A patent kit claim is a type of claim recognized by the United States Patent and Trademark Office (USPTO). It is used when the inventor wants to patent the selling of two or more items together in a “kit” to be combined by the end user at the time of use. Patent kit claims can be used in any type of business, but are probably most common in the biotechnology sector and are also frequently seen in the paint and coatings industry.

Types of Patent Claims

Once you have decided to go for patent protection, the next step is determining what type of patent is appropriate for your situation. There are many types of patent claims recognized by the USPTO.  Some of the more common are:

  • Composition of Matter Claim: This is one of the classic claim types. Obtaining it involves demonstrating that the specific mixture of components you seek to patent, when combined, produce a specific result that is not a matter of common knowledge.
  • Process/Method Claim: These claims are used when the inventor claims ownership of a specific process which leverages an existing material but uses it in a new way that produces unique results.
  • Product by Process Claim: These claims combine elements of a composition claim and a process claim.
  • Machine/Apparatus Claim: These claims are used for inventions that have moving parts that cooperate with one another, such as mechanical devices. Computers and circuitry are also included in this category.
  • Article of Manufacture Claim: These claims are similar to machine/apparatus claims but are used for devices that don’t have moving parts.
  • Kit Claim: Kit claims are the focus of this article. They are used when the objective is to patent the combined offering of two or more component parts in a kit that the end user assembles at the time of use. For example, the first producer of a wood refinishing kit containing putty, stain and finish coat might seek to protect that specific combination using patent kit claim.

It’s important to consider all of the various types of patent claims and choose the correct one for your business and your specific situation in order to ensure that you can proceed through the process as efficiently as possible and end up with the most commercially relevant protection for your product.

Are “Kit Claims” Better Than Claims for Separate Components?

If the individual components can be distinguished and patented, that is likely to provide more protection than a kit claim. Determining the distinguishability of the individual components is a complex legal process, however, with no easy answers.

There are also other complications with kit claims. For example, the USPTO may reject or restrict your claim if it finds that you have included multiple components in a single claim that are all patentable for different reasons. In that case, USPTO might insist on segregating the kit claims from the component claims. This can become very complex and raise questions as to whether the entire scope of your invention is protected by whatever combination of patents is ultimately issued. Some experts also believe that individual component claims are broader in scope than kit claims.

In the end, kit claims are neither better, nor worse than component claims. Instead, it is critical that each be used appropriately to the specific circumstances in any given situation.

When to Use a Method Claim Instead of a Kit Claim

Before filing a kit claim, it is important to be sure that it is the combination of components in your kit and not the method by which you combine or apply them that is unique. If it is the latter, a process or method claim may be more appropriate. For example, in a recent case involving tuberculosis test kits, the court found that a kit claim was not allowable because the peptide panel used in the test was not unique. However, the in-vitro method used for the test was arguably unique, and the court allowed a method claim to proceed on this basis.

Precise Language Required for Drafting the Claim

Once you have decided to file for a patent kit claim or any other type of patent claim, the next challenge is in describing the claim in a way that will meet the acceptance of the USPTO. The specification of a patent must include at least one independent claim and potentially one or more additional dependent claims. Under U.S. patent law, the claim must:

  • Set forth what specifically the applicant regards as his or her invention.
  • Point out and specifically define the limits of what will be protected by the patent.

The claim must be clear, precise, unambiguous and correct. However, this is a highly subjective process since so much depends on what the applicant regards as the invention. Claims, and particularly those drafted without the assistance of a patent attorney, are frequently rejected for failure to meet these requirements.

There is specific “magic language” that the USPTO looks for, such as the claim should begin with the words “I” or “we” “claim” followed by a single sentence that may include commas, semicolons, or colons, but has only one period.

The claim document typically includes a preamble describing the field in which the invention is used and transitional language setting out the context for the specific elements of the claim. This transition often uses phrases such as “comprising/which comprises” or “consisting of/which consists of.” In cases where the claim may be open to the inclusion of some additional elements that don’t materially alter its basic and novel characteristics, the term “consisting essentially of” might be used. 

The body of the claim then sets forth the specific primary and dependent claim elements.

“Jepson” claims for improvements to existing patented items have preambles which are standard and “admitted” by the PTO process. These claims typically start with “the improvement which comprises.”

Kit Claims can be used to cover inventions where all of the elements of the invention are not physically connected. They often include alternative expressions like “or,”  “and/or,” and “a member-selected from the group consisting of,” “at least one member selected from the group consisting of,” and “optionally.” All of these are acceptable in patent claims, as are negative limitations. Acceptable negative limitations might be “in the absence of,” “other than,”  “wherein there is no,” “void of,” or “free of.”

The first time an element is used in a claim, an antecedent basis has to be established for it, by referring to it with the word “a” or “an.” After that, the element is subsequently referred to using the word “the” or the word “said.”

Some relative terms can acceptably be used in claims without rendering them indefinite.  For example, “about,”  “at least,” “no more than,”  “essentially,”  “substantially,”  “effective amount,” and “sufficient” are all acceptable. However, terms like “similar,” “type,” and “at least about” have been found to render a claim invalid.

Dependent claims spell out additional limitations on the independent claim and cannot be infringed upon without infringing the independent claim on which they depend. They are typically used to narrow elements called for in the claim or to add additional elements. They often use language like “wherein” to narrow elements or “which further comprises” to add new elements.

Dependent claims are generally of the format:

A [process, composition, or article] as specified in claim X, [wherein or which further comprises] . . . 

Unless the inventor uses the term differently (and specifies how), terms used in claims carry their ordinary dictionary meaning.

Inevitably Mistakes Happen During the Patent Process

It is inevitable that mistakes will happen during the patent process. It is an extraordinarily complex process, and the system is massive. USPTO processes about 500,000 claims a year and grants in the neighborhood of 200,000 patents annually. Any system that large will make errors some of the time.  However, minimizing those mistakes is critical to minimizing the amount of abuse of the patent system that is possible, and is in the best interests of everyone concerned. Patent trolls and other opportunists exploit the inadvertent mistakes made by novices to the process to steal ideas and extort payments.  The best protection against this is an error-free claim.

Because the system is so complex, many inventors choose to seek the assistance of a patent attorney with filing their claim. Patent attorneys are experienced in navigating the complex requirements of the US PTO and using the precise drafting language required both to completely protect the invention and to pass muster during the PTO examination process.

If you need help with a patent claim, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top five 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 companies such as Google, Stripe and Twilio.