Bangalore - Mumbai - Silicon Valley Copyright 2008

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
Bangalore - Mumbai - Silicon Valley Copyright 2008
Legal Requirement
35 U.S.C 112

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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
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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
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CLAIMS
INVENTION
Infringer
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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.

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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

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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

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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


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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


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Example of a claim
What 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}
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Types of Claims
Independent claim
Dependent claim
Multiple dependent claim
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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



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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








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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







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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




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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


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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


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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
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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
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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

Bangalore - Mumbai - Silicon Valley Copyright 2008
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; and
computer 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

Copyright 2007
IPPRO, Inc.
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Dos
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


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Don'ts

Inferential claiming
Negative Limitations used of words like NOT
Double inclusion of elements
Relative terminology
Alternative expressions
Words of approximation