Patent claims definition

The final section of an issued patent is the claims, S. A United States patent is requited bylaw to have at least one claim. The claims lepiesent the legal definition and boundaries of the rights resulting from the patent grant. Patent claims are analogous to the legal description which one might find on a tide to real estate. 

Definiteness. Adequate description or definiteness requites that the patent claims provide an outline of those elements which are integral to the appHcation s invention. In turn, the specification acts as a dictionary wherein the reader can interpret and understand the elements in the patent claims. Complementary to the requirement of definiteness is the requirement that the appHcation must disclose the entire invention. The appHcant cannot make a claim of right to the invention where essential elements of the invention are not disclosed in the patent. 

The definiteness requirement serves notice to potential infringers as to the exact boundaries of the patentee owner s rights. Thus, a patent provides a record of what the inventor has brought to the technological field, and also provides other parties with notice as to what conduct is permissible in view of the patent claims. 

The definition of the patented process offers the opportunity to an innovative chemist to develop a process which bypasses the original patent claims and offers a new legally clear route to an economically attractive product. 

A patent must end with one or more patent claims which describe the patented subject matter as unambiguously as possible. Patent claims may be considered as the definition of the patent scope for legal purposes. The precedent patent description has to justify all aspects of the patent claims and will be used for this purpose during the examination process. But only in cases of doubt will details of the patent description be used later on to interpret the patent claims. Thus, patent claims must be formulated with the utmost care. The three basic requirements novelty, non-obviousness and utility have to apply to... 

Literal infringement focuses on individual claim elements rather than on the invention as a whole. Whether a product infringes the claims of the patent depends on whether the product literally embodies each and every element of those claims. Each element of a claim is material and essential to the definition of the invention. If the product or process does not use even one element of the patent claim, it will not literally infringe the claims. However, the accused infringer usually cannot escape liability for literal infringement merely by adding elements that are not found in the patent claims if each element cited in the claims is found in the product or process under investigation. 

A computer survey of the patent literature made a year ago came up with 515 recent patents claiming herbicidal synergies. A perusal of the abstracts of 45 of them, chosen as a sample, showed that the patent community uses a broader definition of synergy than used here they believe that there is a synergism when two herbicides control more weed species than each separately. This would better be termed "complementarity. The overlap of control range allows a lowering of herbicidal rates, which may or may not be due to a metabolic... 

The synthesis of molecular sieves containing transition metals in the framework represents a reliable route for preparing materials with novel catalytic properties. In spite of the large number of papers and patents claiming the incorporation of several transition metal ions in different microporous silica frameworks, unambiguous evidence in favor of the isomorphous substitution of silicon has been achieved only for Ti and Fe, for the former limited to few framework types. Some evidence exists also for V and Cr, but the data available do not allow definite conclusions to be drawn in this regard. 

Quite often, the technical description, or patent specification, defines the terms used in a patent claim setting forth the patented invention. In fact, the definition of a term in the technical description typically controls the meaning of the term as it is used in the patent and in its claims. If then the patent claims a co-crystal of API A and co-former B, then the definition of co-crystal provided in the patent specification will control what is a co-crystal according to the patent and what is not. 

A patent is intended to further the development of science and technology by providing a pubHshed record of technological developments for all to read, consider, and discuss. At the same time, a patent provides a delineation or definition of the rights which the patent owner considers its own through the claims appended to the patent. The pubHcation of a description of the invention in conjunction with the claimed limits of the invention provides the pubHc with notice of the patent owner s affirmative rights to the invention. 

An additional statutory requirement is that of disclosure. A patent must provide the pubHc with a disclosure which is enabling, definite, and shows the best mode for practicing the claimed invention. 

Most of the equivalent patents are incorporated in the discussion, to give a sense of the international coverage to the reader. A summary of the main claim is included as a definition of the property subject matter. As could be seen the property subject matter of a World Intellectual Property Organization (WIPO) patent generally, is identical to one of the corresponding US patent (from the US Patent and Trademark Office, USPTO). However, in some instances a WIPO patent has more than one US equivalent patent. The equivalence between WIPO and US patents will be discussed for each particular case wherever relevant. 

The invented biocatalysts based on R. rhodochrous strain ATCC No. 53968 and on B. sphaericus strain ATCC No. 53969, were protected not only as whole cell biocatalysts, but also their derivatives. Biocatalyst definition includes in addition to whole cells cell membranes, cell extracts and enzymes from those microorganisms. It should be noted that the first six patents are actually sets of similar patents with the first one providing coverage in Europe and the second one in US. This strategy involves coverage in US as well as Europe (the total number of patents is higher than the number of inventions) however, the allowed claims in US were always smaller than that allowed in Europe. IGT s last patent (May 1996) was filed in July 1994, when they already had begun... 

Whether a C1.3 alkyl group includes lx till n-propyl and iso-propyl is a matter of claim construction and how one of ordinary skill in the art would understand such a group to mean. As we will see in the next section, the patentee can define his own terms and if he doesn t do so clearly, it is up to die court, using techniques of claim construction to figure out what is meant by definitional terms in die claims. The safest and best patent practice is for die patentee to provide die definitions in die specification to minimize any ambiguity. 

It is not surprising that a reasonable place to begin the search for a claim s meaning is the context of the claim itself. Although claims will not often define the terms they include, those term definitions maybe clarified or at least somewhat delineated when put into the context of the rest of the claim language or more broadly, in the language of one or more of the additional claims in the patent. In one recently decided case heard on appeal in Mars, Inc. v. H.J. Heinz Co.,2 claim 1 from U.S. patent 6,312,746 shown below was in dispute. 

Looking at the definition of the R-group, the inventor was content to apply a normal definition of Ci 6 alkyl. Confirming his hunch by looking up the definition of alkyl in some standard texts, he was confident that his compound of interest was clearly outside the scope of the claimed genus.33 However, had he taken the time to read the entire patent specification, he would have learned that the patentee as lexicographer had a different definition in mind. In the definitions part of the specification, the following definition for Q.6 alkyl was provided ... 

This example, while being of a fairly typical ilk for patents dealing with organic chemistry subject material, is somewhat straightforward in the sense that a fairly clear definition for the claimed Markush was available in the specification. Often, however, the specification does not provide such a clear definition, and one needs to look for clues through the context in which the term is used. In the absence of a clear definition, a consistent association of a term in a particular nexus can reinforce the term s meaning just as clearly as if the term had been set out and separately defined.35... 

For this particular example, we focused in on an issue related to freedom to operate. For now, it is important simply to appreciate that critical claim terms may be defined differently in a patent specification than one might typically appreciate and that those definitions, if clear and deliberate, can change the breadth of a claim in a way that one might not predict from the language of the claim itself. 

Issues related to prior art enablement, prima facie obviousness and secondary considerations of nonobviousness often intertwine in obvious determinations during patent prosecution and litigation since their definitional boundaries are often not well demarcated. In the case Sterling Drug Inc. v. Watson,69 the USPTO rejected claims to various single enantiomer compounds,70 and this decision was appealed to the U.S. District Court for the District of Colombia. The claims in question—10,12, and 14—are presented in Figure 8.18 together with the claimed structures (L-arterenol is the neurotransmitter norepinephrine).71... 

You ll notice in the prior art definition, the aromatic and heteroaromatic ring systems are defined by only the number of atoms they contain. Typically, patents and patent applications will further clarify such definitions, including the possibility for additional optional substitutions on those ring systems, either in the claim itself or in the patent specification. Such further subdefinitions were left out to simplify the Markush example. 

The definition of a true inventor is one who contributes to a novel feature of the invention as described in the claims [C-26]. The decision on who are the true inventors is best left until after an independent view from the patent agent has been... 

Another point which should be considered at this stage relates to the chances of getting meaningful patent protection. Publishing a second paper on a very similar topic is possible and occurs fi equently. Filing a patent with claims on what has already been published or described in other patent application is useless and a waste of much time and money. Those who aim for a patent should perform a patent and literature search during this project definition stage. Without this one cannot seriously consider a patent as the aim of the project. 

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