How to Draft a Patent Claim?

INTRODUCTION

Intellectual property refers to the creation of the mind; it is that intangible property which is a product of human intellect. It includes invention, art, literary work, trademarks, computer programs and other commercial signs, names, symbols and images. Intellectual Property is protected by law by copyrights, patents, trademarks, etc. This legal protection provides certain rights called Intellectual Property Rights (IPR), to the owners of the intellectual property and also enables them to get financial benefit and recognition. A Patent is an exclusive intellectual property right granted for an invention, which may be a product or process that provides a new way of doing something or provides a new technical solution to a problem. A patent provides the patent owner with the right to make a decision on whether the invention can be used by others or not. If yes, then how? A patent is for a limited period of 20 years in India.

WHAT IS A PATENT CLAIM?

A patent claim is a techno-legal document. It is the heart of a patent application which marks the boundary of the protection provided by a patent, just as the physical boundary around some area such as a fence marks the limits of a real estate property. A claim sets the outer limits of patent protection. In simple terms, it tells what the patent does and does not cover. A patent claim defines the scope of protection provided to a patent. It is provided in Section 10 (4) (c) of the Patents Act, 1970 that every patent specification must end with a patent claim(s) and the claim must define the scope of the invention for which protection is sought.

A patent claim must

• define the invention for which protection is sought,
• be clear and concise,
• be supported by the description by way of images, diagrams, and other aids to describe the invention properly,
• be drafted in terms of the technical features of the invention.

It should be drafted carefully because any mistake in drafting patent claims could lead to adverse consequences.

TYPES OF A PATENT CLAIM

Essentially, on the basis of scope, there are two types of patent claims –

Independent claims

These are the broadest claims. They stand alone and do not need any reference from another claim. Each claim set begins with an independent claim. An independent claim shall typically specify the essential features needed to define the invention. For example – An apparatus, comprising: a pencil; and an eraser attached to the pencil. So, this claim does not depend on any other claim, thus this is independent.

Dependant claims

A dependant claim is one that depends on another claim – whether an independent claim or another dependant claim. These claims are subsets of the principal or independent claim. These are always narrower than the claim on which they depend. A dependant claim can only add elements or limitations to the claim to which it refers. For example – the apparatus of the claim mentioned above further comprises a light attached to the centre of the pencil. So, with this claim, one limitation is added to the apparatus.

DRAFTING A PATENT CLAIM

There is no specific formula for drafting a patent claim. It depends on the invention and the protection sought to be claimed for that invention. However, depending on these two factors, the claim may be drafted keeping in mind the following important points.

Parts of a claim are –

1. Preamble

It is an introductory phrase that identifies the category of the invention protected by that claim. The invention can be an apparatus, device, article, composition, process, or method). It tells us about the objective of the invention and also connects the claims with the title of the invention. For example,

• A patent applicant has invented a rice cooker. So, the object of this invention is to cook rice. The preamble is ‘an apparatus for cooking rice’. But, if the invention is for cooking all kinds of grains, a broader preamble will be ‘an apparatus for cooking rains’.
• A patent applicant has invented a method for making tea. So, the object of this invention is to make tea. The preamble is ‘a method for making tea’.
• Transitional phrase
• Open-ended phrase – ‘comprising’, ‘including’, ‘containing’, ‘characterized by’.
• The benefit of using open-ended phrases is that they do not exclude any additional element which is not mentioned. It widens the scope of the claim by allowing for the addition of other elements or limitations.

For example – An apparatus, comprising:

® A pencil; and

® An eraser attached to one end of the pencil.

Now, this claim leaves open the possibility of including a cap of the pencil.

• Closed-ended phrase – ‘consisting of’. A closed phrase limits the claim t the specifically mentioned elements only.

For example – An apparatus, consisting of:

® A pencil; and

® An eraser attached to the pencil.

Now, this is a closed claim and it only includes the two mentioned elements and nothing more.

• Body of the claim

It mentions the elements and limitations of the claim and explains how the elements are related to one another.

• For example – an apparatus for holding items, comprising;

® At least 1 leg; and

® A top configured to support at least 1 leg.

Punctuation marks in a patent claim

• The preamble is separated from the transitional phrase with a comma (,).
• The transitional phrase is separated from the body of the claim with a colon (:).
• Further, the paragraphs that describe the elements are separated with a semi-colon (;).

SAMPLE OF A PATENT CLAIM FOR A SANDWICH

A sandwich comprising:

® 2 pieces of bread;

® almond butter and jelly;

Wherein the almond butter is spread on the other piece of bread and then both pieces of bread are put together so that the almond butter and jelly can touch.

This sample explains the claim in a very general sense; this is not a part of a techno-legal document. It can be made more specific by adding more specific details to it.

SPECIALLY USED PATENT CLAIMS FORMATS

There are two different formats which are most commonly used, which are:

1. Jepson claim or improvement claim

Under this, some prior art is already known and the new claim is improving a certain feature in it. For example, a pencil has an eraser, wherein the improvement comprises a light attached to the centre of the pencil. Here, a pencil having an eraser is relevant known prior art and the improvement claimed is the light attached.

• Means plus function claims

Under this, a function performed by the structures disclosed in the specification is mentioned. The means-plus-function clauses mentioned in the claims must be described correctly by the structure carrying that function. A means-plus-function claim includes the word ‘means’ after a function. For example, if the invention is a rice cooker, a claim in the means-plus-function format will be an apparatus for cooking rice, comprising: a means for holding rice; and a heater configured to heat the rice holding means. Instead of mentioning a rice-holding structure by name (like a bowl), we have referenced a device that performs the function of holding rice. By doing so, we have avoided using a specific name and have instead mentioned the function that it performs.

IMPORTANT POINTERS

• The claim should be written as a single continuous sentence.
• All essential features must be present and fully supported by the disclosure in the description by way of the embodiments, examples, diagrams, and other aids to explain the invention fully and properly.
• Independent claim should be the broadest claim and narrower features are to be claimed in subsequent claims.
• The claim must define the rights claimed in an unambiguous and precise manner.
• Each claim is to be evaluated independently. So, if one claim is invalid, it does not mean that other claims shall also be invalid.
• The claim should not be too broad because a much broad claim cannot include what the applicant has not invented. The claim should not be too narrow because in a much narrow claim the applicant will lose out on necessary protection. Claiming too broad or claiming too narrow can have disastrous implications. The claim must be in a broad sense and there shouldn’t be anything unnecessary.
• One should first start with the most general claim and then one should write specific claims.
• Many competitors surely try to infringe the claim. So, one should try to include the variations of the invention in the claims. But, one should not include every type of claim just for inclusiveness; one should include only relevant and important claims.
• One should try to avoid negative limitations in a claim and try to use positive limitations. For example, instead of using ‘a cylinder which is not solid’, one should use ‘a hollow cylinder’.
• The detailed description should provide sufficient information about the invention so that a person having relevant skills could understand the invention and use it.

CONCLUSION

A patent claim is the most important part of a patent application. If the claim is not correct then the applicant may not get an adequate patent. Thus, it must be drafted with utmost care. One should consult with a professional i.e. an intellectual property lawyer to make sure that the patent claims are drafted properly and that the claims protect the invention. An experienced professional shall draft a patent claim which will provide necessary protection to the invention.