The patent claim is where the invention is legally defined. The guidelines for the patent claim is spelled out in US codes and US federal regulations in the last five paragraphs of 35 USC § 112 and in paragraph 1.75 of 37 CFR (Code of Federal Regulations.
"There is no such thing as writing, there is only re-writing"
This quote from the novelist Ayn Rand in describing her craft come to mind when tackling all of the interpretations of how claims should be written.
We have earlier discussed the first paragraph of § 112 and its structuring of requirements for the written description, enablement, and best mode. The remaining five paragraphs of this section of 35 USC § 112 are all aimed at the basic laws of claims. As before most of what we be describing is not just the specific language of this part of United States Code (USC) but how this part of the code has subsequently been interpreted in case law over the years.
The Last Five Paragraphs of 35 USC § 112
Let's start by looking at the five paragraphs together:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Now these last five paragraphs of 35 USC § 112 are actually rather straightforward (compared to some of the rest of patent law), but as you will see as we discuss the patent claim, case law has greatly expanded how the US Patent Office now looks at claims.
So we will step through these and I will try to put the many guidelines on how the patent claim should be written into English (Texan) for you. This will not be a primer for attorneys and agents on the strategy of claiming - it will rather be a kind of minimum guideline as to what an independent inventor or small business person should know about what the patent office is looking for in claims. You will probably leave claim drafting up to your patent prosecutor. But you want to be able to recognize claim issues when you see them.
So let's begin - patent claims part I will be on issues related to the second paragraph of 35 USC § 112. And that will be a rather big article because there are many issues.
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Mike Ervin - Cost Effective Small Business Patent Protection.
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