This article is written by Arijit Mishra, from KIIT School of Law, Odisha. This article talks about how to draft a patent claim and what are the common mistakes faced while drafting the claims.

Introduction

A patent is an intellectual property given to inventions and it’s an exclusive right for a limited period of time given by the government to the patentee in exchange of the disclosure of their invention. An invention of a product or the process of invention that is new, which has an inventive step and also capable for industrial application can be patented in India.

What is a patent claim?

Patent claim is the part of the patent specification which defines the borders of patent protection. They form the substructure of the protection given by law by morality of patents. One of the major functions of the patent claim is that of forming the ambition of the patent. In a way, claims create a border line if someone crosses it then it will amount to infringement of the patent holders rights. As the claims are so significant, it must be perfectly worded for complete protection. If it is not properly worded then it may cause problems in relation to prosecution and litigation. So, it is to advise the inventors to take help from legal professionals in drafting claims as it is considered as a legal document. An exclusive is provided to the patent to prevent others from selling, making or offering for sale of the subject matter is defined by the claims.

Types of patent claims

Patent claims are classified on the basis of drafting, invention and structure.

On the basis of Drafting

Original claims

Original claims are known as principle claims. They have to define the essential features of novel invention. The inventive process must be properly defined in respect of prior art.

Dependent claims

These claims are supported by independent claims. They are dependent on independent claims that are mentioned in the specification.

On the basis of Invention

Product claims

These are the claims for the protection of the product. For instance, some medical products are protected because the inventor has to submit the chemical composition of the product which he wants to protect.

Process claims

Such claims are filed on a new innovative process. The end result will not get the protection, only the process of that invention can be protected.

On the basis of Structure

Composition of Matter claims

These claims are commonly and significantly used by patent applicants. If the inventor finds that the invention differs in the prior art that he can claim protection.

Means plus Function claim

These claims are for computer related inventions because they are not treated as conventional patent claims. These claims state the scope of invention. The term must be supported by the description in the claim.

What are the Advantages and Disadvantages of Patent Claims?

Advantages

They protect the Intellectual Property

Well written patents claims gets good patents. It helps in keeping exclusive rights on your inventions and designs. If someone sells your invention or design then you can protect it through prosecution.

You can add more

If you file a patent application then it should be complete. After completion, if you think of an important claim then later on you can add it. You can also add or amend claims after prosecution. Be sure to make high quality claims from the first because without claims your invention or designs won’t be patentable.

Disadvantages

They can be too broad

Many of the claims have broad statements at the starting. The statement should be more specific. If your claim includes too broad a statement then it won’t be approved.

They can be too narrow

Sometimes the claims get too narrow, the claims should be specific to describe your unique invention. Sometimes if your claim is narrower than they exclude potential copies. Specific claims only don’t give the protection that you need there must be some description to it to support the claims.

How to draft a patent claim?

By looking at the patent claim format and types of the claims published in the world by the WIPO (World Intellectual Property Organization), which we can see it here, the following formula is put forward:

Patent Claim- A+B+C

A B C

{put title} comprising: {state the parts one by one} {explain how they are connected with each other}

Every claims are divided into three parts-

• Preamble
• Linking word
• Main Body

Preamble

• Recognize the category where an invention falls. (composition, process, device)
• Speaks about the objective of the invention.
• Connect the claims with the title of the invention.

Linking Word

• Open Ended Phrases – “including”, “characterized by” this helps in expanding the aimbid of the claims.
• Close Ended Phrases – “comprising” “consists of” it helps in listing the items mentioned.

(e.g- A chemical compound consists of: 50% C Component, 25% D Component, 25% E Component)

Main Body

• A logical or inconsistent statement which explains the content of the claim.
• Not just the list of parts.

Example– An equipment, comprising of: a lot of printed pages; a binding shape to hold the printed page together and a cover joined with that binding.

In the above sentence,

Preamble: An equipment

Linking: comprising of

Main Body: a lot of printed pages; a binding shape to hold the printed page together and a cover joined with the binding.

Criterias to be followed for drafting your claims

There are three criterias, which need to be followed while drafting your claims that should be clear, complete and supported. Every claim should be in one sentence, if it’s a long or short sentence it must be completed.

Should Be Clear

Your claim should be clear so that the reader should not face any problem while reading. If you use some words like “thin” “strong” “a major part” “such as” then it is considered that you are not clear. These words make the reader give a subjective judgement, not an objective observation.

Should Be Complete

Every claim must be completed so that it can cover the inventive feature and enough elements for putting the invention in the proper context.

Should Be Supported

By giving descriptions the claims need to be supported. It means all the characteristics of your inventions that form your claim must be descriptively explained. If you use any terms in the claims then it must be either found in the description or deduct it from the description.

How to portray patent claims in a patent draft?

Patent claims define the invention for what they are claiming for patent protection. The drafting of the patent claim decides whether your invention is a novel or is infringing upon someone’s invention.

Taking care of design of patent claim

• It talks about how to represent our claims in the draft.
• While at the time of patent drafting, be mindful of drafting claims of various scopes. It is a mixed fashion that includes both independent and dependent claims.
• From both broad and narrow scope, patent claims should be included. It gives an advantage, the claims with broad scopes has a wider group of infringers and claims with narrow scopes makes invention more precise and definite.

Choice of words

Words should be very precise in manner while drafting the claims. While drafting for the technical feature of your invention the statement for your claim describes your invention and its variant parts.

Use of technical words in a patent claim and explain that when you are writing an invention description. Writing of claims must be in positive terms.

If you are writing “a cylinder that is not solid” instead of this write “a hollow cylinder”.

Talk about variations of your invention

Many competitors try to infringe your claim. So include all the variations of your invention in the claims as well as the description to protect the patent right. Try your best on the claims which gives an advantage to your invention.

What are the common mistakes that can be faced by you while drafting claims?

Writing claims yourself

In patent applications, patent claim is that part which is very difficult to write. If your claim is not correct, then you could get a bad patent. The language of the claim must be specific. It will be better if you hire a patent attorney for the help in the application process. If you do it, then you will endup with a good patent.

Starting with a wrong claim

You should first start with a most general claim then they must go for making more restrictive claims. Order them in most general claims to least general.

Grouping claims incorrectly

Claims for product and process are done separately. Dependent claims must be grouped together.

Using antecedents incorrectly

Use the term “said” to make it clear that you are recommending the antecedents. Terms like “a” or “the” should be used if you are referring to more general terms. You can refer to the term more than one time in your claim.

Including the wrong number of claims

If the patent examiner thinks that some claims are not useful then he might reject one or more of your claims. So, you should list as many as you can to protect your invention.

Basics of patent claim drafting

• The claim must be in broad sense and there shouldn’t be anything unnecessary. While reading the claims “scope”, “characteristics” and “structure” must be clear.
• The claim must have clarity and must be comprehensive.
• For defining the borders of the invention with detailing and specificity there can be the addition of dependent claims.
• The main focus must be on the “scope” through which someone can check whether it covers all parts of invention or not.
• The claims must include “broad” claims and “specific” claims. This helps in balancing the invention in such a manner that the claims should not leave anything that invention does.
• Explaining the connection between several parts of the invention is a key where effective claim drafting depends upon.

Illustrations-

Sample 1

A shovel comprising of:

a long handle and; and

a head of shovel,

Wherein the said long handle is attached to the head of shovel.

Sample 2

A building and its material comprising of;

stones and sands, and

a cement binding filled between the stones and sand to make it harder,rigid and strong for building.

This explains how the elements of the inventions are interconnected with each other.

1. The main objective of claim drafting shows that invention is different from knowledge, so drafting can be done in such a manner that it shows the uniqueness of the invention.
2. Praising language must be avoided. Most importantly praises of an invention do not matter in a Patent specification.

How to punctuate a claim

• A comma (,) divides the preamble and the linking word or transition phrase into two parts. A colon (:) breaks up the transitional phrase from the main body of claim.
• semicolons (;) divides the small paragraphs that describe the elements.

What does an effective claim look like?

Example: Almond Butter and Jelly Sandwich

Claim Sample 

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 the both pieces of bread are put together so that the almond butter and jelly can touch.

The explanation of this claim is in general sense and it doesn’t visions like a part of a techno-legal document.

Conclusion

Patent claims are important in a patent process, so you should consult with an Intellectual Property lawyer to make sure that claims adequately protect the invention. An experienced patent attorney can have a better knowledge regarding the drafting of patent claims that will maximise the scope of the patent.

References

• https://www.mondaq.com/india/Intellectual-Property/656402/Patents-Law-In-India–Everything-You-Must-Know
• https://blog.ipleaders.in/drafting-patent-claims/
• https://patentdraftingcatalyst.com/draft-accurate-patent-claim/
• https://www.thoughtco.com/writing-patent-claims-tips-1992251
• https://patents.google.com/patent/US20030138525A1/en
• https://www.quickcompany.in/articles/what-are-patent-claims
• https://www.legalmatch.com/law-library/article/patent-claims.html
• https://www.upcounsel.com/patent-claims

---

LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join: