Understanding Patent Claims
What are Claims?
The claims are the most important part of a patent application. The goal of the claims is to particularly point out and distinctly claim the subject matter which the applicant regards as his or her invention. There must be at least one claim in a patent, and the reasoning is that possible infringers must be able to understand what is and is not protected based on the claims.
Parts of a Claim
A claim is generally presented in three parts, the preamble, a transitional phrase (or word), and the body.
Preamble : The preamble is an introductory statement that names the invention that is to be claimed. For example, "A method for making a genetically modified plant."
Transitional Phrase : The transitional phrase (or word) specifies whether the claim is limited to only the elements listed, or whether the claim may cover items or processes that have additional elements. Commonly used transitional phrases include "comprising"and "consisting of".
Transitional phrases in patent applications are important, as they specify whether the claim is limited to only the elements listed, or whether the claim may cover items or processes that have additional elements. The most common transitional phrase used is the "open ended" phrase "comprising". However, many claims use "closed-ended" language such as "consisting of".
Open-Ended: Some applications use open-ended terms such as "comprising" or "which comprises". This means that the claim encompasses all the elements listed, but may also include additional, unnamed elements.
For example, if a claim recites elements "A" and "B", an individual that practices the invention using elements "A" and "B" is infringing, and using "A", "B", and a new element "C" is infringing, whereas if she only uses element "A" or "B", she is not infringing.
For example:
A therapeutic composition comprising a polynucleotide having the sequence of SEQ ID NO:1.
or,
An expression vector, operable in eukaryotic host cells, which comprises a polynucleotide having the sequence of SEQ ID NO:1.
In these two examples, elements are claimed that include SEQ ID NO:1, but may also include any other unnamed elements; the only restriction is that contains, at least, SEQ ID NO:1. These types of claims may be fairly broad, as any composition that has SEQ ID NO:1 in it would infringe on these claims.
Closed-Ended: Some applications used “closed-ended” claim language, such as the phrase consisting of. The phrase "consisting of" means that the composition (or device, or method) has the recited elements (or steps) and no more.
For example:
A therapeutic composition consisting of a protein having the sequence of SEQ ID NO:2 and a suitable buffer.
This claim covers only the composition of SEQ ID NO:2 and a suitable buffer. If there were any additional elements added to the mixture (that were not defined in the specification as being components of a "suitable buffer"), then the composition would not be covered by that claim.
Combination of Open-Ended and Closed Ended: Often, claims have a combination of open-ended and closed-ended language.
For example:
A recombinant DNA construct comprising a polynucleotide selected from the group consisting of SEQ ID NO:1, SEQ ID NO:2, SEQ ID NO:3, SEQ ID NO:4, and SEQ ID NO:5.
In this claim, the composition must contain at least one of the sequences specified by SEQ ID NO:1 through SEQ ID NO:5, but may also contain any number of additional, unnamed elements. This claim is an example of a Markush Group, which is a type of claim that is common in the chemical arts.
Body
The body of a claim lists the elements (also referred to as "limitations") or steps of the named invention.
Claims may be independent or dependent.
Independent Claims : An independent claim defines an operative, complete invention by itself, without referring to, or including limitations of other claims. The intention of independent claims is to broadly cover all embodiments of the invention without reading on prior art.
Dependent Claims : Dependent claims refer back to and further defines an invention recited in another claim. In doing so, a dependent claim includes all of the limitations of the claim to which it refers. Dependent claims are often used to define the scope of the elements in an independent claim, and are written to protect specific embodiments of an invention. Should a court find that the main independent claim was wrongly granted, a dependent claim may still be valid, and is used as a "fallback position". Dependent claims also make it easier for a jury to determine whether infringement as occurred, if the infringing activity is clearly spelled out in a claim rather than just inferred.
Types of Claims
There are a number of different types of claims that are designed for claiming different types of inventions, including:
Composition of Matter Claims: Composition of matter claims list the constituents of a new material, as well as the amount of each constituent, if applicable. Nucleic acids and amino acid sequences are often claimed as compositions of matter.
Apparatus or Device Claims: Apparatus, or device claims are claims to an apparatus or device.
Method (or Process) Claims: Method or process claims describe a novel method or process used to achieve a particular goal.
Product-By-Process Claims: In a product-by-process claims, a product is defined by the method used to manufacture it.
Markush-Type Claims: Markush-type claims have a list of functionally-equivalent elements. Components not on the list are excluded from the claim.
Source: Patentlens
The claims are the most important part of a patent application. The goal of the claims is to particularly point out and distinctly claim the subject matter which the applicant regards as his or her invention. There must be at least one claim in a patent, and the reasoning is that possible infringers must be able to understand what is and is not protected based on the claims.
Parts of a Claim
A claim is generally presented in three parts, the preamble, a transitional phrase (or word), and the body.
Preamble : The preamble is an introductory statement that names the invention that is to be claimed. For example, "A method for making a genetically modified plant."
Transitional Phrase : The transitional phrase (or word) specifies whether the claim is limited to only the elements listed, or whether the claim may cover items or processes that have additional elements. Commonly used transitional phrases include "comprising"and "consisting of".
Transitional phrases in patent applications are important, as they specify whether the claim is limited to only the elements listed, or whether the claim may cover items or processes that have additional elements. The most common transitional phrase used is the "open ended" phrase "comprising". However, many claims use "closed-ended" language such as "consisting of".
Open-Ended: Some applications use open-ended terms such as "comprising" or "which comprises". This means that the claim encompasses all the elements listed, but may also include additional, unnamed elements.
For example, if a claim recites elements "A" and "B", an individual that practices the invention using elements "A" and "B" is infringing, and using "A", "B", and a new element "C" is infringing, whereas if she only uses element "A" or "B", she is not infringing.
For example:
A therapeutic composition comprising a polynucleotide having the sequence of SEQ ID NO:1.
or,
An expression vector, operable in eukaryotic host cells, which comprises a polynucleotide having the sequence of SEQ ID NO:1.
In these two examples, elements are claimed that include SEQ ID NO:1, but may also include any other unnamed elements; the only restriction is that contains, at least, SEQ ID NO:1. These types of claims may be fairly broad, as any composition that has SEQ ID NO:1 in it would infringe on these claims.
Closed-Ended: Some applications used “closed-ended” claim language, such as the phrase consisting of. The phrase "consisting of" means that the composition (or device, or method) has the recited elements (or steps) and no more.
For example:
A therapeutic composition consisting of a protein having the sequence of SEQ ID NO:2 and a suitable buffer.
This claim covers only the composition of SEQ ID NO:2 and a suitable buffer. If there were any additional elements added to the mixture (that were not defined in the specification as being components of a "suitable buffer"), then the composition would not be covered by that claim.
Combination of Open-Ended and Closed Ended: Often, claims have a combination of open-ended and closed-ended language.
For example:
A recombinant DNA construct comprising a polynucleotide selected from the group consisting of SEQ ID NO:1, SEQ ID NO:2, SEQ ID NO:3, SEQ ID NO:4, and SEQ ID NO:5.
In this claim, the composition must contain at least one of the sequences specified by SEQ ID NO:1 through SEQ ID NO:5, but may also contain any number of additional, unnamed elements. This claim is an example of a Markush Group, which is a type of claim that is common in the chemical arts.
Body
The body of a claim lists the elements (also referred to as "limitations") or steps of the named invention.
Claims may be independent or dependent.
Independent Claims : An independent claim defines an operative, complete invention by itself, without referring to, or including limitations of other claims. The intention of independent claims is to broadly cover all embodiments of the invention without reading on prior art.
Dependent Claims : Dependent claims refer back to and further defines an invention recited in another claim. In doing so, a dependent claim includes all of the limitations of the claim to which it refers. Dependent claims are often used to define the scope of the elements in an independent claim, and are written to protect specific embodiments of an invention. Should a court find that the main independent claim was wrongly granted, a dependent claim may still be valid, and is used as a "fallback position". Dependent claims also make it easier for a jury to determine whether infringement as occurred, if the infringing activity is clearly spelled out in a claim rather than just inferred.
Types of Claims
There are a number of different types of claims that are designed for claiming different types of inventions, including:
Composition of Matter Claims: Composition of matter claims list the constituents of a new material, as well as the amount of each constituent, if applicable. Nucleic acids and amino acid sequences are often claimed as compositions of matter.
Apparatus or Device Claims: Apparatus, or device claims are claims to an apparatus or device.
Method (or Process) Claims: Method or process claims describe a novel method or process used to achieve a particular goal.
Product-By-Process Claims: In a product-by-process claims, a product is defined by the method used to manufacture it.
Markush-Type Claims: Markush-type claims have a list of functionally-equivalent elements. Components not on the list are excluded from the claim.
Source: Patentlens
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