Patent Claims: What Are They?

Patent claims explain the limits of what a patent covers, and they're an important part of the patent application you file with the United States Patent and Trademark Office (USPTO). Patent claims usually come last in the order of documents. Together with the description, they are known as the specification.

Patent owners rely on patent claims to protect their intellectual property. If someone makes or sells an invention that has the elements in your claims, you can sue.

All claims should have a few key characteristics:

  • Complete: Claims should cover the invention adequately and place it in the right context.
  • Clear: Claims shouldn't allow for speculation.
  • Supported: The description and drawings should support all your claims.

Types of Patent Claims

Each claim is one statement with a period at the end. Utility patents can include many claims, but design and plant patents can only include one claim. There are three types of claims:

Independent Claims

These statements stand alone. There are three kinds of independent claims:

  • Claim for an invention
  • Claim for a method of producing an invention
  • Claim for a method of using an invention

All independent claims usually contain the following:

  • Introductory Phrase: This introduces the invention's name. It might also include the invention's potential use.
  • Transitional Phrase: This connects the introductory phrase with the elements. Choose this wording carefully, using terms such as "including" or "consisting of." Make sure you understand exactly what the transitional phrase means.
  • List of Elements: These are usually descriptions, features, or functions. A claim can include one or many elements.

Dependent Claims

These statements reference each other. You can have multiple dependent claims, but they are uncommon.

Special Claims

These can be further broken down into:

  • Jepson Claims

This is a type of special claim. Use these when your invention improves on an existing one. It specifies the older and newer parts of an invention.

  • Markush Groups

This is also a type of special claim. These group elements together in a single claim. Use these to shorten your application if your patent already has many claims.

Advantages of Patent Claims

  • They protect your intellectual property

Well-written claims are the foundation of a good patent. They help you keep the exclusive rights to your inventions and designs. They also give you basis for prosecution if someone makes or sells your invention or design.

  • You can add more

When you file a patent application, you want it to be as complete as possible. However, if you think of an important claim later, you can add it. After prosecution, you might need to add or amend claims. Make sure to include enough high-quality claims from the start, though. Without claims, your invention probably won't be patentable.

Disadvantages of Patent Claims

  • They can be too broad

Most patent claims start with a broad statement. After that, the statements should get more specific. Don't stop with a broad statement. If your claim includes too much, it probably won't be approved.

  • They can be too narrow

Other times, claims are too narrow. Yours should be specific enough to describe your unique invention. Your claims shouldn't be so narrow that they exclude potential copies. Overly specific claims don't give you the protection you need.

Common Mistakes

  • Writing claims yourself

Patent applications, and particularly the claims section, are known for being difficult to write. The rules are strict, and your language must be specific. If you do them incorrectly, you could end up with a bad patent. Consider hiring a patent attorney for help with the application process. Doing so will help you write a good patent the first time.

  • Starting with the wrong claim

You should always start with the most general claim then make more restrictive claims. Order them from most to least general.

  • Grouping claims incorrectly

Always group dependent claims together. List product and process claims separately.

  • Using antecedents (words or phrases to which a pronoun refers) incorrectly

After you mention a key term in your claim, you can refer to it again. Use the word "said" to make it clear you're referring to the antecedent. Only use the words "a" or "the" if you're referring to more general terms.

  • Including the wrong number of claims

Your patent examiner might reject one or more of your claims. Each should stand on its own, and you should list as many as you need to protect your invention.

Deadline

There is no deadline for filing patent claims. You must send them in with your complete patent application.

Frequently Asked Questions

  • How Much Does it Cost to File Patent Claims?

When you file a patent application, you pay a standard filing fee. You must pay extra fees if you include certain numbers or types of claims:

 

Large Business Fee

Small Business Fee

Individual Fee

Each independent claim in excess of three

$420

$210

$105

Each claim in excess of 20

$80

$40

$20

Multiple dependent claim

$780

$390

$195
  • What Is Claim Infringement?

You can assert patent infringement when someone violates your patent. If someone makes a product or process similar to your intellectual property, you can sue. The infringing invention must perform all the elements in the claims. The courts review your patent claims to decide if the other product is actually an infringement. There are two kinds of claims infringement:

  • Literal Infringement: This happens when properly construed claims are found in the accused device.
  • Equivalent Infringement: This happens when the infringement falls under the doctrine of equivalents, or the accused device performs essentially the same function or is otherwise the same as the claimed invention.
  • What Is Claim Construction?

This is how a claim is interpreted. In the courts, claims undergo a two-step process. First, a judge decides what the words in the claim mean. Second, the court decides if the claim is infringed.

  • What Is the Doctrine of Equivalents?

This can extend your intellectual property rights. The courts can use the doctrine of equivalents to add more meaning to your claim. So, a potential infringement with less significant differences from your claims can still be considered an infringement.

  • What Is a Beauregard Claim?

This refers to a claim to a computer-implemented method. It's written to claim a computer-readable medium that stores the program that performs the method.

  • What Is the All-Limitations Rule?

This states that the doctrine of equivalents applies to an element of a claim. It doesn't apply to an entire invention.

  • What Is Prosecution History?

Your patent's prosecution history includes all public communication about your application. It might show that you chose to leave out certain information from your patent claims. If so, you might not be able to use the doctrine of equivalents to extend your claims.

Steps to Develop Patent Claims

1. Decide on the Scope

Start broad and make your claim(s) narrower as you go. Group all dependent claims together. If you are filing a utility patent, you can write several claims.

2. Use the Right Structure

Start with the phrase, "The invention claimed is" or something similar. Each claim must have an introductory phrase, a linking phrase followed by a colon, and a list of elements in a single sentence. The claim must also be clear and complete.

3. Make Sure They Fit With the Other Patent Components

Patent claims can't stand alone. The patent description and drawings must support the claims. Make sure to reference the drawings and other elements in the claims.

If you need help with a patent claim, you can post your question or concern 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.