dependent claims so as to prevent potential infringers from
circumventing the independent claim in any which way.
Independent Claims may be of three types:
A claim for a thing
A claim for a method of making a
A claim for a method of using a
Dependent claims always bear reference to an earlier claim or
independent claim and limit their scope. Dependent claims are
therefore relatively narrow as they limit the scope of an earlier
claim. Further, dependent claims refine the scope of protection
sought for an invention. Additionally, it may contain additional
non-essential features and even the minute aspects and optional
features that are not described in the independent claim.
These are the basic types of patent claims. On the whole, claims
must be drafted meticulously in order to get the patent protection
that is sought and protect the invention against potential
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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