What are claims?

One of the most common questions that we receive at Global IPA is “What are claims?” This is actually an extremely important question that is critical for inventors to understand before they approve of any patent application to be filed because it touches every facet of the patenting process and is at the core of why the inventor should be seeking a patent in the first place.

Claims are the most important part of the patent application because they define the scope of the patentable right that the applicant is seeking with the patent application. This means that a claim is essentially the “definition” of what the applicant sees as the novel and nonobvious inventive concept behind the product. If a competing product falls within the definition of a claim, then it infringes that claim. Stated in another way, claims can be viewed as a shopping list. Each element in the claim is an “item” on the “shopping list.” If a product checks off each of the items on the shopping list, then it infringes that claim if the product is made, used, sold, or offered for sale in the United States or imported into the United States. If the product has even one less item than is on the shopping list, then it does not infringe that claim.

Applications are drafted with multiple claims that vary in scope, providing broader or narrower definitions for your product. Having these different definitions of your product assists in prosecuting your patent application because it (i) forces the U.S. Patent & Trademark Office (USPTO) to prove that all of the various definitions of your product are not novel and/or obvious and (ii) helps us in determining what elements of the different definitions of your product the Examiner considers patentable when negotiating with him or her.

Claims are drafted to strike a balance between being broad enough to cover all of the commercially valuable embodiments of your invention and not being overly narrow. Overly narrow claims are easier for potential competitors to design around because the narrow claims allow them to make minor modifications to your product so that the resulting competing product will no longer fall within your claimed definition. For example, if an applicant has invented a new lamp, the applicant will not want to specifically claim that the lamp has “a square base.” Unless the base being square is critical to the function of the invention, it is easy for competitors to avoid having that claim element by simply producing a lamp with a non-square, e.g. circular, base. This claim would thus be too narrow because it is simple for competitors to design around. Conversely, overly broad claims are more readily rejected by the USPTO because they are claiming that which is already known or would be obvious to skilled persons in the field.

How broadly or narrowly we draft your claims coincides with your business goals for your patent application. If you want broad protection for your invention, then we can draft the claims broadly and then only narrow them as necessary to overcome the USPTO’s rejections. If you simply want to use the patent for marketing purposes and/or are not concerned with the scope of the claims, then we can draft the claims narrowly to try and get the patent application through the USPTO with the fewest number of rejections and as quickly as possible. You should note that narrower claims generally hold less value than broader claims, so you must carefully balance the desire to move your application quickly through the USPTO with the potential decrease in the eventual value of the patent. However, if an art area is crowded, then narrow claims may be necessary to have any chance at all of obtaining a patent and having a patent with narrow claims may be the only option. Applicants must also keep in mind that the patenting process is inherently uncertain, so one cannot guarantee that even narrow claims will be quickly allowed by the USPTO.

In summary:

  1. Claims are critical because they determine what types of potentially competing products will be infringed by the claims of your eventual patent;
  2. One must carefully balance the desire for broad protection with the desire to not tie the patent application up in the USPTO for an extended period of time; and
  3. The scope of the claims should coincide with the applicant’s business goals.

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