608 Disclosure [R-11.2013]
- "An apparatus for catching mice, said apparatus comprising a base, a spring member coupled to the base, and ..."
- "A chemical composition for cleaning windows, said composition substantially consisting of 10–15% ammonia, ..."
- "Method for computing future life expectancies, said method comprising gathering data including X, Y, Z, analyzing the data, comparing the analyzed data results..."
- the "central claiming system", according to which the claims identify the "centre" of the patented invention. The exact scope of the protection depends on the actual nature of the inventor’s contribution to the art in the concerned technology.
- the "peripheral claiming system", according to which the claims identify the exact periphery, or boundary, of the conferred protection. In this system, the burden of drafting good claims is much higher on the patent applicant (or on his counsel). The applicant receives the protection he or she requested and almost nothing more, provided that the invention is new and non-obvious. This theoretically makes it easier for third parties to examine whether infringement may exist or not.
Requirements and structure
European Patent Convention
- A preamble that recites the class of the invention, and optionally its primary properties, purpose, or field: "An apparatus..." "A therapeutic method for treating cancer..." "A composition having an affinity for protein X..." This preamble may also reference another claim and refine it, e.g., "The method of claim 1..." (See "dependent claim" below.).
- A "transitional" phrase that characterizes the elements that follow. The phrases "comprising", "containing" and "including" are most often used and (under some patent laws, specifically US) preferable, as it means "having at least the following elements..." and are therefore open (inclusive) and do not exclude additional limitations. The phrases "consisting of" and "consisting essentially of" are (under some patent laws, specifically US) more limiting, as they mean "having all and only" or "virtually only" and are therefore closed (exclusive). In the US, the phrase "consisting of" excludes additional limitations, while the phrase "consisting essentially of" excludes additional limitations that would "materially affect the basic and novel characteristic(s) of the claimed invention".
- A set of "limitations" that together describe the invention: "an X, a Y, and a Z connected to the X and the Y." The elements should be described as though they interact or cooperate to achieve the desired result. The distinction between elements and limitations is explained in the article All elements test.
- Optionally, a purpose clause that further describes the overall operation of the invention, or the goal that the invention achieves ("wherein the Z simultaneously controls the X and Y," or "wherein the Z accomplishes purpose W by controlling X and Y," etc.)
Interpretation or claim construction
- Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the meaning of the words the author used", but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.
Basic types and categories
- the independent claims, which stand on their own, and
- the dependent claims, which depend on a single claim or on several claims and generally express particular embodiments as fall-back positions.
- Clarification of the independent claim language: Independent claims are typically written with very broad terms, to avoid permitting competitors to circumvent the claim by altering some aspect of the basic design. But when a broad wording is used, it may raise a question as to the scope of the term itself. For example, does a "base" include a "set of legs"? A dependent claim, including the phrase, "wherein said base comprises a set of legs," if allowed by the patent examiner, clarifies that the word base in the independent claim does not necessarily include legs. This is by the logic of claim differentiation. In the U.S, at least, each claim in an issued patent is presumed to cover different territory than any other claim. If in claim 2 the base must include legs, then the wording of claim 1 must not be taken as requiring the base to include legs. In practice, dependent claims are often used to home in on the inventor's preferred embodiment of the invention (e.g., the actual product design that the inventor intends to use.) The independent claim broadly describes the invention; dependent claim #1 describes the invention in a narrower aspect that more specifically describes the preferred embodiment; dependent claim #2 is narrower still; etc.
- Possible invalidity of base claim: It is impossible to know, when beginning the application process and even at the time of patent issuance, if a patent claim is valid. This is because any publication dated before the application's priority date and published anywhere in any language can invalidate the claim (excluding publications by the inventor published during the grace period in certain countries such as U.S., Canada and Japan). Furthermore, even applications that were not yet published at the time of filling, but have a priority date prior to the priority date of the application, can also invalidate the claim. As it is impossible to gain an absolute and complete knowledge of every publication on earth, not to mention unpublished patent applications, there is always some degree of uncertainty. If the independent claim is determined to be invalid, however, a dependent claim may nevertheless survive, and may still be broad enough to bar competitors from valuable commercial territory.
- Claim differentiation: In United States patent law, under the doctrine of claim differentiation, each claim is presumed to cover a different aspect of the invention than in each other claim. This doctrine may be relied upon to help maintain broad claim scope in the case where a claim standing alone might be construed as having either a broad or a narrow interpretation. If a dependent claim is added that depends from this "parent" claim but is specifically drawn to the narrower interpretation, then the parent claim must necessarily be different - i.e., it must be the broader interpretation. As construed in the courts, the doctrine of claim differentiation dictates that it "is improper for courts to read into an independent claim a limitation explicitly set forth in another claim."Environmental Designs Ltd. v. Union Oil Co. of California, 713 F.2d 693, 699 (Fed. Cir. 1984). This means that if an independent claim recites a chair with a plurality of legs, and a dependent claim depending from the independent recites a chair with 4 legs, the independent claim is not limited to what is recited in the dependent claim. The dependent claim protects chairs with 4 legs, and the independent claim protects chairs with 4 legs as well as chairs having 2, 3, 5 or more legs.
- a physical entity, i.e. a product (or material) or an apparatus (or device, system, article, ...). The claim is then called respectively "product claim" or "apparatus claim"; or
- an activity, i.e. a process (or method) or a use. The claim is then called respectively "process claim" (or method claim) or "use claim".
Special types of claims
- Catnic Components Ltd. v. Hill & Smith Ltd. (1982)
- Claims under the European Patent Convention
- Clearance search and opinion
- Doctrine of equivalents
- Probatio diabolica, in relation to product-by-process claims
- Patent Act of 1836, Ch. 357, 5 Stat. 117 (July 4, 1836)
- See Decision of Supreme Court of Japan (Saikou Saibansho), February 24, 1998 Case No. Heisei 6 (o) 10831No. Heisei 6 (o) 1083, first recognizing the doctrine of equivalents.
- See Warner-Jenkinson v. Hilton Davis, 520 U.S. 17 (Fed. Cir. 1997) (restricting the scope of the doctrine of equivalents.)
- See for instance Article 11(1) PCT.
- Article 84 EPC, Rule 43(1) EPC
- Guidelines for Examination in the EPO, section f.iv.2.1 : "Technical features."
- Rule 43(1) EPC (previously Rule 29(1) EPC 1973) and, for instance, EPO board of appeal Decision T 13/84, Headnote 1.
- See for instance "The pre-characterising portion of the claim is based on..." in Decision T 0443/11 of 30 January 2012, item 2.1.
- USPTO MPEP 2111.03
- Google Books Jeffrey G. Sheldon, How To Write a Patent Application sec. 184.108.40.206 (1992); see American Choc. Mach. Co. v. Helmstetter, 142 Fed. 978, 980 (2d Cir. 1905) ("The distinction between a combination and an aggregation lies in the presence or absence of mutuality of action. To constitute a combination it is essential that there should be some joint operation performed by its elements, producing a result due to their joint and co-operating action, while in an aggregation there is a mere adding together of separate contributions, each operating independently of the other. Defendant's machine comprises merely an aggregation of two devices. There is no mechanical or functional mutuality of operation. It is not a combination because there is no co-operation between the coating and jarring mechanisms, because the two devices do not unitedly perform their functions, and because they are not necessarily combined in one machine, and do not act together to secure the final result.") (citations omitted).
- UK House of Lords, Kirin-Amgen Inc & Ors v Hoechst Marion Roussel Ltd & Ors  UKHL 46 (21 October 2004) (paragraph 32)
- "embodiment = a specific, disclosed example of how an inventive concept, that is more generally stated elsewhere in the disclosure, can be put into practice." in WIPO,International patent classification (Version 2009), Guide, page 33.
- Rule 43(4) EPC
- Guidelines for Examination in the EPO, section f.iv.3.4 : "Independent and dependent claims": "(...) a dependent claim may refer back to one or more independent claims, to one or more dependent claims, or to both independent and dependent claims."
- The construction of product-by-process claims, 11th European Patent Judges' Symposium, Copenhagen, Official Journal of the EPO 2003, Special Edition, No. 2, p. 20-75 (pdf)
- European Patent Convention
- US patent law (Title 35 of the US Code)
- Studies on patent claims
- When small is beautiful: measuring the evolution and consequences of the voluminosity of patent applications at the EPO This paper addresses issues in measuring the voluminosity of patent applications (number of claims and pages) and highlights patterns in its evolution.