Claims and claim structure Flashcards
What do claims define and set in a patent?
Claims define the metes and scope of the invention, define what the applicant regards as his invention, and set the parameters for the right to exclude others from making, using, selling, and importing the invention.
What are the claim types?
Independent and dependent claims.
What are independent claims?
Independent claims stand alone and are broader in scope. It is more difficult to prove novelty for an independent claim and to warrant enablement.
What are dependent claims?
Dependent claims rely on the claim they are dependent from. They include all the limitations of the independent claim and at least one more, or further restrict limitations already set. They are narrower in scope, require less enablement, it is easier to demonstrate novelty and non-obviousness for them, and are easier to get granted.
Dependent claims often serve to emphasize that the independent claim is not so limited.
What’s the name for dependent claims that extend in any way from the scope of the independent claims they derive from?
Improperly dependent claims.
What are the three parts of a claim?
1) Preamble: starts by setting the type of subject matter (process, machine, manufacture, composition of matter) and may also summarize the invention subsequently claimed.
2) Transition.
3) Claim body.
Which are the types of transition phrases in patents?
Closed transitions, open transitions, and partially open transitions.
What are closed transitions? Provide an example.
They are transitions that state that the elements immediately subsequent to the transition are the sole elements included.
Ex: consisting of
What are open transitions? Provide an example.
Open transitions are transitions where the listed elements are the MINIMUM elements to satisfy the claim. Additional elements may be added.
Ex: comprising, including, containing, characterized by
What is an example of a partially open transition? What does it mean?
Ex: “consisting essentially of A and B…”
It means that A and B must be present but other elements that do not directly affect materially the basic and novel characteristics of the claimed invention could be included.
They are used when “consisting of” is too narrow and “comprising” is too broad.
What or who is a PHOSITA? Why is the term important?
PHOSITA stands for a Person Having Ordinary Skill In The Art.
It is generally accepted that claim terms are given their “ordinary and customary meaning”, as understood by a PHOSITA. A PHOSITA will extract the claim meaning from a deep and thorough analysis of the claim terms in view of the entire specification, in the context of technical field of the patent. As well, a PHOSITA will will take into consideration alternative definitions provided by patent writer for the terms used in the patent.
Who is considered an inventor?
Those involved in the conception of the claimed invention. If an individual contributed material that was part of the patent application but was not important to the issued claims, he/she is not an inventor. Similarly, merely reduction to practice does not qualify for inventorship, unless reduction to practice required inventive contributions that became part of the claimed invention.
