Patent claims are concise and precise statements that identify the invention’s essential technical features. They define the boundaries of legal protection sought by the patentee and form a protective fence around the invention, which is defined by the words and phrases in the claims.
Therefore, claims are statements of technical facts expressed in legal terms; they define the scope of the invention, for which the patent application is filed. Therefore, every word, phrase, clause and expression of each claim carries legal significance. Even minor changes to the language of a claim can substantially affect the extent of patent rights.
It is vital—as noted by many courts—for the patentee “to mark out with adequate distinctiveness the boundary of the territory that he claims to be exclusively his own.”[1] Thus, the object of a claim is to define and limit with precision the invention for which patent protection is being sought.[2]
Approach to Claims Drafting
A recommended approach to claims drafting entails starting first with a broad, generic and most novel claim to capture the essential core of the invention. The main, independent claim is then followed with dependent claims that progressively add specific features, materials or steps. Each dependent claim narrows down the scope of the invention.
This “Broad-to-Narrow Claims Drafting” approach (some call it the “Umbrella Approach”) obviously involves casting a wide net for broad protection, while using specific, narrower claims as defensive fallbacks against competitors. Such subsidiary claims refer to the main claim and apply qualifying or exploratory clauses to the main claim or optional features of the invention. The clear advantage is that the dependent claim cannot be infringed unless the independent claim is also infringed.
Each claim is evaluated on its own merit and, therefore, if one of the claims is objected to, it does not mean that all the remaining claims are invalid. It is therefore critical to make claims on all aspects of the invention to ensure that the widest possible protectionis afforded tothe applicant.
This strategic framework balances maximum commercial leverage with rigorous defences against prior art. Adopting this structured approach is crucial for surviving invalidity challenges.
Golden Rules of Claims Drafting
The duty of the applicant, as enunciated in many judgments, is to formulate claims in such a manner that the invention, and consequently the area of monopoly sought, gets defined with complete clarity and disclosed to the public to the fullest practical extent; thus, claims are the solemn operative part of the specification used by the patentee for achieving that purpose.[3]
For drafting claims, several best practices and cardinal principles must be prudently kept in mind. A few of these prudent pointers follow:
Clear and Concise Language: Claims must be precise and specific. Ambiguous or subjective terms, such as, ‘fast,’ ‘substantial’, etc., are to be avoided. Make sure the adjectives used, if any, are quantifiable.
Completeness: It is essential to ensure that the drafted claims describe the inventive feature comprehensively and encompass all aspects of the invention effectively. Scope, structure and features of the invention must be evident while reading the claims. The links between various elements of the invention must be explained.
Consistent Terminology: Use of plain, precise language rooted in industry parlance and standards is preferable; this helps in preventing competitors from twisting and tweaking the meaning of words in their favor. If you introduce a mobile phone in the claim, do not refer to it as user equipment or wireless unit later. Stick to one definition throughout the claim for the same object / concept—common names and terms familiar to any person skilled in the art should be adhered to. New terms must be clearly defined.
Support in the Specification: It must be ensured that every term used in the drafted claims have clear backing in and are based on the written description of the invention in the patent application. That is to say, every term used in the claims must be explicitly defined and described in the main body of the patent specification.
Antecedent Basis: Claims should have proper antecedent basis. When introducing an element for the first time in a claim, use of indefinite article ‘a’, or ‘an’ is proper (e.g., “a phone”). When referring to the same element (that has been introduced earlier) again later, use definite article ‘the’ (e.g., “the phone”).
Actor/Infringer Focus: Claims have to be tailored based on how potential competitors are likely to actually infringe. Think like a competitor and anticipate workarounds. Draft claims that cover multiple embodiments (variations of how the invention can be built or used), so that minor design modifications do not bypass the patent or circumvent the invention.
Unity of Invention: Although the application can consist of a number of claims, the claims collectively must relate to one invention only.
Preamble Drafting Choice: It is vital to draft the preamble of the main, independent claim in a manner that widens the scope of protection—that is to say, the descriptive assertions of the invention must start from the broadest and then narrow it down. For instance, to describe a mobile phone, which includes a speech recorder, the preamble of the main claim can be drafted as either: (i) “a mobile phone comprising...”; or,(ii) “a speech recorder device comprising...”. Neither is incorrect. The issue is about whether protection is sought in respect of an invention limited to a ‘speech recorder’ device or extends to a ‘phone integrated with speech recording feature’ as described.
Positive Limitation: It is always advisable that limiting features of the invention be incorporated into the claim based on what the invention exactly is rather than on what it is not.
Proper transitional phrases: There are many transitional phrases that may be used between the preamble and the body, such as, ‘comprising of’, ‘consisting of’, ‘composed of’, ‘configured to’, and, ‘characterized in that’. It is preferable to use ‘comprising of’, ‘configured to’, or ‘characterized in that’, because they indicate an open list. On the contrary, phrases, such as, ‘consisting of’ and ‘composed of’, connote or indicate a closed list. No addition can be made to such closed lists. Therefore, a prospective infringer would be able to add or remove to the list without violating the patent. Phrases, such as, ‘being composed of’ are unclear and hence to be avoided.
Intended Purpose: It is well-settled in law, based on judicial pronouncements[4] that a claim can also be limited by intended purpose and reference may be made to the body of the specification in the claim—for instance, the expression ‘as and for the purpose herein set forth’ may be used in the claim.
Apparatus Claims: Drafting of claims for an apparatus or device must be made based on its non-operational state.
Common Pitfalls to Avoid
It is judicially well-established that claims must be read as an integral part of the entire application, and not as a separate document.[5] Nevertheless, it is advisable that several common mistakes be avoided.
A partial list of common mistakes is presented below:
Abstract Ideas: For inventions based on intangible concepts and mathematical algorithms, such as, software, artificial intelligence (AI), business methods, etc., claims must be tied to a tangible technological process, hardware, or real-world application.
Scope: If the independent claim is excessively broad, it may encompass existing "prior art," which typically causes the patent office to reject it entirely.
Multiple Independent Claims: A specification with two or more independent claims of the same scope should be avoided. Such specifications sacrifice clarity and succinctness, and also, result in avoidable obscurity and ambiguity. Hence, allowing such claims and specifications would be against public interest.
Limitation: It is advisable to avoid unnecessary limitation in independent claims. Further, negative limitations (example: claiming "a widget that is not red") must be avoided.
Multiple Dependent Claims: Caution should be exercised in the use of multiple dependent claims, because they complicate claim interpretation, risk invalidity due to ambiguity, trigger filing fee escalations, and lead to administrative delays. Patent offices in some jurisdictions may even reject nested (or, ‘multi-multi’) dependencies entirely.
Missing Transitional Phrase: Not including a suitable transitional phrase in claim normally results in objections from the patent office—of either lack of unity (for not disclosing uniform invention) or lack of clarity (invention not entirely clear from claim).
Multi-Sentence Claims: It is advisable to avoid drafting claims using more than one sentence, because it may lead to lack of clarity. The legal and customary requirement is that the claim structure be stated as a ‘single sentence’.
Claims of Results: Patent law demands that the applicant should claim the contraption/components to achieve the result rather than the result itself. Claims of specific results are generally objected to for reasons of ambiguity.
Deficient/Excessive Detail: Claims with either too little or too much detail are to be avoided. Lack of detail in the claims is likely to makes distinguishing the invention from prior art difficult. Redundant features (or, features that are not necessary to ‘work the invention’) and excessive detail are to be removed from the claims, since it narrows down the scope of the invention.
Claim Typologies: Use of some of the claim types, such as, Swiss claims should be avoided in drafting, often because they are not allowed in specific jurisdictions. It is advisable to not use “means-plus-function claims” either; they are limited to the disclosure of the means in the drafted claim.
Miscellaneous: Use of trademarks in claims must be avoided. Neither should any guarantees on quality, craftsmanship, etc., be incorporated into the specifications of the invention and drafted claims. Overuse of adjectives also should be shunned.
In general, it is a good practice not to have claims approved in a single round of examination. First-time approval may perhaps indicate that the claims were drafted too narrow. One should strive to get the inventor the broadest possible coverage in the claims.
At BLAZE VENTURES, we have elaborate processes and qualified professionals for advising inventors and enterprises on not only claims strategy, but also claims drafting to effectively protect IP rights over inventions, innovations and improvements.
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[1] Clay v. Alcock & Co. Ltd. (1906) 23 RPC 745; Ram Narain Kher v. Ambassador Industries AIR 1976 Del 87 at 88.
[2] Lord Chelmsford in Harrison v. Anderston Foundry Co., (1876) LR 1 App Cas 574; EMI Ltd. v. Lissen (1939) 56 RPC 23 at 41.
[3] British United Shoe Machinery Co. Ltd., v. Fussell & Sons Ltd.; (1908) 25 RPC 631 at 650 (CA); Norton & Gregory Ltd., v. Jacobs, (1937) 54 RPC 271 at 276 (Greene, MR); EMI Ltd. v. Lissen (1939) 56 RPC 23
