Patent Drafting for Beginners: The Life Structure of a Patent Claim -Menteso IP
patent claim
11 Mar, 2022 0 Menteso Editorial Team

Patent Drafting For Beginners: The Life Structure Of A Patent Claim

In a printed patent the claim typically comes last. The claim is the core of the patent in that they characterize the restrictions of precisely what the patent does, and doesn’t, cover. That is the patentee has the option to reject other form-making, selling, or utilizing just those things which are portrayed in the claim. Claim construction is the essential issue in any patent infringement litigation in both the federal court and the ITC, section 337, proceedings. It is the method by which the court or other benches determine the extent and meaning of the patent claims. The objective of the patent application is to give a full, clear, and precise description of the innovation in a manner that especially points out and distinctly identifies what the innovators believe he or she has invented and wants protection to cover.

The art of patent claim drafting is a certainly difficult art to master. It is however fundamental for those in the patent space to both appreciate, comprehend, and ace. Before you at any point consider writing patent claims there are a few essential inquiries that should be answered.

What is innovation?

Inventions cannot be described vaguely or ambiguously but all too frequently innovators will commit the error just describing their innovation specifically. It essentially could be a new logical or original thought, that could be exceptionally remarkable in itself, and the means of its embodiment and attachment. To be patentable and the innovation ought to be, having utility should be non-obvious and novel. To be called an innovation it should be determined useful. But to be called an innovation it ought to be replicable at an economic cost. 

What are the pieces and parts that make up an innovation?

The patent law requires the patent candidate to furnish at least one drawing of the innovation at whatever point the idea of the case requires a patent drawing to comprehend the innovation. The drawing should show each element of the innovation specified in the claim. To catch the full advantage of a filing date, a patent application needs to completely cover the innovation and the permutation as of the time the application has filed a drawing can provide a safety net if you have sufficient details. 

So for what reason do you require a design? 

Words usually can’t do a picture justice, in a patent application you should compose every single detail regarding innovation in its drawing. The fact of the matter is that you get more revelation through more drawing, and the more you clarify your innovation, withdrawing and relating it to every detail of your innovation you are essentially putting more meat on the bones.

How do pieces and parts of innovation relate to each other?

To define the innovation that is new and non-obvious, you should include something in the claim, that is not the same as what is found in the prior art. Perhaps you are improving the prior art by adding something to current innovation. Perhaps you have come up with a more eloquent solution that requires fewer pieces and parts, which makes innovation less expensive to build and more strong. Whatever the case may be that best defines your innovative solution, the claims need to define something unique. The best way to understand what should be placed into a claim to have a realistic possibility of convincing the patent examiner that your claims are new and non-obvious is to do research, which must involve both a patent search and a product search.

Do you have more than one innovation?

The objective of searching is to identify the prior art. As you investigate prior art, what do you like to do is recognize the contrasts between your innovations and prior art. At first attempt and find however many contrasts as you can. Some of the differences will not be of patentable significance. Innovators love to focus on different utilizations, but if you are attempting to defend a device it doesn’t help that someone has described the same or very similar device to be utilized differently. If you are trying to defend a device you need to focus on the device, not the utilization. That’s why distinguish as many structural contrasts as you can. Ideally, the difference you identify will be advantageous.

To obtain a utility patent on innovation in the U.S., a non-provisional utility patent application must be filed. A utility patent is unique concerning a design patent. A utility patent will characterize the structure of innovation, as well as the way it operates. A design patent simply ensures how a product looks, or in patent speak the elaborate appearance. While design protection can be very significant for specific innovations, and many innovators pursue both design and utility protection, utility patent protection is much stronger and typically the type of protection most innovators will elect to pursue.

The rights ultimately granted in a utility patent are characterized by the patent claim reviewed by the patent examiner and eventually issued in the patent. The claims are frequently described as the most important part of the patent application because they are said to characterize the scope of the exclusive rights granted by the government.

Patent claims are hard to read and surprisingly harder to write. The complexity of patent practice is the reason numerous innovators will look for proficient help from patent illustrators, and the patent claims are the part of the application that is the most technically complicated.

What the Law Says About Patent Claims

A nonprovisional patent application ought to have at least one patent claim especially pointing out and precisely characterizing the innovation, although most patent applications and issued patents will have a lot more than one claim. Since a patent with more claims is viewed as more powerful and more relevant as a broad general rule, you might as well have at least as many as you can for the cost of the fundamental filing fee.

A claim might be written in either independent or dependent form. An independent claim remains solitary and does not refer to or join some other claim. A dependent claim refers to an earlier claim and further restricts the innovation, either by joining an extra element or limitation not previously introduced or further narrowing an element or limitation that was recently presented. A claim in dependent form merges by reference every one of the restrictions of the claim to which it refers.

Three Simple Rules for Patent Claim Drafting

1. Preamble in the claim: Each patent claim needs a preamble, which is the starting expression in a claim. The overall guideline is that the preamble of a claim does not restrict the extent of the claim, however, attempt and avoid functional language if you can. Functional language is not wrong and it will normally not restrict a claim, but why take a risk? It is best practice to keep away from a functional language with only a few exceptions. 

2. Transition in the claim: Every patent claim needs a transition. The most widely recognized transitions are: “comprising” and “consisting of.” “Comprising” is by far the most common because it means the innovation includes but is not restricted to the elements identified in the claim. “Consisting of” is closed and means that the innovation is only what is defined. 

3. Introduction of limitation in the Patent claim: The first time you introduce a limitation in a patent claim you MUST introduce it with either “a” or “an”, as is grammatically appropriate. Consequently, you refer to the already introduced limitation by either “said” or “the.” This can be quite difficult for beginners because the three most common words in the English language a, an, & the are all terms of art for patent claim drafting.