Patent Claim Construction: Everything You Need to KnowPatent Law ResourcesHow to Patent an IdeaProvisional PatentPatent PendingDesign PatentPlant PatentUtility Patent
Patent claim construction is the creation of the part of your patent application that explains what it is you are trying to protect. 4 min read
What Is a Patent Claim?
A patent claim is the part of your patent application, typically for utility patents, that explains what it is you are trying to protect.
Patent Claim Construction: What is it?
If you have to accuse a person or company of stealing your idea, you will need to prove there has been patent infringement. This process has two steps:
There is the patent claim, which explains the product's use and makeup.
There is the infringement analysis, which determines whether or not the claim has been violated.
This means you can't determine the second part (and win the case) without having a strong claim.
In most patent courts, the judges (or the juries) are told to focus more on written evidence than physical evidence. Instead of comparing two finished products, they are asked to read the claim, determine what the creator was trying to make, and decide if the other party stole the idea. Because the key players are focused on the words, the claim's language is crucial to the court process.
Why is Patent Claim Construction Important?
According to Touro Law Review, the claim construction is one of the main determinants used within a case. Both legal teams will review the construction of the patent and how the owner described it to determine if the defendant is guilty of stealing an idea or design. If the claim is poorly written, then there will be plenty of holes in the case. This means that the more detail used when crafting the claim, the better.
There are three parts within a claim that companies need to keep in mind as they write it:
It must be written in a way that an ordinary person could understand.
It must cover what the inventor wanted to create and what was actually created.
It must prove that the claim is a valid patent from the U.S. Patent and Trademark Office.
Without any one of these parts, a court cannot determine that a patented idea was illegally taken and used for a profit.
Reasons to Consider Using a Patent Claim
Even if you don't have a patent on an item – or are considering applying for a patent – you need to keep claims in mind. According to the Patent Act, all applicants are required to include a claim in their file. This has been part of the law since 1822. By describing what it claims is its own invention, the company is able to record in writing what it made.
This history is significantly stronger in court than modern records. Almost anyone can say that they had an idea for something, but a claim filed with the original patent proves that the idea belongs to the owner.
There is also a modern reason to include a strong claim when creating a patent. "Patent Trolls" are companies that buy up patents in order to collect licensing fees by threatening lawsuits against, or actually suing companies that have developed products supposedly covered by the patent, according to the Notre Dame Law Review. Without a well-written claim, a troll can assert that a company's product or idea is infringing on its patent. TV host John Oliver even covered this concept on his show, "Last Week Tonight."
Examples of Patent Claim Construction
In Clare v. Chrysler, in 2016, Scott Clare, Neil Long, and Innovative Truck Storage lost their case against the carmaker because they did not specifically define their claim and explain its use and purpose. They had developed hidden storage boxes for trucks that they claimed Chrysler stole. While they argued that the purpose was clear to any regular person, the court disagreed. Had they written a clear claim, the case might have been stronger.
Claims are one of the hardest parts of the process of applying for a patent. Most written pieces fall into two categories:
They are too narrow, which means the claim was too specific to be infringed.
They are too broad, which means it's impossible to claim them for their own.
For example, an appliance company could patent a specific type of washing machine. The claim would be too broad if it only said "it's a washing machine," but it would be too narrow if it explained every measurement of the machine, down to the last detail.
Claims are typically constructed from three separate parts:
- A preamble, which identifies the type of invention.
- A transitional phrase, (typically either "comprising" or "consisting of," which sets up a list of criteria.
- One or more limitations that help identify the product.
The 2015 case Teva Pharmaceuticals USA v. Sandoz Inc. is a great example of writing claims that are too broad or too narrow. In this case, the patent claimed that a multiple sclerosis drug's "active ingredient" had a certain molecular weight. The claim did not identify how the active ingredient was determined (there are multiple ways) and how to calculate molecular weight. This means that any company could recreate the drug without breaking the law.
Common Mistakes With Patent Claim Construction
The team at PatentlyO explains that patent applications should have highly technical terms explained in a way almost anyone could understand in order to help the patent office know just what the application is for. This can be done, they said, by defining terms at the beginning of the claim and explaining the products or the industry.
The rise of technology is a strong example of this. The software industry has its own challenges when it comes to patent claims because the wording involved (as well as the technology) is so new. Many terms that are common today didn't exist 20 years ago, leaving the patent office to play catch-up.
If the patent office is unable to completely understand why the claim is necessary to protect the inventor's business, it can reject the claim and let the company's competitors take its trade secrets.
Companies that want to file patents should consider hiring a lawyer to write their claims. You can post your patent needs here and get free custom quotes instantly from the top 5% of lawyers on UpCounsel with an average of 14 years of experience. A professional found through UpCounsel will make sure to use the precise language needed so that a company's patents are protected for several years (and through several cases) to come.