The patent laws require that you, as the applicant, point out and distinctly claim the subject matter of your invention. The portion of this application is called the claims and is the most important part of the patent application. Your invention could have the most thorough and complete description but it still might not matter if your claims are not adequate.
If you don’t have a claim that covers a particular thing then you don’t own the right. This is known as the exclusive right and is granted to you in the claims. If your claims are too narrow, it will be too easy for others to get around your patent without infringement.
The statute that relates to the claims most directly is 35 U.S.C. 112. Paragraphs 2 through 6 relates specifically to the claims. This mainly states that a claim may be written in independent, or if the nature of the case admits, in dependent or multiple dependent form. A claim in dependent form shall contain a reference to a claim that was written about previously and then specify a further limitation. A claim in dependent form shall be construed to incorporate by reference all of the limitations of the claim to which it refers to. A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim that is previously set forth and then should specify a further limitation of the subject matter claimed.
Let’s say that you file an exceptionally detailed specification with good drawings and a representative set of claims but you fail to claim something that you later believe is of critical importance. Can that claim still be added? The answer is “Maybe.” Did you fairly describe what you want to add somewhere within the entirety of the patent application you originally filed? If yes, you can add the claim. If no, then you cannot add the claim.
Sometimes when you file a patent application, the subject is not shown in any drawing or described in the description, but may be claimed in the application as originally filed. IAs long as it is described somewhere you have the ability to rearrange the application. The claim or claims that were originally filed fulfill the requirement that the initial application be complete.
The specification, drawings and claims all play a role and work together to describe your invention thoroughly in the critical first patent application filing. The claims will ultimately define your exclusive rights granted by the United States Patent Office, and the specification should provide an understanding of the claims and the drawings so that the reader can follow along easily.
Since the patent claims are so critical, it is important to hire a patent attorney for assistance.
