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Patent claims and its classification : an analysis

June 19, 2024

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This article has been written by Spenilla Sabina Vas pursuing a Diploma in Advanced Contract Drafting, Negotiation and Dispute Resolution from LawSikho.

This article has been edited and published by Shashwat Kaushik.

Introduction

In today’s world of inventions and innovations, patents play a very significant role as they protect inventions and reward inventors. Among all other parts of a patent application, patent claims are the most critical and significant ones. They are undoubtedly the heart of any patent application. As per law, a patent application must contain at least one claim clearly defining the invention for which a patent is claimed. A patent claim is the section of the patent application that defines what intellectual property is protected by a patent. When an inventor obtains a patent, he secures the right to exclude others from using, making and selling his product or methods.

What is a patent

A patent is an exclusive right granted to an invention by the government for a specified period of time. This exclusive right allows the patent holder to prevent others from making, using, or selling the invention without his permission, in exchange for a comprehensive disclosure of the invention. Patents typically cover inventions that are novel and useful, such as products, processes, designs and improvements to existing products or processes. In order to obtain a patent, an inventor must submit a patent application in accordance with the patent laws of his country.

What are patent claims

A patent claim can be defined as a description or a statement of technical facts that outlines the scope of an invention for which a patent is sought. In other words, a patent claim precisely explains what is claimed by an invention and what is to be protected. Only the patent claims define the exclusive right granted to the patent applicant. According to Section 10(5) of the Indian Patent Act 1970, “the claim or claims of a complete specification shall relate to a single invention or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.”

An example of a patent claim for a pen: A writing instrument comprises: a) a cylindrical body; b) a retractable ballpoint tip located at one end of the cylindrical body; c) an ink reservoir contained within the cylindrical body; and d) a clip attached to the cylindrical body for securing the writing instrument to a user’s pocket or notebook.

Parts of a patent claim

A patent claim comprises three essential parts: the preamble, the transitional phrases, and the body.

Preamble

The Preamble is an introductory statement that states the category of an invention to be claimed. For example, an apparatus, device, article, method, process, etc. The person seeking a patent should ensure to keep the preamble consistent with the title of his invention, i.e. if the applicant seeks patent for a device, the preamble should start with “a device for…”

Transitional phrase

Transitional phrases are connecting phrases that connect the preamble and the body of a claim. The type of phrase used in a claim determines whether the claim is restricted only to the elements listed or whether the claim may cover items or processes with additional features. Transitional phrases can be open-ended or close-ended. The most common transitional phrases are “comprising,” “consisting of,” and “consisting essentially of.”

Comprising: This is the most common open-ended phrase. It means that the invention includes, but is not limited to, the elements identified in the claim.
Consisting of: This is the close-ended phrase and means that the invention is limited to the elements identified in the claim.
Consisting essentially of: This includes elements or steps that do not materially affect the basic and novel characteristics of the claimed invention.

Body

The body of a claim specifies all the elements or features of an invention and explains the relationship between different elements. Therefore, the claim must not only list the elements of an invention but also show the relationship between those elements. For example, Apparatus for keeping items, comprising: a top; four legs; and legs connected to the top in order to support the top.

Criteria to consider while drafting patent claims:

Clarity: A claim must be clear and concise. The language used to define an invention must be precise. Any ambiguity in the claim can lead to challenges during patent examination or litigation.
Originality: A patent claim must clearly define the invention or what is new in the invention for which a patent is being sought. A claim must specify all the original or novel features of an invention. This helps to avoid any possible challenges during patent examination.
Support: A claim must be supported by a clear description, illustrative drawings or any examples in the specification. This helps in understanding the invention’s features, functionality and implementation.
Follow legal requirements: The claim must meet all the legal requirements specified in the patent laws with regard to a patent claim of a particular country in which the patent application is being filed.
Anticipation: While drafting a claim, it is always advised to anticipate any potential challenges during examination or infringement scenarios to ensure that all the elements are clear, follow legal requirements and such potential scenarios can be prevented.

Types of patent claims

Basically, patent claims are of two types, independent claims and dependent claims. However, based on various factors, such as drafting, invention type, field of invention and structure, patent claims can be divided into the following categories.

Based on drafting

Independent claims

Independent claims are stand alone claims that do not relate to or refer to any other claim within a patent. Independent claims are a crucial part of any patent application, as they provide a clear description of the novel features of an invention. Independent claims are broader in scope and determine the extent of a patent holder’s rights. For example, An apparatus for cooking rice, comprising: at least one container for holding rice and water; and a heat source configured to transfer heat into the container.

Dependent claims

Dependent claims refer to previous claim/s and are dependent on one or more claims. Generally, claims following one or more independent claims are considered as dependent claims. It can either further define a previous claim or specify additional features which were not included in the previous independent claim. Each dependent claim is narrower than the independent claim upon which it is dependent. For example, (1) an apparatus for cooking rice, comprising: at least one container for holding rice and water; and a heat source configured to transfer heat into the container (Independent Claim).

(2) The apparatus of claim 1, further comprising; a thermostat positioned to regulate the temperature inside the container (dependent claim).

Omnibus claims

Omnibus claims only refer to the description or drawings without stating any limitations or technical features of an invention. Omnibus claims are allowed only in some countries. For example, “A rice cooker as shown in figure 2.”

Based on invention field

Jepson claims

A Jepson claim is used when an invention is a modified or improved version of any existing technology or product. In a Jepson claim, the preamble specifies the prior act or technology, followed by novel features stated in the body of a claim. For example, “A pencil having an eraser, wherein the improvement comprises a light attached to a pencil”.

Markush claims

Markush claims are commonly used in chemical and biotech patents. This type of claim allows the inclusion of multiple functionally equivalent elements or components within a single claim. For example, Compounds of the formula;

Wherein R1 is selected from the group consisting of phenyl, pyridyl, thiazolyl, triazinyl, alkylthio, alkoxy, and methyl; and R2-R4 are selected from methyl, benzyl, and phenyl.

Swiss-type claims

This type of claim is used while seeking protection for the new medical use of already known compound or substance. For example, ‘Use of substance X in the manufacture of a medicine for treating disease XYZ’.

Design claims

This type of claim is used in design patent applications. Design claims describe the visual characteristics of a design, such as shape, configuration and ornamentation. For example, “The ornamental design of an umbrella as shown in figure 1”.

Based on invention

Process or method claims

This type of claim covers novel methods, processes or techniques that yield desired results. These claims are commonly used to protect methods of analysis, methods of manufacture, methods of preparation, methods of medical treatment, etc. For example, A method of preparing tea comprises: boiling water; adding sugar to the boiling water; adding tea powder to the boiling water; adding milk to the boiling mixture; and filtering the mixture.

Product claims

Product claims specify the structural features, elements or components of a claimed product or invention. For example, Claims for apparatus, devices, chemical compositions, etc.

Software claims

These types of claims are used when claimed invention is related to computer software or hardware. Software claims covers inventions related to software, computer programmes, mobile apps, algorithms, etc. For example, “A computer readable storage medium storing instructions…..”

Based on structure

Composition claims

Composition claims are used when claimed inventions are related to the chemical nature of the materials or components used. This type of claim covers chemical compounds, formulations or materials. For example, a pharmaceutical composition comprising: paracetamol, codeine and ibuprofen.

Means-plus-function claims

This type of claim describes the functional part of an invention, specifying the means or methods used to achieve that particular function. A means-plus-function claim explains elements or structures on the basis of their functions. For example, an apparatus for cooking rice comprising: a means for holding rice and a heater configured to heat the rice holding means.

Laws governing patents in India

Patents in India are governed by the Patents Act, 1970, which aims to promote inventions and protect the rights of inventors. The act provides for the grant of patents for new and useful inventions, including processes, machines, articles, and substances produced by manufacturing.

Key provisions of the Patents Act, 1970:

Patentability:

Inventions that are new, involve an inventive step (non-obvious), and are capable of industrial application can be patented.
The novelty requirement means that the invention must not have been previously disclosed to the public in any way, including through publications, prior use, or public display.
The inventive step requirement means that the invention must not be obvious to a person skilled in the relevant field.
The industrial application requirement means that the invention must be capable of being used in industry or commerce.

Exclusions from patentability:

Certain inventions are excluded from patentability, including:
Scientific theories and mathematical methods.
Plants and animals (except microorganisms).
Methods of medical treatment.
Computer programmes.

Term of patent:

A patent is granted for a term of 20 years from the date of filing the application.
In some countries, the term of a patent can be extended under certain circumstances, such as if the patentee has been delayed in exploiting the invention due to factors beyond their control.

Filing requirements:

A patent application must include the following:
A specification (description of the invention).
Claims (defining the scope of protection sought).
Drawings (if necessary to understand the invention).
A filing fee.

Examination process:

The Patent Office examines the application to determine whether it meets the patentability criteria.
The examination process typically includes a search of prior art (existing patents and publications) to determine whether the invention is new and non-obvious.
The examiner may also request additional information from the applicant, such as amendments to the claims or additional evidence of novelty and non-obviousness.

Grant of patent:

If the application is found to be in order, a patent is granted.
The patent grant gives the patentee the exclusive right to make, use, sell, and import the patented invention for the term of the patent.

Opposition:

Interested parties can oppose the grant of a patent within a specified period.
Opposition proceedings are typically conducted before a patent office or a court.
The grounds for opposition can include a lack of novelty, an inventive step, and a lack of industrial application.

Post-grant procedures:

The patentee must pay renewal fees to maintain the patent in force.
Failure to pay the renewal fees will result in the patent lapsing.
The patentee can also file for post-grant review of the patent by a patent office or a court.
Post-grant review proceedings can be used to challenge the validity of a patent.

Infringement:

Unauthorised use of a patented invention without the consent of the patentee constitutes infringement.
Infringements can be direct or indirect.
Direct infringement occurs when someone makes, uses, sells, or imports a patented invention without the consent of the patentee.
Indirect infringement occurs when someone induces or contributes to the infringement of a patent.

Remedies:

In case of infringement, the patentee can seek legal remedies such as:
Injunctions to prevent further infringement.
Damages to compensate for the losses suffered by the patentee.
Profits to recover the profits made by the infringer.
Seizures and destruction of infringing products.

Recent amendments to the Patents Act

The Indian Patents Act has undergone several significant amendments in recent years, shaping the landscape of intellectual property protection in the country. Here’s an expanded and elaborated overview of these amendments:

Product Patents for Pharmaceuticals (2005)

Background: Prior to 2005, India’s patent law did not grant product patents for pharmaceutical products, except for microorganisms.
Amendment: The Patents (Amendment) Act, 2005, introduced product patents for pharmaceutical substances and inventions.
Impact: This amendment brought India in line with international standards and facilitated access to innovative medicines in the country.

Data Exclusivity (2015)

Background: Clinical trial data is crucial for regulatory approval of new drugs, but its disclosure can lead to unfair commercial exploitation.
Amendment: The Patents (Amendment) Act, 2015, introduced data exclusivity provisions, granting a period of protection for undisclosed clinical trial data submitted for marketing approval.
Impact: Data exclusivity encourages pharmaceutical companies to invest in research and development, leading to the introduction of new and improved drugs.

Patent Term Extension (2017)

Background: Patents typically have a term of 20 years from the date of filing, but in some cases, this period may be insufficient to recoup the investment made in research and development.
Amendment: The Patents (Amendment) Act, 2017 introduced provisions for patent term extension in certain circumstances, such as delays caused by regulatory approvals or unfair commercial practices.
Impact: Patent term extension helps to ensure that inventors and pharmaceutical companies are fairly compensated for their efforts and investments.

Challenges and opportunities:

Balancing innovation and access: India’s patent laws aim to strike a balance between promoting innovation and ensuring access to affordable medicines and technologies.
Enforcement: Effective enforcement of patent rights is crucial to protecting the rights of inventors and encouraging innovation.
Technology transfer: India encourages technology transfer through provisions such as compulsory licencing and voluntary licencing.
International harmonisation: India is a signatory to international treaties such as the TRIPS Agreement, which aims to harmonise patent laws globally.

Role of the Patent Office:

Indian Patent Office (IPO): The IPO is responsible for administering the Patents Act and granting patents.
Examination: The IPO examines patent applications to ensure they meet the patentability criteria.
Opposition and post-grant proceedings: The IPO handles opposition proceedings and post-grant procedures related to patents.

Conclusion

Patent claims are a cardinal part of any patent application. Patent claims should be drafted clearly and accurately in order to avoid any possibility of future infringement. Understanding the types of patent claims as well as their significance is essential for any inventor and patent practitioner. Claims are the backbone of intellectual property protection, as they define the scope of legal protection and provide inventors with the legal framework to safeguard their inventions and innovations.