• What are patent claims within a patent application?

    One of the most important sections of the patent application is the section entitled claims. The reason that claims are the most important aspect of the patent application is that the claims lay out what exactly the invention is and what it covers and where the outer bounds of the patent lie. The rest of the patent application talks about what the invention is, how best to use the invention, and even provides drawings of the invention. The claims on the other hand, lay out the legal aspects and the scope of the patent. Since the claim section involves the “legal” parts of the patent, it is also the most confusing to someone that does not have experience or knowledge about the patent application process or claim drafting.

    Each patent application must contain a minimum of one claim and can have up to a maximum of 20 claims. In some cases, if you can prove that your invention is quite complex, the patent office will allow you to file more than 20 claims. The claim section of a patent application starts with “I (or We) claim…” This lays out what the patent actually consists of for the patent examiner and more importantly, for possible infringers. The easiest way to think about claims is that they are the definitions of your patent application. Each and every feature (referred to in the claim section as elements), regardless of how small and meaningless it is, is described in the claim section.
    Unfortunately for the average inventor that has limited experience with drafting claims, the rules from the United States Patent Office do not offer much help since they are written in vague generalities. The patent statute under 35 U.S.C. 112 only states:

    - A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

    - Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

    - A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

    - 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.

    Reviewing these four paragraphs does not give the average inventor much to go on when drafting their initial set of claims. Overall, Section 112 states that you are required to use claims in your patent application. The claims must define and describe what your invention actually is and how it is different from any prior art (any kind of information or other patents that will invalidate your invention for not being something that is original) that might exist. Additionally, Section 112 defines, although poorly, the terms independent and dependent claims. From their commonly known definitions, independent claims are those claims that can stand alone and dependent claims require something else and cannot stand alone.

    If Section 112 was not vague enough, the United States Patent Office publishes “Rule of Practice” which further defines the scope of what does and does not need to be included when drafting claims. However, like Section 112, the patent office rules are not the easiest to follow and interpret. The claim section of a patent application is the most important because it gives the outer bounds of your invention’s scope and both the statutes and patent office’s rules are difficult to understand. It is best to have a seasoned patent attorney who has experience drafting claims write the claims and application. Failure to write the claims correctly will cause them to be rejected by the patent examiner for being too board. Possibly even worse then having your claims rejected is having your claims accepted by the examiner but not covering everything they should and leaving open the possibility of competitors to patent something that you thought your claims covered.
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