In order to have full right over an invention, the law requires that the patent applicant particularly points out and distinctly claim that the subject matter which the inventors consider his or her invention. Any patent or patent application considers a variety of different section that contains different information. Only the patent claims give the exclusive right granted to the patent applicant, rest patent is there to facilitate understanding of the claimed invention. 35 USC 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention.
It is mandatory to fully disclose your invention or give full or complete specification in the initial filing with the patent office. Rearranging of the patent application is allowed but the addition of new material is not allowed. As per the Patent Law Treaty Implementation Act, patent claims, and drawings are no longer required in order to obtain a filing date of the non-provisional patent application. While patent claims can always be added to an application if the original disclosure was filed with the supported claims. Drawings are almost always going to be required and add drawing later will be difficult if not completely impossible because drawing invariably convey more than the textual description drawing. These original claims can support themselves, meaning claims are considered a part of the larger, overall disclosure.
Having claims present at the time of filing helps ensure that at least what you are claiming has sufficiently been disclosed in the patent application. Originally filed claims need not be exhaustive. Through prosecution, patent claims can be amended and even added, provided of course the initial disclosure is broad enough to cover the added or amended matter. Therefore, when drafting a patent application it is good practice to spend time drafting quality claims. Do not simply rely on your ability to add claims later because invariably you will wind up wanting to at some point add claims or elements thereof that are not described in the specification. Include enough claims with the initial filing to cover the invention and important variations.
Forms of Claims
The claims or claim must commence on a separate sheet and should appear after the detailed description of the invention. While there is no set statutory form for a claim. The present practice in the patent office is to insist that each claim in patent office is to insist each claim must be the object of a sentence starting with “I claim,” “The invention claimed is”, or the substantial equivalent thereof. Each claim must begin with a capital letter and end with a period. A period may not be used elsewhere in the claim except for abbreviation. What this means is that each claim can be only one sentence. This is regardless of how tortured the sentence structure is and how incomprehensible the sentence may be to those not trained in patent claim drafting. Where a claim sets forth a plurality of elements or steps, each element or step of the claim can be separated by a line indentation.
Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed in parentheses so as to avoid confusion with other numbers or characters which may appear in the claims.
Claim Arrangement and Understanding
Claims should preferrably be arranged in order of scope so that the first claim presented is the broadest. All dependent claim should be grouped together with the claim or claims to which they refer to the extent practicable. Similarly, product or process claims should be separately grouped. Such arrangements are the purpose of facilitating classification and examination. Failure to arrange claims in the desired sequence is certainly not fatal. The examiner who sees an inappropriate arrangement will issue an objection. The refusal to grant claims because the subject matter as claimed is considered unpatentable is called “rejection”. If the form of claim is improper, an “objection” is made. The practical difference between a rejection and objection is that a rejection involves merit of a claim is subject to view under PTAB, while an objection, if persistent, may be reviewed only by way of petition to the Commissioner. If the rejection and objection are for the same reason an appeal can be taken to the Board.
An independent claim is a stand-alone claim that contains a preamble and all of the elements necessary to define the invention. There are three types of independent claims: (1) a claim for a “thing,” such as a composition of matter, machine, apparatus or device; (2) a claim for a method of making a “thing”; and (3) a claim for a method of using a “thing.”
Claims that refer back to and further limit another claim, are called dependent claim. Dependent claims incorporate by reference each of the limitation of the claim from which they depend. Because dependent claims incorporate by reference each of the limitation of the claims form which they depend they are easy to write. Additionally, dependent claims are used in every application because of additional fee charges at the patent office if the application has more than one dependent claim. Most patent applications have few dependent claims.