The claims are the most important part of a patent. 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.
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”. See also Transitional Phrases in Claims for a more in-depth description of transitional phrases.
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.
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 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.