Method Claims

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Presenter - AnP

Method Claims

DATE – September 09, 2010


Content• Legal Requirements for Claims• What is a Claim• Statutory classes for Claims• Structure of claims• Sections in a claim• Types of claims• Method claims• How to draft a method claim

•CPP claims


Legal Requirement

• 35 U.S.C § 112


35 U.S.C § 112

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards his invention


What is a Claim

• A claim defines the coverage of the invention

• A claim demarcates in words the boundary of the invention which is analogous to a fence around a piece of land property•Claim should be broad and should include concepts of the invention that distinguishes it from the prior art


CLAIMS

INVENTIONInfringer


Statutory classes for Claims

• Process / Method

• Article of manufacture

• Machine / Apparatus

• Composition of Matter

Utility patents

35 USC 101 : Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent thereof, subject to the conditions and requirements of this title.


Structure of Claims

• Each claim should be a single sentence beginning with a capital letter and ending with a period

• Standard Introductory phrase

• The claims should be logically structured to group similar type of claims

• Each claim should begin with a numeral

• Generally, a broadest claim is written first followed by narrower claims


Sections of a Claim

• Transition phrase:

• Preamble : It generally defines the field of the Invention, purpose of the invention or intended use of the invention;

• Body of claim: Recites the elements of the claim and how the elements co-operate with one another (structurally, physically, or functionally)

• Comprises – Open ended

• Consisting essentially of – Partially open • Consisting or consisting of – Close ended


Body of claim

• Use separate sub-paragraphs for each element of a claim

• Separate the transitional phrase from the body of the claim by a colon, and separate the elements of a claim by either a comma or semicolon

• Must first introduce an element with “a” or “an” and then refer to the element with “said” or “the” subsequently in the claim

• Strict antecedent basis should be maintained throughout the claims


Work piece or Environmental elements

• A work piece or environmental element should be recited in a claim for the claim to be complete and to make sense

• However, the work pieces should be claimed inferentially so that the claim is not limited by the work piece.

Ex.: “A system for managing calls in a communication network, the system comprising. Ex. “ A juicer for squeezing citrus fruits, the juicer comprising

Ex. “A telescope for viewing celestial objects, the telescope comprising


Example of a claimWhat is claimed is:

(1) {A method of communication between a first device in the first communication network and a second device in the second communication network, the first device using a first Identifier (ID) in the first communication network, the second device using a second ID in the second communication network}, {the method comprises}: {

(a) associating a third ID to the first ID of the first device, wherein the third ID is associated with the first device, the first device uses the third ID in the second communication network; and

(b) enabling communication between the first device and the second device based on the association of the third ID with the first ID}


Types of Claims

• Independent claim

• Dependent claim

• Multiple dependent claim


Independent claim

• A patent application should include one or more independent claim

• An independent claim has a broader coverage than any dependent claim and is complete in itself

• Each independent claim should cover a structure or a method achieving a different object of the invention/ a different inventive concept

• An independent claim should be novel, non-obvious and should have a utility

• An independent claim includes essential steps


Dependent claim

• One or more dependent claims may be added which refer back to and limit one or more claims in the application

• A dependent claim incorporates by reference everything in the parent claim and adds further limitations/statements/restrictions

• A dependent claim is narrower than the parent claim

• Numbering should be done such that a claim that depends from a dependent claim should not be separated from the dependent claim by a claim that is not dependent on the dependent claim


Multiple Dependent claim

• A dependent claim that refers to more than one other claim

For eg: Claim 3: A gadget of claims 1 or 3 comprising:

• A multiple dependent claim cannot be dependent on another multiple dependent claims

•A multiple dependent claim is counted based on the number of claims it depends from

•Any dependent claim dependent on a multiple dependent claim is counted based on the number of claims the multiple dependent claim depends on


Method claims

• Method claims involve one or more steps performed on an article/work piece/chemical substance to achieve an objective

• The preamble of a method claim should read “A method of (or process for) performing ….(a specified act), the method comprises:”

• The elements of a method claim must be steps or acts expressed as verbal statements or phrases

• Each element of a method claim should begin with a gerund (-ing form of a verb) form


How to draft a method claim

• Make a structure broadly listing down in a sequence all the steps performed in the invention

• Identify the novel step (s)

• Classify the steps as essential and non-essential

• Draft the Independent claim such that it includes one or more novel steps and the essential steps

• Include the non-essential step in the dependent claims


Method of making Tea

The method for making tea comprises the following steps:

(a)Placing a kettle on a burner

(b)Pouring water inside the kettle

(c) Adding tea leaves in the kettle

(d)Heating the kettle

(e)Adding sugar in the kettle

(f) Adding milk in the kettle

(g)Adding condiment in the kettle


Example of a method claim

Essential step:(a) Placing a kettle on a burner

(b) Pouring water inside the kettle (c) Adding tea leaves in the kettle (d) Heating the kettle

Non-essential steps: (a) Adding sugar in the kettle (b) Adding milk in the kettle (c) Adding condiments in the kettle


Example of a method claim

(1) A method of making tea, the method comprising: (a) Placing a kettle on a burner; (b) Pouring water inside the kettle; (c) Adding tea leaves in the kettle; and (d) Heating the kettle.

(2) The method of claim 1 further comprising adding sugar in the kettle.

(3) The method of claim 1 further comprising adding milk in the kettle

(4) The method of claim 1 further comprising adding condiments in the kettle


Computer Program Product Claim

• To protect software applications

• Computer Program Product - considered as computer program storage device eg. CD, DVD, floppy disk, etc.

• Set of computer program instructions stored in a storage device

• Computer program product – Article of manufacture

• Initially considered as printed matter


Sample CPP Claim• A computer program product comprising a computer usable medium

embodying computer usable code for verifying authenticity of an application in a computer system, said computer program product comprising:computer usable program code for……; andcomputer usable computer code for….

OR• A computer program product for use with a computer, the computer

program product comprising a computer usable medium having a computer readable program code embodied therein for managing performance of an enterprise, the computer readable program code performing:step a;step b……

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Do’s

• Must provide support for all of the elements in the specification.

• Should name the elements so that they make sense and the claim is easy to understand.

• Terminology Consistency• Make sure that the claim terms used are used in the same manner in the specification because the specification is used while construing the claims.•The claim terms should also be used uniformly and consistently in the independent claim and the dependent claims depending therefrom

•Strict Antecedent basis should be followed


Don'ts• Inferential claiming

• Negative Limitations – used of words like “NOT”

• Double inclusion of elements

• Relative terminology

• Alternative expressions

• Words of approximation

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