Inventors, entrepreneurs, and startups should have at least a surface-level understanding of patent claims. Although the realm of patent claims is laden with complex legalese, it is important to have basic understanding of claims in the context of protecting one’s inventions and understanding the full legal scope of protection offered in your patent.
Whether you are an inventor, a startup founder, or specialize in Blockchain systems, AI or SaaS, it is in your best interest to learn how patent claims can protect your patent applications and create a “legal barrier” around your technology. Here is everything you need to know about the importance of patent claims in your application.
What are the claims in a patent?
Patents contain claims in the form of statements laid out in a numerical progression. The claims are the most important component of the patent as they define the scope of legal protection established by your patent application. The claims serve a vitally important purpose and serve as the foundation for filing intellectual property infringement lawsuits. Patent lawyers’ creation of patent claims, along with a comprehensive patent application, set the stage for ongoing legal protection that has the potential to not only save your business millions but provide licensing and acquisition opportunities in the future.
There are two different types of patent claims, each of which serves an important purpose in your patent prosecution strategy. Patent claims can be dependent or independent. Independent patent claims define the invention’s most important components. Dependent claims consist of the independent claim definitions along with additional limitations that serve as exemplary implementations of the invention.
Each patent claim may be constructed of three primary components including a preamble, a phase for transition, and a body segment. The preamble is the opening segment of the patent claim. The preamble section of the claim details the foundation of the patent, generally identifying it as either an apparatus (or a system), a composition of matter, or a method. The preamble sets forth the invention’s type-related information for legal protection. The preamble is ultimately limited to the description of the overarching structure or the method in the context of novelty.
Your intellectual property attorney will help you understand the nuanced differences between preambles drafted for both independent and dependent claims. In general, dependent claim preambles are written to state what the claim hinges from, referencing the invention as defined by the corresponding independent claim.
The transitional phrase is added after the preamble. Transitional phrases include references to the ensuing system elements or method steps, using restrictive verbs referred to as claim limitations. The claim body may follow thereafter, consisting of further explanations of the claim limitations. The body of the claim may detail the claimed features in an organized manner, typically using numbers or letters for a structured flow.
How to write patent claims
I highly recommend retaining a patent practitioner to research, prepare, and draft your patent application. Patent practitioners take years to master an art of effective claim drafting while undergoing hundreds of partner and peer reviews. Resist the temptation to attempt a DIY (do it yourself) patent application and filing process and, instead, lean on your attorney for guidance – the result will be a legally sound set of patent claims supported by the specification and patent drawings that meet all application requirements. Though hiring a patent attorney may involve some legal expenses, the money you spend for professional legal guidance has the potential to provide an exponentially larger return and will streamline the prosecution process and save time and money in responding to office actions.
You must first understand that that writing a set of effective patent claims that holds up against legal challenges is no small task and requires an immense investment in time and research. The United States Patent Office has specific requirements in regard to claim language and formatting that must be adhered to ensure your application is not objected to and meets the enablement and best mode requirements.
The patent application drafting may begin with an initial claims draft using a claim-centric approach that we find to be the most efficient. The independent claim defines the invention with specific terms (i.e., defines the scope of the invention). The claim scope may define the invention as either narrowly-specific or overly-broad depending on your prosecution goals. Experienced patent practitioners usually start with rather broad independent claims while including all specific details (or features) into the dependent claims. In the process of prosecution of the patent application, the practitioner may submit claim amendments that may narrow the independent claims by including specific details from the dependent claims. The goal of the final version of the patent claims is to remain sufficiently broad while reciting just the essential number of specific details (or features) to patentably distinguish your invention from others and traverse any prior art.
Patent claim construction
The patent claim is a component of the overarching patent application, primarily used for utility patents that detail the intellectual property to be protected. The construction of the patent claim may be used for infringement analysis and invalidity opinions.
The importance of patent claim construction cannot be overstated. Claim construction is a primary legal foundation for any infringement or invalidity challenges. Both the plaintiff and defendant will analyze the patent claim construction along with your specification to determine the meaning of any ambiguous claims and ascertain if there is a valid foundation for infringement. A claim that is not properly drafted or further defined in the specification will leave an opportunity for legal challenges.
Patent claim construction consisting of three distinct parts discussed above provides a solid legal foundation against potential challenges. The claim is to be constructed in a manner that a layman can understand the invention. The claim must also detail exactly what the inventor intends to create, and the product or method to be created. Furthermore, the claim is an integral part of a valid patent granted by the United States Patent and Trademark Office. If even one of these three claim construction components is missing, the court will not be able to determine if another party used the patented concept in an infringing manner.
What is a dependent claim?
Dependent claims are drafted to include specific details or features that limit the scope of the independent claim from which it depends and typically narrow your scope of protection.
The dependent claims may employ claim limitations by reference to the corresponding independent claim. This type of claim is also important in the context of intellectual property defense as it limits the independent claim that it depends on, either through a restrictive range or through the implementation of additional elements or method steps. In general, most applications will include 3 independent claims and 17 dependent claims.
Patent claims examples
Fire up your word processor and you will likely use the “insert” feature when creating text documents for professional or academic purposes. A patent claim exists for this unique word-processing feature. The feature’s claim implements additional characters in a collection of characters presented on a display consisting of a memory function that stores the characters, a character input, and the presentation of those characters through a conduit to the memory storage.
Head-mounted displays used in medical devices have also been patented. The patent, US11436829B2, is assigned to Fenwal Inc. The device interfaces with machines for blood processing. This display device consists of a frame that is mounted on a medical professional’s head. The frame is configured to accommodate a lens positioned in front of the user’s eye. The device consists of the display, a wireless circuit connected to a network, a processing circuit, and a camera. The circuit obtains instructions to service the blood processing device and adds overlays along with text on the machine as viewed by the user.
A patent claim for the process of sewing also exists. The patent describes sewing as involving the connection of separate cloth pieces together at the edges. The cloth pieces are positioned adjacent so the edges overlap for a thread to pass through the holes in unison.
Broad vs. narrow patent claims
Claims can be narrow or broad in terms of scope depending on a goal of the patent application. The average patent partitioner may initially favor rather broad claims as such language adheres to the invention’s aspects as detailed in the description or in potential future versions. However, overly broad claims may be applicable to more than that which the applicant invented at the time of the patent application. The overly-broad claims will be very likely rejected by the patent Examiner. The Examiner will apply prior art gains the overly-broad claims to imply that a narrower claim should be submitted.
Furthermore, if a prior invention has already been patented that is similar to the one up for approval, a broad claim will not help the cause. Narrow claims are geared to a distinct invention, ultimately making the chances of approval and enforcement to be much better. However, overly narrow claims provide less utility in the context of business as they open the door for the competition to tap into the same market through the production of similar products with slight alterations. Striking a perfect balance between an overly-broad claim and the claim that is sufficiently narrow for obtaining a patent and yet is not too narrow for patent enforcement may only be done by a patent practitioner with years of patent prosecution experience.
Why have more than one claim set?
Intellectual property attorneys recommend using multiple claim sets that are both narrow and broad in scope. Claims ultimately determine the patent owner’s exclusive rights. Therefore, the patent strength is both within the invention described as well as its claims. Patents with more claims covering multiple variations of the invention are better protected in the context of the law.
Though some claims will not hold strong over the entire patent term, there is a chance that one or several will survive legal challenges. The bottom line is you cannot predict the future. Patent applications are submitted years or even decades prior to potential intellectual property litigation, so it is logical to include an expansive claim set with multiple claims.
Lean on your intellectual property attorney to draft a multitude of claims through a comprehensive claim set featuring diverse scopes and language for ample legal protection. This strategically comprehensive approach to protecting your intellectual property sets the stage for some of the claims to hold strong even if the weak links eventually fail when legally challenged.
Every inventor should be aware that it is not possible to tack on new matters to continuations of previous patent application. As a result, the initial filing should support each unique claim that has potential value in the context of intellectual property protection. While there is no specific number of claims that should be drafted for the patent application, the current practice suggests that drafting 20 claims including 3 independent claims is optimal in terms of patent prosecution and enforcement.
In order to lessen the likelihood of a successful legal challenge, a skilled intellectual property lawyer will combine claims that are both wide and limited in scope, as well as various breadth levels between these extremes. This comprehensive approach eventually lessens the likelihood that the patent will be declared invalid. At the beginning of the patent application process, it is crucial to write a long list of such claims, making sure that each one is complete before the application is submitted. If it becomes necessary to submit continuations of the original patent application, you can do so by filing continuations of the initial patent application.
In summary, the logic in using a claim set is that it ensures that those who attempt to use your patented product or technology will face significant legal hurdles, one of which is likely to stop them. Meet with our intellectual property attorney to review the subtle nuances of your unique invention along with your resources and the context of the legal environment, and we will begin exploring options for drafting effective claims.
Get help with identifying your patent claims
Inventors, tech company founders, and entrepreneurs of all types are advised to be aware of the patent claims issues detailed above. If you have invented anything of value or if you are in the midst of creating a value proposition, it is in your financial and legal interest to obtain legal counsel.
The Rapacke Law Group is here to help protect your intellectual property through drafting and filing patent applications with effective patent claims and providing additional legal strategies tailored to your needs. Reach out to us today to schedule a free strategy call.