Overview Edit

A patent claim is

[t]he legal definition of a patented invention. It is a written definition of the legally enforceable boundaries of the claimed invention, and determines what the inventor can exclude others from making, using, selling or importing into the United States.[1]

All claims have three principal components: a preamble, a transitional phrase, and a body.

The specification must conclude with a one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention or discovery.

The U.S. is strictly an examination country and the main purpose of the examination, to which every application is subjected, is to try and make sure that what each claim defines is patentable. To coin a phrase, the name of the game is the claim . . . [and] the function of claims is to enable everyone to know, without going through a lawsuit, what infringes the patent and what does not.[2]

The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.[3]

In practice, most patents contain multiple claims. Each claim is ordinarily viewed as presenting a separate statement of the patented invention. It is possible that the patent proprietor’s competitor may infringe some of the patent’s claims, but not others, depending upon the precise wording of the claim. Similarly, a court may declare that some of the patent’s claims are invalid, but uphold other claims, in view of novelty, nonobviousness, or other legal requirements to obtain a patent.[4] For the most part, then, each claim in a patent affords the patent owner separate proprietary rights that must be judged on its individual merits.[5]

References Edit

  1. USPTO, Glossary (full-text).
  2. Giles S. Rich, The Extent of the Protection and Interpretation of Claims — American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499, 501 (1990) (emphasis in original).
  3. See 37 C.F.R. §1.58(a).
  4. See 35 U.S.C. §282.
  5. Roger E. Schechter & John R. Thomas, Intellectual Property: The Law of Copyrights, Patents, and Trademarks §18.2 (2003).

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