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Patent claims are usually in the form of a series of numbered expressions following the description of the invention in a patent or patent application, and define, in technical terms, the extent of the protection conferred by a patent or by a patent application, when applicable. They are of the utmost importance both in examination proceedings and in litigation, for instance during infringement actions.
There are two basic types of claims:
- the independent claims, which stand on their own, and
- the dependent claims, which depend on a single claim or on several claims and generally express particular embodiments as fall-back positions. When a claim in one particular category (see below), e.g. a process claim, depends on a claim from a different category, e.g. a product claim, it is not considered to be a dependent claim but an independent claim (at least under the European Patent Convention).
Claims can also be classified in categories, i.e. in terms of what they claim. A claim can refer to
- a physical entity, i.e. a product (or material) or an apparatus (or device, system, article, ...). The claim is then called respectively "product claim" or "apparatus claim"; or
- an activity, i.e. a process (or method) or a use. The claim is then called respectively "process claim" (or method claim) or "use claim".
History
Patents have not always contained claims. In many European countries, patents did not contain claims before the 1970s. It was then often difficult (and subjective) to decide whether or not a product infringed a patent, since the sole basis to know the extent of protection was the description, in view of the prior art.
However, even among patent legal systems in which the claims are used as the reference to decide the scope of protection conferred by a patent, the way the claims are used may vary substantially. Traditionally, two types of claiming system exist:
- the central claiming system, according to which the claims identify the "centre" of the patented invention. The exact scope of the protection depends on the actual nature of the inventor’s contribution to the art in the concerned technology. The central claiming system was used in the United Kingdom and United States in past centuries, and is currently used in Germany and most of the other countries of continental Europe.
- the peripheral claiming system, according to which the claims identify the exact periphery, or boundary, of the conferred protection. In this system, the burden of drafting good claims is much higher on the patent applicant (or on his counsel). The applicant receives the protection he or she requested and almost nothing more, provided that the invention is new and non-obvious of course. This theoretically makes it easier for third parties to examine whether infringement may exist or not. This system is currently used in the United Kingdom and United States.
Requirements
Under the European Patent Convention (EPC), a claim must define the matter for which the protection is sought in terms of technical features. These technical features can be either structural (e.g. a nail, a rivet) or functional (e.g. fastening means).
Special types of claims
Jepson claim
In U.S. patent law, a Jepson claim is a method or product claim where one or more limitations are specifically identified as a point of novelty, distinguishable over at least the contents of the preamble. They may read for instance "A system for storing information having (...) wherein the improvement comprises:".
In U.S. practice, during prosecution a USPTO patent examiner may cite the contents of the preamble as "Applicant Admitted Prior Art" to assemble a 35 U.S.C. 103(a) obviousness rejection of the Jepson claim, and possibly as "Applicant Admitted Prior Art" to assemble a 35 U.S.C. 103(a) obviousness rejection of other independent and dependent claims within the prosecuted claims.
In a crowded art, a Jepson claim can be useful in calling the Examiner's attention to a point of novelty of an invention without requiring the Applicant to present arguments and possibly amendments to communicate the point of novelty to the Examiner. Such arguments and amendments can be damaging in future litigation, for example as outlined in the Festo decision.
Markush claim
Mainly used in chemistry, a Markush claim or structure is a claim with multiple "functionally equivalent" chemical entities allowed in one or more parts of the compound. According to "Patent Law for the Nonlawyer" (Burton A. Amernick; 2nd edition, 1991),
- "In claims that recite... components of compositions, it is sometimes important to claim, as alternatives, a group of constituents that are considered equivalent for the purposes of the invention.... It has been permissible to claim such an artificial group, referred to as a 'Markush Group,' ever since the inventor in the first case... won the right to do so."
If a compound being patented includes several Markush groups, the number of possible compounds it covers could be vast. No patent databases generate all possible permutations and index them separately. Patent searchers have the problem, when searching for specific chemicals in patents, of trying to find all patents with Markush structures that would include their chemicals, even though these patents' indexing would not include the suitable specific compounds. This is where databases that permit searching of chemical substructures are indispensable.
Markush claims were named after Eugene Markush, the first inventor to use them successfully in a U.S. patent, in the 1920s.
Means-plus-function claim
A means-plus-function claim is a claim including a technical feature expressed in functional terms of the type "means for converting a digital electric signal into an analog electric signal".
Omnibus claim
A so-called omnibus claim is a claim including a reference to the description or the drawings without stating explictly any technical features of the product or process claimed. For instance, they may read for instance "Apparatus as described in the description".
Omnibus claims are not allowed under the EPC "except when they are absolutely necessary" [1] [2].
Product-by-process claim
A product-by-process claim is a product claim where the product is defined by its process of manufacture, especially in the chemical and pharmaceutical industries. They may read for instance "Product obtained by the process of claim ...".
According to the European practice, they should be interpreted as meaning "Product obtainable by the process of claim...". They are only allowable if the product is patentable as such, and if the product cannot be defined in a sufficient manner on its own, i.e. with reference to its composition, structure or other testable parameters, and thus without any reference to the process.
The protection conferred by product-by-process claims should not be confused with the protection conferred to products by pure process claims, when the products are directly obtained by the claimed process of manufacture (Art. 64(2) EPC [3]).
Swiss-type claim
A Swiss-type claim or "Swiss type of use claim" is a claim intended to cover the second or subsequent medical use (or indication) of a known substance or composition.
Consider a chemical compound which is known generally, and also is known to have a medical use (e.g. treating headaches). If it is then found to have a second medical use (such as restoring hair loss), the discoverer of this property will want to protect this new use by obtaining a patent for this new use.
However, the substance itself is known and cannot be patented. It lacks novelty under Art. 54 EPC. Nor can the general concept of a medical formulation including this compound. This is known from the first medical use, and thus also lacks novelty under Art. 54 EPC. Only the method of treatment is new. However methods for treatment of the human body by therapy are not regarded as inventions which are susceptible of industrial application under European law (e.g. Art. 52(4) EPC) and are not patentable.
The Enlarged Board of Appeal of the European Patent Office solved this by allowing claims to protect the "use of substance X in the manufacture of a medicament for the treatment of condition Y" (G 5/83 [4]). This fulfilled the letter of the law (it claimed the manufacture, not the medical treatment), and satisfied the pharmaceutical industry also.
Because such claims had first been allowed in Switzerland they became known as "Swiss-type claims".
Other types
References
- The construction of product-by-process claims, 11th European Patent Judges' Symposium, Copenhaguen, Official Journal of the EPO 2003, Special Edition, No. 2, p. 20-75 (pdf)
See also
External links
- European Patent Convention
- Article 69 defining the extent of protection
- Article 84 defining the role of claims
- Rule 29 expressing the legal requirements regarding the form and content of the claims
- US Patent law
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