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Patent 101: Tips on Writing Claims

How to write patent claims, using the bed as an example

What are claims and why are they important?

A patent specification is made up of several parts which include:

  • Title of invention
  • Technical field
  • Background of invention
  • Summary of invention
  • Description of drawings
  • Detailed description of invention
  • Claims
  • Abstract

However, in this article, we will only focus on the claims section.

Claims are basically the heart of a patent specification, as they define the scope of protection for an invention and would be the reference point during any court proceeding. As a start, one must know that claims are written in one sentence and in numbers. All claims must be clear, concise and be supported by the description in the patent specification.

 

Before writing the claims…

Before you even start writing the claims, there are three things that you should always keep in mind.

  1. The problem that your invention is solving.
  2. The difference between your invention and previous inventions.
  3. The essential and optional features of your invention.

Conducting a prior search is strongly suggested before drafting a patent specification. This is to ensure that the important features of your invention can be clearly highlighted in the claims. The claims must show the interaction between the features and how the problem can be solved with the interaction of those features.

 

When writing the claims…

Usually there is at least one independent claim and a number of dependent claims in a patent specification. The main claim of the invention, called the independent claim, is usually explained in a broad manner. In the independent claim, only the necessary features of the invention should be included, whereby the included features must be sufficient for the invention to work. The scope of the invention is then narrowed down by optional features described in the dependent claims.

You can start writing your independent claim as below:

  1. A {insert title} comprising:
    {list the features one by one}
    {explain how the features are connected}.

In many countries including Malaysia, the independent claims are written in two parts. The first part of the independent claim shows the known features that have been disclosed in previous inventions. The second part shows the essential novel features of your invention in solving the problem statement. The first and second parts are usually separated by using the words “characterised in that” or “characterised by”.

 

Example: The bed and the blanket

Now let’s take a look at an example.

Imagine that a bed somehow solves a technical problem and is considered patentable, wherein your invention is to provide a blanket to the existing bed. An example of this independent claim could be written as follows:

  1. A bed comprising:
    a bed frame;
    a mattress placed on top of the bed frame; and
    at least one pillow on the mattress;
    characterised in that the bed further comprising:
    a blanket laid on the mattress configured to cover and keep a user warm.

In this example, the new feature of the invention –the blanket – is written in the second part of the claim, separated by the words “characterised in that”. From this claim it can be understood that the bed frame, mattress and pillow are the known features of a bed.

The claim also shows the interaction between each feature and how the novel feature of the invention, i.e. the blanket solves a problem. In this case, the problem statement would be a user being cold despite having a bed with a bed frame, mattress and pillow.

An example of dependent claims for the above independent claim could be written as follows:

  1. The bed as claimed in claim 1, wherein the mattress is covered by bed sheets.
  2. The bed as claimed in claim 1, wherein the at least one pillow is covered by a pillowcase.

The bed sheets and the pillowcase are claimed under dependent claims as they are optional features. They can be considered optional as the bed can still serve its purpose even without having the bed sheets or the pillowcase. The bed sheets and pillowcase are only preferable features. In other words, these two dependent claims narrow down the scope of protection for the claimed bed.

 

Friendly reminder

The example given above is a mere illustration of how broad or narrow a claim could be written. However, when writing the claims, always remember to show the technicality of the invention. Claims without any technical details might be rejected.

Moreover, all the terms used must be clear (not relative or vague) and consistent throughout the claims. Any terms that are not common must be well defined.

Drafting the claims is always the hardest part of the patent specification. Although it is possible to write it by yourself, it is always best to let the experts provide the patent specification on your behalf.  However, knowing the basic way of writing the claims is always a plus!

Afiqah Aisyah
Afiqah Aisyah
Afiqah Aisyah is an IP Consultant and patent agent. For three years, she has mostly been dealing with patent prosecution. She attained her undergraduate degree in Electrical and Electronic Engineering from Kobe University, and her Masters in Electronic Engineering with Business Management from King's College London.

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