A patent is a legal document, like a contract, that gives its owner the right to exclude others from making, using, or selling the invention.  The patent comes with some limitations though.  The owner only has those rights with respect the invention, as covered by the claims of the patent.  That section of a patent, the claims, is arguably the most important section of the patent.  For utility patents, It is found at the end of the patent after the long description of the invention, and the drawings.  Additionally, each claim is also numbered. 

One way to understand the claims is to think of the description of real property in a deed.  That description might say, “from the big oak tree to Snell’s river, east on the river 125 yards, and back to Walnut road.”  The space of land bound by that description is what the deed owner owns.  Similarly, the intellectual space defined by the claims in a patent application is what the patent owner owns.  

For example, one claim for a simple writing implement might read, “An elongated member comprising a tubular body and a writing implement disposed at least partially therein, the writing implement having a conical shaped end portion and an ink-based mechanism coupled to the end portion.”  Now since the claim recites, and is therefore limited to an “ink-based mechanism coupled to the end portion,” this claim does not protect against writing implements with led-based mechanisms (e.g., pencils).  Stated differently, if the patent owner with this claim tried to sue someone and stop them from making a pencil, he or she would be unsuccessful because the claim is limited to ink-based mechanisms.  Additionally, if the patent owner with this claim tried to sue someone and stop them from making a writing implement with an ink-based mechanism, but with a “square-shaped end portion,” he or she would be unsuccessful, because the claim is also limited to the writing implement having a conical shaped end portion.

You can understand that one goal of writing the claims of a patent is to ensure that others who try and practice your invention infringe your claims.  That is, you want what they are doing to fall within the scope of your claims.  As such, in the above example, it would be very unwise for the claim to recite, “An elongated member comprising a tubular body and a writing implement disposed at least partially therein, the writing implement having a conical shaped end portion and an ink-based mechanism coupled to the end portion, and wherein the tubular body is blue.”  All a competitor in this scenario would need to do is make the exact same invention as yours, but make it green, red, purple, etc.  It is always wise to ask, when drafting claims, is it really necessary that this limitation be in the claim?  This is called breadth, and it is crucial to focus on when drafting claims.

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.