IP Essentials: Q&A Series

Q How many claims should there be in a patent? A A patent should have enough claims to describe a commercial embodiment of a particular invention, as well as feasible variations of the commercial embodiment, to prevent competitors from designing around the commercial embodiment by using one of these variations. Cost may be a consideration when determining how many claims to include in a patent application. In the United States Patent and Trademark Office (USPTO), one is allowed three independent claims and a total of 20 claims without surcharge above the basic application filing fees. Additional claims require additional fees. In other jurisdictions the number of claims permitted for the basic filing fee and the surcharge for extra claims differ. In the European Patent Office (EPO), for example, an applicant is generally limited to one independent apparatus claim and one independent method claim and 15 total claims. Excess claim fees in the EPO are far costlier than in the USPTO. Q Can I claim more than one invention in a single patent? A No. A patent may issue for only

Q Why do patent claims tend to be very long and often grammatically incorrect? A By law, patent claims must be a single sentence. If a claimed invention has several features, this may make the claim seem like a run-on sentence. Patent attorneys try to word patent claims to be as general as possible while still defining a novel invention. This may lead to a patent claim including terms that may seem vague. Further, a patent applicant can define their own terminology in a patent application, and if this terminology appears in a claim, it might not be clear what is meant unless one reads the definition of the terminology in the patent application. Q How do you claim an ornamental design? A Design patents include drawings of the design that is being claimed, applied to a particular type of object for which the design is intended. A design patent will include a single claim such as “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” For a more in-depth look at this type of patent, please see our Q&A on design patents . Q How do you claim a new variety of plant? A In a plant patent, the specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish it from related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. Plant patents have a single claim, such as “A new and distinct variety of (the plant), substantially as illustrated and described herein.”

Why do patent claims tend to be very long and of- ten gramatically incorrect? By law, patent claims must be a single sentence.

a single invention, although the claims may describe the invention at various degrees of specificity. In some instances, for example, one may seek to claim both a product and method of making the product, and the USPTO may require the applicant to choose one of the product or the method. In this instance, one may seek to obtain a patent for the unelected category of invention in a divisional patent application.

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IP ESSENTIALS: PATENT CLAIMS

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