Patent claims define what a patent issuing from an application will protect. As such, claims form the core of the patent application.
What is a Patent Claim?
It helps to start with some patent law doctrine. So, we have to answer some core questions, briefly of course!
What is a patent?
A patent provides its owner the nationwide right to exclude others from making, using, selling, or importing the claimed invention during the term the patent is in force. This is, in effect, a limited monopoly. The patent gives the patent owner the ability to bring legal action against others for infringement—these suits are based on the claims.
What is the fundamental exchange in patent law?
In exchange for the limited monopoly a patent provides its owner, the owner commits disclosure of the claimed invention to the public, and automatic dedication of the same to the public domain at the conclusion of the patent’s term.
What are the parts of a patent?
A patent includes, generally, four parts: (1) a specification ending with a set of claims, (2) drawings, (3) an abstract, and (4) a title.
Why does a patent have claims?
Claims exist to define what the patent protects. Without them, and without the strict rules governing how they are written, it would be more difficult than it already is to correctly ascertain what the patent covers. Think about it—what would happen if a patent owner could write a thousand-page list of different inventions and have each one of them protected by the same patent?
Keep in mind, one of the fundamental aspects of Western law is the concept of “notice.” This includes that, when a right exists to restrain another party, that restrained party needs to at least have an opportunity to know what they are restrained from doing.
How is a patent claim written?
As a sentence. Each claim of a patent application is written as a single sentence, without regards to length. In fact, an application may be objected to if a claim is not in a sentence form (e.g., starts with a capital letter and ends with a period). While there can be more than one claim in an application, each claim cannot be more than one sentence. Oftentimes, patent claims have to be amended during the examination process. This is not bad in most cases as, in most application strategies, patent examination is seen as a negotiation between the patent office and the applicant. Provisional patent applications can contain some sample claims, but they’re not examined and have no force. The question of “who are the inventors?” turns on what is claimed in a patent application as well.
What does a patent claim protect?
A patent claim defines the “metes and bounds” of the claimed invention, in an example, the functionality of your software invention. That is, it defines what the patent protects. Ideally, it protects both your invention and a broad variety of variations on it. A patent claim that is too specific is not ultimately helpful or of value to the patent owner, unless seeking a patent for no more than the sake of getting a patent.
When explaining this, I like to use the analogy of a grass yard with a fence around it. Your invention is a single blade of grass in that backyard. While it’s undeniably its own distinct blade of grass, it looks like a mere variation on the other blades of grass in the yard. With a patent claim, we draw the fence around the yard. Thus, the patent claim protects against someone walking in and stepping on your invention grass blade, as well as all others within that fence.
Claims in new industries can be broad, while in mature industries, the proverbial fence can take on some strange shapes. This is why early industry entrants, including disrupting startups, seek to maximize patent protection early.
As a patent attorney, a goal is to help clients strategically design a fence to maximize the number of grass blades within them. And given that some grass blades are already protected by another’s fence, sometimes there are weird shapes!
Patent specifications are tricky to write, and patent claims form the trickiest part of those specifications. The remainder of the patent application exists to support the claims. So, feel free to consult with an experienced patent attorney!