What are patent claims?

A patent application can take hours to put together. You want it to be thorough, but, more importantly, if it is approved, you want it to protect your invention.

While all the parts of the application are important, they serve distinct functions. The drawings and description give meaning to the text in the “claims” section, but they do not define your rights to the claim.

Patent claims appear at the end of a patent application, are presented in a numbered format, and are commonly referred to as “claims.” Claims describe the “metes and bounds” of an invention in the same way that a property deed defines the “metes and bounds” of real property. Claims are important in patent law because during a patent enforcement action, the language set forth in a claim is what is being adjudicated. In other words, the claim describes what intellectual property is actually owned, and a judge will determine define the boundaries of such ownership by looking first at the language of the claims themselves and then referring to the specification (i.e., everything else in the patent other than the claims).

How are the claims relevant to the Patent Office

When the United States Patent and Trademark Office (USPTO) – and not a judge – examines the claims section of your application for patentability, the patent examiner is examining whether the claims are appropriately patentable, i.e., whether they describe inventive features that are, among other things, novel and non-obvious, and if they are, those claims are issued a patent grant.

If the claim is not approved by the USPTO examiner, then the claim is either rejected or objected to. In response, a common way the applicant addresses a claim deficiency is by filing an amendment to the rejected or objected to claim.

What the claims section means for your approved patent

If someone makes, uses, sells, or offers for sale what is emobided or described by the claim, then the patentee has a claim for patent infringement. While the illustrations and descriptions (i.e., the patent’s “specification”) provided in the patent may provide context and explanation regaring the claim, as mentioned above, it is the language of the claim itself that is the primary focus of the infringement inquiry.

Unfortunately, setting forth your invention only in the specification is not enough. The patentee is only entitled to protection for that which is disclosed in the claim. Make sure, as you complete your application, that your claims section of the patent sets forth all novel features of your invention that you intend to protect.

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