PATENT CLAIM
patent claim.A formal statement describing the novel features of an invention and defining the scope of the patent’s protection <claim #3 of the patent describes an electrical means for driving a metal pin>. Cf. SPECIFICATION (3). [Cases: Patents 101. C.J.S. Patents §§ 140–142.]
“[The patent] application concludes with one or more ‘claims,’ which are summaries of the points of novelty of the invention disclosed by the specification, said claims also following certain fixed forms. If they are broad and in general terms, the patentee will be well protected, and will be the possessor of a worth while patent; but if, on the other hand, the claims are limited in scope, if they recite a multiplicity of exactly stated and unimportant elements, or if they are bad in any one of a number of other ways, the chances of success are small, the patent will be full of loop-holes of which infringers will be prompt to take advantage, the inventor will not have received all he is entitled to, nor all he has paid for, and, if the claims are very limited, it is more than likely that he will have obtained a patent not worth the paper upon which it is printed.” Richard B. Owen, Patents, Trademarks, Copyrights, Departmental Practice 14 (1925).
apparatus claim.A patent claim on a mechanical device, explaining how the components are connected and function together. • The preamble of an apparatus claim typically states the function of the machine; the body explains its elements and how they work together.
appendant claim.See dependent claim.
closed-ended claim.A patent claim that expressly limits its scope to a list of elements, typically introduced by the phrase “consisting of.” Cf. nearly closed-ended claim; open-ended claim.
coined-name claim.A chemical-patent claim consisting only of the name of the new material. • A coined-name claim is allowed by the U.S. Patent and Trademark Office only on the rare occasion when the name is established in the field before the patent is applied for. The chemical composition, its physical properties, and the process for making it must still be disclosed in the specification.
dependent claim.A patent claim that refers to and further limits another claim or set of claims in the same patent application. — Also termed appendant claim. [Cases: Patents 165(5). C.J.S. Patents §§ 283, 287, 290, 293.]
design claim.The single claim allowed in an application for a design patent, incorporating by reference the drawing and other specifications. • The brief claim typically starts with “an ornamental design for” and ends with “as shown” or “as shown and described.” Cf. omnibus claim.
[Cases: Patents 101(4).] fingerprint claim.A chemical-patent claim that differentiates the material from prior art in terms of some physical feature, such as melting point or spectrum, rather than its chemical composition. • Fingerprint claims are allowed only when the chemical composition cannot be determined or cannot be distinguished from prior art.
generic claim.A claim that encompasses a class of elements, any of which could function as equivalents. • For a generic claim to be valid, the specific elements it encompasses must have a definable feature in common that makes them fit for the purpose. — Also termed genus claim. Cf. species claim.
improvement claim.See Jepson claim. independent claim.A patent claim that does not refer to any other claim.
Jepson claim.An improvement-patent claim characterized by a preamble setting forth the current state of the art, followed by the phrase “the improvement comprising” and a description of the claimed patentable improvement. • The name comes from Ex parte Jepson, 1917 C.D. 62, 243 O.G. 526 (Ass’t Comm’r Pat. 1917) in which this type of claim was first approved and sanctioned by the Commissioner of Patents. — Also termed improvement claim.
Markush claim.A patent claim that includes elements listing alternative chemicals, materials, or steps in a process. • A Markush claim typically has language such as “selected from the group consisting of.” The alternatives must all give the same result, rather than patentably distinct products. The name derives from Ex parte Markush, 1925 Dec. Comm’r Pat. 126. See MARKUSH DOCTRINE. [Cases: Patents 101(7).]
means-combination claim.A type of claim in a patent application that includes multiple limitations, at least one of which is in means-plus-function or step-plus-function form. •
Means-combination claims are acceptable to examiners. [Cases: Patents 101(10).] means-plus-function claim.See MEANS-PLUS-FUNCTION CLAUSE.
method claim.A patent claim that describes what is done to a workpiece in order to achieve the useful result claimed. • A method claim is the same thing as a process claim, but “method” is used more often in applications for mechanical and electrical devices. [Cases: Patents 101(11).]
multiple-dependent claim.A dependent claim that refers to more than one other preceding claim.
nearly closed-ended claim.A patent claim that limits its scope to a list of elements but does not expressly exclude close analogues. The claim is typically introduced by a phrase such as “consisting essentially of.” Cf. closed-ended claim; open-ended claim.
new-use claim.A method claim for a new way of using an existing invention. [Cases: Patents 27(1).]
nonelected claim.A claim that has been withdrawn from consideration based on the examiner’s finding that the application claims more than one invention. • The applicant must elect to prosecute one invention. Other claims may either be abandoned or else be prosecuted separately under a divisional application. See RESTRICTION(4).
nonstatutory claim.See omnibus claim.
omnibus claim.A claim in a patent application that does not distinctly narrate a means to carry out a function but rather refers to the drawings or description with phrases such as “as described and shown.” • Omnibus claims are rejected in the United States but are accepted elsewhere. — Also termed nonstatutory claim. Cf. design claim.
open-ended claim.A patent claim that contains a nonexclusive list of elements, typically introduced by the phrase “consisting of.” • A later patent applicant cannot avoid infringement by merely adding an analogue to the list. Cf. closed-ended claim; nearly closed-ended claim.
plant-patent claim.The single claim in a plant-patent application, describing the principal distinguishing characteristics of the plant.
process claim.A patent claim that describes by steps what is done to the subject matter, usu. a substance, in order to achieve a useful result. • A process claim is the same thing as a method claim, but “process” is used more often in applications for chemical patents. [Cases: Patents 101(11).]
product-by-process claim.A patent claim defining a product through the process by which it is made. • The product-by-process claim is most often used to define new chemical compounds, such as drugs. [Cases: Patents 101(11).]
product claim.A patent claim that covers the structure, apparatus, or composition of a product.
single-means claim.A type of claim in a patent application that indicates a process, result, or function but does not describe the method of reaching that end <a method of curing cancer>. • When no other method is obvious, such an assertion claims rights to all possible ways of achieving the result — ways not specified in the application and even ways that have not yet been invented. Single-means claims are rejected as too broad. — Also termed single-element means claim. Cf. MEANS-PLUS-FUNCTION CLAUSE. [Cases: Patents 101(8).]
species claim.A claim that is limited to a single apparatus, process, composition of matter, or article of manufacture, rather than to a range of similar and related items. Cf. generic claim.
Squires claim.A utility-patent claim that incorporates a drawing or table by reference. • This claim is allowed by the U.S. Patent and Trademark Office only if there is no practical way to define the invention in words, but the invention is simple to illustrate with the drawing or table. See SQUIRES DOCTRINE.
subcombination claim.A patent claim, usu. on a device, describing a subsystem of a larger combination. • A subcombination may be patented separately if it has its own utility.
[Blacks Law 8th]