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Claims of a Patent Application

The claims of a patent application define the metes and bounds of the invention, i.e., they express the breadth and scope of the invention.

Each claim is a single sentence, but can be any length.

Claims contain words that are carefully selected to encompass the broadest coverage of patent protection possible that is supported by the description of the invention, including the brief and detailed description of the invention, the drawings and the abstract.

Independent claims can contain a preamble that is placed at the beginning of the claim, describing generally the application or setting of the remaining described features. Claims contain a recitation (including the preamble) that contains several descriptive words identifying features of the invention. In "method" claims, the descriptive words include present tense directive verbs or third person verbs, typically "ing" verb forms, but can include conditional past tense verbs, such as found in "whereby" or "such that" clauses. The "ing" verb forms can be considered to be gerunds (i.e., noun-verbs) if the method step recitation is intended to be regarded as a specified process step procedure or subprocedure rather than a series of actions taken.

Modal verbs, such as "should", "would", "could" are occasionally found in claim recitations, but really have no proper place in claims. The reason is that a claim must describe a process (or other statutory category) that is fully supported by the disclosure, not an "intended" result or action or feature. Nevertheless, in some situtions, such as decribing chance occurrences in the invention, a modal can be necessary to describe the success of the inventive practice or system.

Features are introduced in a claim either preceded by an indefinite article ("a" or "an") or without an article. Features that are recited more than once require either a definite article ("the") or the word "said". When a patent application contains claim recitations that identify a feature using "the" or "said" without first defining the feature, are subject to a rejection by the patent examiner stating that the undefined feature "lacks antedent basis in the claim", under 35USC112, second paragraph.

In crowded arts (i.e., in technical art areas in which patents are issued for detailed refinements of previously issued patents), the most important portion of the claim is the "whereby" or "such that" clause. These clauses, that begin with either "whereby" or "such that", define a relationship among the features and/or the behavior of a system. When these clauses are placed at the end of the claim, they define the detailed inventive relationship or system behavior.

Depending upon the statutory class of the invention, the descriptive words and clauses can describe objects (apparatus, devices), behavior (method), characteristics and chemical components (composition), etc.

The application writer (if different from the inventor) must use descriptive words and clauses that provide the broadest possible interpretation of the invention. However, unduly broad recitations in issued patents that lack adequate support in the disclosure (i.e., the inventive description, drawings and abstract), can be challenged. Therefore, it is important that the application writer match the breadth of the claims with the disclosure.