Law - Process Claim

A patent "claim" is a sentence fragment (the object of a sentence that begins "I claim" or "We claim" or "What is claimed is") that describes the "metes and bounds" of an inventor's intellectual property. You can think of a claim as analogous to a mining claim that has been "staked" by a prospector. Everything within the boundaries of your claim belongs to you--but no more than that. For this reason, drafting (authoring) of patent claims is best left to patent professionals. You can help, however, by giving your patent attorney or agent a place to start on the broadest claim. Once your patent attorney or agent understands your invention (and only you can "teach" it to him/her), he/she will draft multiple claims (probably in different formats) to ensure its protection.

Provide a description of each element or step of the least limited embodiment (version) of your invention. The idea here is to give the inventor a chance to "pare down" a description to the bare minimum elements (or steps) of the simplest form of the invention. The goal is to end up with a listing of invention elements (or steps) that illustrates how the elements (or steps) are related to one another and that contains no words that unnecessarily narrow the breadth of the claim.

Hint! Think like a competitor who wants to gain the benefits of your invention without paying your organization a royalty. What element(s) or step(s) could he leave out and still have a fully functional invention? You should leave them out of this claim, too. Can you think of broader (less limiting) language with which to describe any element or step? If so, use it. This is one of two places in an invention disclosure (the other is in the Summary of the Invention) where less (words) is more.

The objective of this effort is to "distill" the "essence" of your invention. In other sections of the disclosure, you are asked to add all the "bells and whistles" that make your invention even better than its absolutely required essence.

MPEP 608.01(i) Claims

MPEP 608.01(k) Statutory Requirement of Claims

MPEP 608.01(m) Form of Claims

MPEP 608.01(n) Dependent Claims

MPEP 608.01(o) Basis of Claim Terminology in Description

MPEP 608.01(a) Arrangement of Application

MPEP 2162 Policy Underlying 35 U.S.C. 112, First Paragraph

MPEP 2163 The Written Description Requirement

MPEP 2163.01 Support for the Claimed Subject Matter in Disclosure

MPEP 2163.02 Standard for Determining Compliance With the Written Description Requirement


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