In order to obtain exclusive rights on an invention the law requires that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.
35 USC 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims.
Like most statutes, Title 35 is not very specific with respect to the details regarding implementation of its directives. Notice that 35 USC 112 only states that a claim is necessary, but does not provide any information on the structure or format of the claim or claims. It is, therefore, necessary to turn to Title 37 of the CFR to expand upon what is actually required. The basic section that deals with claim requirements is 37 CFR 1.75.
It is necessary to include a full and complete description of the invention in the initial filing with the Patent Office. Rearranging of an application is always allowed, but the addition of new material is never allowed. In determining the breadth of what is covered by the initial filing the applicant may rely on the description contained in the specification, any drawings filed and the originally filed claims.
Today, as the result of the Patent Law Treaty Implementation Act, patent claims and drawings are no longer required in order to obtain a filing date on a non-provisional patent application. While patent claims can always be added to an application if the original disclosure as filed will support the claims, it is exceptionally dangerous to file a patent application without drawings. Drawings are almost always going to be required, and adding drawings later will be difficult if not completely impossible because drawings invariably convey more than the textual description of the drawings. Having said this, it is advisable to file non-provisional patent applications with claims. Those claims filed with a non-provisional patent application are original claims. These original claims can support themselves, meaning claims are considered a part of the larger, overall disclosure. Having claims present at the time of filing helps ensure that at least what you are claiming has sufficiently been disclosed in the patent application.
Originally filed claims need not be exhaustive. Through prosecution patent claims can be amended and even added, provided of course the initial disclosure is broad enough to cover the added or amended matter. Therefore, when drafting a patent application it is good practice to spend time drafting quality claims. Do not simply rely upon your ability to add claims later because invariably you will wind up wanting to at some point add claims or elements thereof that are not described in the specification. Include enough claims with the initial filing to cover the invention and important variations.
Form of Claims
The claim or claims must commence on a separate sheet and should appear after the detailed description of the invention. While there is no set statutory form for claims, the present practice in the Patent Office is to insist that each claim must be the object of a sentence starting with “I claim,” “The invention claimed is”, or the substantial equivalent thereof.
Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. What this means is that each claim can be only one sentence. This is true regardless of how tortured the sentence structure is and how incomprehensible the sentence may be to those not trained in patent claim drafting. Where a claim sets forth a plurality of elements or steps, each element or step of the claim can be separated by a line indentation.
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims.
Claim Arrangement & Numbering
Claims should preferably be arranged in order of scope so that the first claim presented is the broadest (i.e., least restrictive). All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination. Failure to arrange claims in the desired sequence is certainly not fatal. The examiner who sees an inappropriate arrangement will issue an objection. Objections are issued as to form and do not relate to the substantive patentability requirements.
The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeals Board, while an objection, if persistent, may be reviewed only by way of petition to the Commissioner. If the rejection and objection are for the same reason an appeal can be taken to the Board.
An independent claim is a stand alone claim that contains a preamble and all of the elements necessary to define the invention. There are three types of independent claims: (1) a claim for a “thing,” such as a composition of matter, machine, apparatus or device; (2) a claim for a method of making a “thing”; and (3) a claim for a method of using a “thing.”
A Claim for a “Thing”
Below is the primary illustration in US Patent No. 6,009,555, titled “Multiple component headgear system.”
Claim 1, which is the only independent claim in this patent, reads:
1. A headgear apparatus to be worn by a user comprising:
a headband member for fitting about a user’s head, said headband member having a frontal portion adapted to substantially extend across the forehead of a user;
a visor member removably secured to said frontal portion of said headband, said visor member independently extendable from said headband; and
an eye shield member removably secured to said frontal portion of said headband, said eye shield member being of a configuration adapted to extend across a portion of a user’s face in frontal blocking relationship to a user’s eyes.
For information about claim drafting a claim to a “thing” please see: Patent Claim Drafting 101: The Basics.
A Claim for a Method of Making a “Thing”
Here is an example of a method of making — U.S. Patent No. 6,635,133, which relates to a method for making a multilayered golf ball. As you read the claim notice the use of gerunds, which is the proper way to draft a method claim.
Claim 1 reads:
1. A method of making a ball, comprising:
a) forming an inner sphere by forming an outer shell with a fluid mass center;
b) forming a plurality of core parts from elastomeric material;
c) arranging and adhesively joining the core parts around the inner sphere with a flexible adhesive and then crosslinking the core parts to each other by compressing them together at an elevated temperature to form a substantially spherical core;
d) molding a cover around the assembled core, wherein the elastomeric material has a cohesive strength and the adhesive has an adhesive strength that is stronger than the cohesive strength.
For more information about drafting a claim to a method please see: Drafting Patent Applications: Writing Method Claims.
A Claim for a Method of Using a “Thing”
Here is an example of a method of using claim — U.S. Patent No. 6,405,736, which relates to a method of using self adhesive hair extensions. I like this example for several reasons. First, it is something relatively simple that anyone can understand. Second, notice that it does not say that it is a method of using, which is somewhat commonplace in these types of claims. You could call this a “method of using self adhesive hair extensions,” what you are really doing is attaching the hair extensions. So be careful when looking for patents discussing a method of using a “thing.” Frequently the claims will not specifically use the magic words “method of using,” but the thrust of the claim is clearly using a “thing.”
1. A process for attaching removable, self adhesive hair extensions to the head of a user, which comprises the steps of:
a) forming a self adhesive hair extension by arranging a quantity of hair strands in a parallel arrangement so that the hair strands are aligned at a first attached end and a second attached end,
b) securing the first attached end of the hair strands to a base support unit,
c) sewing a rectangular shaped, self adhesive tape having a removable back to the base support unit,
d) forming a part line on the head of a user to form an upper portion of hair and a lower portion of hair,
e) temporarily sweeping the upper portion of hair up and away from the part line and over the top part of the head and securing it into position,
f) removing the backing from the self adhesive tape and making contact with the part line on the head of the user, aligning and securing the hair extension in place; and
g) repositioning the upper portion of hair back to its original position.
37 CFR 1.75(c) explains that One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Claims that refer back to and further limit another claim are called dependent claims. Dependent claims incorporate by reference each of the limitations of the claim from which they depend. Because dependent claims incorporate by reference each of the limitations of the claims from which they depend they are easy to write. Additionally, dependent claims are used in every application because additional fees are charged by the Patent Office if the application has more than three independent claims. Most patent applications have few independent claims and many dependent claims.
It is important to remember that dependent claims must further limit the claim from which they depend. This is most frequently accomplished by claiming a more narrow range (where appropriate) or by the addition of more elements. Claims written in dependent form that broaden the scope of the claim from which they depend are considered to be in improper dependent form, which should result in an objection.
Examples of Proper Dependent Form
Returning to the ‘555 patent, claims 2 through 9 are good examples of proper dependent form. These claims read:
2. A headgear apparatus as recited in claim 1, wherein said eye shield member is adjustable with respect to said headband member.
3. A headgear apparatus as recited in claim 1, wherein said visor member and said eye shield member are secured to said frontal portion of said headband member by a set of rivets.
4. A headgear apparatus as recited in claim 1, wherein said headband member is formed from neoprene fabric.
5. A headgear apparatus as recited in claim 1, wherein a continuous bead of sealant material is selectively placed on said headband member.
6. A headgear apparatus as recited in claim 1, wherein said visor member has a lightwave transmissive portion and an opaque portion.
7. A headgear apparatus as recited in claim 1, wherein said visor member has a crescent-shaped surface and a concave-shaped edge, and wherein said surface of said visor member is increasingly transmissive of lightwaves within the visible spectrum as said surface extends away from said concave-shaped edge.
8. A headgear apparatus as recited in claim 1, further comprising a visor cover for placement over said visor member.
9. A headgear apparatus as recited in claim 1, further comprising a cord for connecting said headband to a piece of wearing apparel of a user.
Notice that the preamble for each of these claims begins “A headgear apparatus as recited in claim 1”. Dependent claims refer back to the invention, which in this case is a headgear.
Several things are worth mentioning. First, the first word of each claim must begin with a capital letter. Second, each of these dependent claims refers back to claim 1, which is an independent claim. Dependent claims do not always need to refer back to an independent claim, they can refer back to a dependent claim, which allows you to use dependent claims to create claims of varying scope building little by little in specificity. Third, each of these dependent claims further define and narrow the thing claimed in claim 1. This is important because dependent claims must always narrow the claim from which they depend, and because dependent claims that refer to a thing MUST refer back to a claim that also claims the thing. As a general rule, it would ordinarily be inappropriate to have a thing claim depend from an independent claim that claims a method of making or a method of using. Finally, there is no particular magic to the phrase “A headgear apparatus as recited in claim 1.” This preamble is certainly appropriate, but other flavors of the same that would likewise be appropriate include: (1) “The apparatus of claim 1”; (2) “The device of claim 1”; and (3) “The headgear device of claim 1”.
With respect to the body of the dependent claims quoted above, notice that claims 2 through 7 each further define the independent claim by adding limitations to elements already present in the claim. This is accomplished by inserting the phrase “wherein said [insert element]” immediately after the preamble. Compare this with dependent claims 8 and 9, which add elements to the independent claim. The addition of elements is accomplished by inserting the phrase “further comprising a[n] [insert element]”. Both the further definition of elements already present in an independent claim and the insertion of new elements act to limit the scope of the independent claim. Therefore, both are appropriate dependent format, and both are frequently used when drafting patent claims.