IP Essentials: Q&A Series

Q How are utility patent claims structured? A Utility patent claims include a preamble that describes the general nature or class of the claimed invention. A preamble may be as simple as: “An apparatus . . .” or “A method . . .” The preamble is followed by a transitional phrase, typically “comprising,” “consisting of,” or “consisting essentially of.” The choice of transitional phrase determines the scope of the claimed invention defined by the elements. The transitional phrase “comprising” means that the claimed invention includes at least the recited elements and may also include other features. The phrase “consisting of” means the claimed invention includes only the recited elements. The phrase “consisting essentially of” means the claimed invention includes the recited elements and excludes additional elements that would “materially affect the basic and novel characteristic(s) of the claimed invention.” Q Are there any exceptions to what you can claim in a utility patent? A Yes. You cannot claim a biological component such as an organ, an abstract idea such as a mathematical formula, a law of nature, or even a computer program per se . Some software inventions may be patentable if they meet certain requirements, such as controlling some physical system or improving the functioning of a computer itself. Q Why would one want a claim to be as general as possible? A Ideally a patent claim includes only what is necessary to render the claimed invention novel and inventive. This way, the claim can be used to protect not only one particular commercial embodiment of an invention, but other embodiments as well. For example, if a claim describes an apparatus as having a “power supply,” this claim may encompass versions of the apparatus including any

of a battery, an ultracapacitor, a solar panel, or even a flywheel as the power supply, as long as these different options are described in the body of the patent application. Claims may include language such as “means for” accomplishing a particular objective. These claims are interpreted to include any mechanism for achieving the claimed objective described in the specification, and equivalents thereof, but no other mechanisms for achieving the objective.

“Ideally a pat- ent claim in- cludes only what is neces- sary to render the claimed invention novel and inventive.”

Q What are independent and dependent claims?

A An independent claim stands on its own and defines the claimed invention most generally. A dependent claim may be used to claim the invention more specifically by adding a further limitation. A dependent claim may also be used to more specifically define one or more of the elements of the claim from which it depends. Dependent claims can depend from independent claims, other dependent claims, or even multiple claims, however, in the United States, claims that depend from multiple claims cannot depend from another claim that depends from multiple claims. A claim in dependent form is considered to incorporate by reference all the limitations of the claim to which it refers. Dependent claims are useful, for example, in litigation where a party might argue that the independent claims of a patent are invalid and unenforceable. If a court determines that an independent claim is invalid, a dependent claim describing an invention in more specific terms may still be considered valid and enforceable.




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