Claims

The claim or claims of a patent represent the metes, or bounds, of the property to be protected. In other words, as in real property, a patent claim stakes out that territory that the patentee considers his or her own, and any encroachment on that particular territory, as in real property, constitutes an infringement. The claims of a patent can be viewed as the word fence surrounding the invention. It is important not to confuse such claims with technical claims that state benefits or advantages.

The second paragraph of 35 USC ยง112 states the purposes of claims. Their basic functions are to point out, define, and distinctly lay title to the subject matter that the applicant regards as his or her invention, but not necessarily to describe that invention in any great detail. It is the descriptive portion of the specification that performs this function. In fact, the descriptive portion of the specification and of the claims differ chiefly in the degree of detail presented by each. In particular, claims usually omit mentioning nonessential features and, whenever possible, attempt to use generic language to describe the particular elements of the claimed invention instead of the far more specific language found in specifications.

It is important to recognize, however, that despite the desirability of obtaining the most generic claim coverage possible, varying claims of lesser scope are also important if the invention is to be adequately protected. A generic claim is more difficult for potential infringers to design around than a very specific claim is, but the latter is more difficult to invalidate in terms of prior art. On the other hand, a specific claim is easier to design around, and thus avoid literal infringement, than a generic claim.

It is helpful to make claims of both specific and intermediate scope to hedge against the possible invalidation of the patent's generic claim or claims. In such cases, the ability to establish infringement of valid claims of lesser scope may be important because such claims are often the only ones of any commercial value. This is why it is recommended that specific claims recite the best or preferred embodiments of the invention that are more fully disclosed in the description portion of the specification.

A claim must be written as a single sentence. In actuality, the claim is really the predicate noun that completes the sentence, "What I(we) claim is ..." or "What is claimed is ... "

Generally speaking, a claim can be divided into three major components. The first may be referred to as the introductory phrase or preamble, followed by a transitional phrase, and then the body of the claim.

Preamble of the Claim. The introductory phrase, or preamble, of a claim sets the stage for the remainder of the claim. It may merely make a general statement concerning the invention, the title of the invention, or the general class into which the invention falls. The introductory phrase might also include a statement of the intended use, object, purpose, or advantages or the invention. Some examples of the range of introductory phrases are as follows:

A process.

A process for extracting oil from fish.

A process for extracting omega-3 fatty acids from fish.

A composition.

A broth composition.

A chicken broth composition.

An apparatus.

An apparatus for separating grains of different sizes.

An apparatus for separating corns of different sizes.

As can be appreciated from these samples, the preamble may be as general or as specific as desired, depending on the particular invention involved, the prior art, and the intent of the preamble.

Transitional Phrase of the Claim. The degree to which a claim is considered open (inclusive) or closed (exclusive) is determined by its transitional phrase. This is an important distinction because the addition of a constituent or a step not explicitly recited in a closed claim can avoid its literal infringement. In an open claim, on the other hand, the presence of an additional constituent or step not explicitly recited in the claim will not necessarily avoid its literal infringement.

Claim terms that are considered to be closed are "consisting of" and "composed of." These terms mean that the presence or addition of something other than that which is explicitly recited in the claim will avoid its literal infringement. Claim terms considered open are "comprising," "including," and "containing." When such language is used, the inclusion of steps or constituents not explicitly recited will not necessarily avoid a literal infringement of the claim.

It is not necessary for a claim to be entirely closed or entirely open. In particular, the presence of the phrase, "consisting essentially of," is usually interpreted to mean that the claim covers not only the recited constituents of the process, composition, article, or apparatus but also any additional ones so long as the latter do not significantly interfere with the primary function or interrelationship of those constituents explicitly recited. If the material or component or step that is added to those recited is of a type that is usually employed with the kind of subject matter in question, then infringement is usually easy to establish.

Body of the Claim. The structural elements of the claim are presented in what is known as its body. These elements include, for instance, the steps of a process, the components of a composition, or the parts of a machine or apparatus that constitute the prime subject matter of the invention. The body of the claim specifies the configuration, spatial relationship between elements, and relative amounts of components that may be important to point out the subject matter.

It is not necessary that the elements of the claim be recited in the form of the actual structure, material, or procedural acts involved. Alternatively, the words means or step may be used followed by a description of the function to be performed by the means or step.

For instance, in a claim directed to a bioreactor, reciting "means for supporting the bottom of a bioreactor at a suitable distance from the floor" could be substituted for a description of bioreactor legs.

It is suggested that terms such as "about" and "approximately" be employed whenever reciting amounts, distances, or spatial relationships, because such terms may provide a somewhat greater scope in the interpretation of the breadth of the claim.

Types of Claims. The subject matter of claims can take the form of a process, an apparatus, an article of manufacture, or a composition. Moreover, the subject matter of a claim often referred to as a hybrid claim can take the form of any combination of these. For instance, a process claim might include a recitation of a certain apparatus or an apparatus claim might include recitations concerning materials treated by the apparatus. Usually, the patentability of such hybrid claims will depend only on those differences from the prior art of the principal subject matter of the claim rather than on the differences of the secondary recitations. For instance, the patentability of a process claim with apparatus recitations will depend primarily on the process steps and not on the apparatus recitations. Likewise, the patentability of an apparatus claim containing recitations of the material being worked on will depend on the structure of the apparatus rather than the material in question.

A particular type of hybrid claim sometimes found in chemical cases is referred to as a product-by-process claim. It is used to define a composition of matter or a material by referring to the particular process employed to prepare the product in question. The patentability of such a claim depends on whether the product differs from prior-art products, not whether the process steps differ from priorart processes. The product-by-process claim can be important when no other way seems convenient to define a product that differs from prior art products. Because of the nature of the product, its differences from the prior art may be difficult to define other than by reference to the process itself. Also, the product-by-process claim may be important when the possibility exists that the manner in which the product has been described is not entirely correct.

The inventions resulting from the development of a new technology need not be restricted to any one of the preceding categories of inventions; they may, in fact, be claimed in any number of different ways. For instance, the development of a new composition of matter may not only result in a patentable invention with respect to the composition itself, but also to the process for preparing it, the apparatus used to carry out the process of preparing it, the process or processes for using it, finished articles containing it, and so on. Accordingly, any number of patents may be obtainable for any particular development. In fact, it is desirable to attempt to claim a development by making as many different types of claims as possible. This is important because a variety of claims can encompass different classes of direct infringers, and it may be more desirable to sue one kind of infringer rather than another in view of the potential recovery or convenience involved. For instance, it would certainly be more desirable to be able to sue the manufacturer of a composition rather than the users, particularly, if the users are individual consumers or the inventor's own customers. Also, certain types of claims may be more difficult to invalidate in view of the prior art than others, thereby hedging against loss of all of the potential protection available.

Each claim of a patent or patent application is considered as a separate invention and is examined independently from the other claims with respect to its patentability and validity. During the examination of an application, it is not uncommon for an examiner to reject some claims in an application while allowing others. Likewise, a court can find some claims valid, while finding others invalid.

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