1. Overview of a Patent Claim
2. Types of Patent Claims

Patent claim types refer to the different types of claims that are used to describe inventions in patent applications. A patent claim is arguably the most important aspect of a patent application, because it explains what the patent covers and does not cover. There are many different kinds of patent claims, including two main types and several special types. If you are applying for a patent, you should learn about each type of patent to determine which one best suits your invention and purpose.

Overview of a Patent Claim

A patent claim refers to a sentence that describes the invention in a patent application. It can be found at the end of the application. It serves the important purpose of defining the invention that has been granted protection by the United States Patent and Trademark Office (USPTO).

According to 35 U.S.C 112, a patent applicant is required to specifically point out and claim the subject matter that he or she asserts to be his or her invention. The part of the application where this is done is called the claim or claims. A patent claim is regarded as the heart of a patent, because it explains exactly what the patent covers. It enables a patent applicant to exclude other individuals or entities from producing, selling, or using only the things that are mentioned in the claims.

If you own a patent, you need to have a patent claim to protect your intellectual property. In the event that someone produces or sells a product that has the elements described in your claims, you can file a lawsuit against him or her.

Every patent claim should have the following characteristics:

  • Clear – A patent claim should not allow for speculation.
  • Complete – A claim should adequately describe the invention and put it in the right context.
  • Supported – The drawings and description in the patent application should support your claim.

Understanding a patent claim is the key to determining whether or not a certain product or process has infringed the patent. This is by no means an easy task due to the following reasons:

  • A patent claim is written in a very stilted and legalistic manner.
  • A claim does not necessarily mean what it says and must therefore be properly interpreted and clearly described by the drawings and patent specification.
  • The terms found in a patent claim may be limited by what the patentee said to the USPTO while the patent application was pending.
  • Sometimes, the terms in a patent claim may mean more than they seemingly do under the “Doctrine of Equivalents.”

Types of Patent Claims

Independent Claims

An independent claim refers to a stand-alone claim that includes a preamble and every element required to define the invention. This kind of claim comes in three different forms, including:

  • A claim for an invention
  • A claim for a method of producing an invention
  • A claim for a method of implementing an invention

An independent claim typically contains the following information:

  • Introductory phrase – This phrase introduces the name of the invention. It may also include the potential use of the invention.
  • Transitional phrase – A transitional phrase serves as a connection between the introductory phrase and the elements.
  • List of elements – This list usually consists of descriptions, functions, and features. It can have just one or many elements.

Dependent Claims

According to 37 CFR 1.75(c), one or more patent claims can be presented in dependent form. A dependent claim is a claim that refers back to and further restricts another claim or other claims in the same patent application. It incorporates by reference all the limitations of the claim on which it depends, making it easy to write.

A dependent claim must further restrict the claim it depends on. This can be achieved by claiming a narrower range or adding more elements. If it broadens the scope of the claim it depends on, it will be regarded as an improper dependent claim.

Special Claims

  • Jepson Claim – This type of claim is used to separate the old and new components of an invention.
  • Markgush Groups – A claim that groups elements together to shorten a patent application that has many claims.
  • Beauregard Claim – A special claim for a computer-implemented method.

If you need help understanding different patent claim types, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.