Patent claims: an overview
A patent claim can be defined as a sentence in a patent application that elucidates an invention's features and components. In other words, a patent claim describes the functionality of an invention and its corresponding features which has to be patented. Typically, patent claims are enlisted at the end of a patent application. As per section 10(4) (c) of the Patents Act, 1970, every complete specification must end with a patent claim or patent claims which aims to define the scope of the invention for which the protection is claimed. Patent claims play a pivotal role in a patent application. For one, it prevents unauthorized parties from duplicating or commercially exploiting the features, components, and functionalities enlisted in the claims. Patent claims must be described in detail, leaving no room for ambiguities or speculations. Apart from comprehensive descriptions, diagrams, flow charts or graphical representations of the invention would immensely strengthen and support the claims that are enlisted in an application.
Parts of a patent claim
A preamble is the very first component of a patent claim. Essentially, a preamble recognizes the category that the invention belongs to. Such categories may include a process, composition, method, device, apparatus or an article. While drafting the preamble, it is crucial to maintain consistency with the title of the invention. Moreover, the preamble may also recite an object of the invention for which the patent is being filed. For example, the object of an invention can be defined as "to roast food items", whereas, the title would be "an apparatus for roasting food items".
2. Transitional phrases
Transitional phrases can be defined as phrases that interlink the preamble of a claim to the components described in the claim (that defines an invention's functionality). In other words, transitional phrases connects the preamble to the elements pertaining to the invention. Some of the most common transitional phrases are the words 'comprising' and 'consisting of'. Typically, 'comprising' is considered a broad and an open ended phrase while 'consisting of' is considered a closed phrase since it limits the scope of the claim to the components that are expressly recited.
3. Body of the claim
The final part that succeeds transitional phrases is the body of the claim. The body of the claim provides a detailed description of the claims. The body of the claim attempts to interlink and describe the relationship between different components of the invention. The body of the claim cannot merely enlist the different parts of the invention. Instead, the body must attempt to establish the relationship between the various parts of the invention.
Types of patent claims
1. Independent and dependent claims
An independent claim can be defined as a claim consisting of the limitations necessary to define an invention. In other words, independent claims cover the essential features of an invention. An independent claim can be followed by additional claims that define various components of an invention. On the other hand, a dependent claim can be defined as a claim that further elaborates upon the features or limitations of an invention. The European Patent Office defines dependent claims as "any claim which includes all the features of any other claim". A dependent claim's scope is relatively more specific and may consist of secondary features pertaining to the invention. Typically, patent infringement can be determined if an invention infringes an independent claim. Moreover, if a product does not infringe an independent claim, it would not infringe a dependent claim as well since dependent claims are an extension of independent claims.
2. Mean plus function claim
Mean plus function claims can be defined as claims that describe the functionality of a particular feature present in the invention. A mean claim does not specify any particular structure. Moreover, mean plus function claims are typically used to elaborate on the materials, acts or specifications concerning the functionality of an invention. 35 U.S.C section 112 (f) defines mean plus function claims as follows:
"An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."
A mean plus function claim is also referred to as a "step plus function" claim and are primarily used with an independent claim if the specifications related to the invention supports the use of mean plus function language. Thus, a mean plus function claim attempts to recite the functions performed by the structures or components of the invention.
3. Apparatus claim
An apparatus claim describes a device or a network of systems that exists within the invention. In sum, an apparatus claim defines the components of the invention. Unlike a mean plus function claim, an apparatus claim does not touch upon the functionality or processes pertaining to the invention. Instead, it defines the apparatus or device that the invention is created out of.
4. Method claim
A method claim outlines the processes and steps that are carried out by the invention to provide an output. Generally, transitional phrases such as "comprising" or "comprising the steps of" is used to recite method claims. A method claim must recite the order of processes required to complete a function and provide an output that is often interpreted as being performed in any order (either chronological or non-chronological) unless the claim specifies otherwise.
5. Composition claim
A composition claim is normally present when an invention that is composed of chemicals is being patented. Similar to a device claim, a composition claim defines the chemical elements used to create a process or a material.
1. Jepson claims
In a Jepson claim, the preamble describes a statement that pertains to a prior art which is followed by claims that are an improvement over the prior art. In short, Jepson claims elaborate on the point of novelty of the invention compared to the prior art that exists in a particular domain. Jepson claims predominantly exists in US patent law. For example, such claims can be recited as "an apparatus for boiling tea having (...) wherein the improvement comprises".
2. Beauregard claim
A Beauregard claim is typically used for claims in patents pertaining to software and software-related inventions. In a Beauregard claim's preamble, several instructions that a computer program may process are mentioned. Moreover, Beauregard claims primarily focuses on proving the function of the software over the composition of the software.
To draft plausible patent claims, it is imperative not to draft unspecific, broad or indefinite claims. As a matter of fact, drafting the aforementioned types of claims requires professional assistance. Thus, it would be favorable for the applicant if a patent claim is drafted by a professional which would in turn, boost the chances of granting a patent.
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.