Earlier we had dealt with a broader classification of patent claims. It was largely based on dependency where Independent and dependent claims were dealt with. Various schools of thought have classified patent claims based on numerous criteria. The subject matter based classification had been introduced to study the ambit of improvisation and innovation through a meticulous analysis of the patent claims.
Claims drafting though a techno legal document is an art. The drafting involves lot of cranial activity and is highly subjective. It varies from one invention to another and also depends a lot on the attorneys as to how would they like to furnish the best of the invention. It can be iterated that good claim frame a strong base for awarding a patent.
The classification of claims differs as per the intellectual tradition followed across the globe. We would be taking up the classification in general and would not be specific to one particular IP school.
Product and Process Claims:
A Product, apparatus or article to manufacture claims: Deals with a device or a system and its active components. The part of the article or an article as in whole which the inventor finds unique, industrial applicable and non-obvious can be claimed. The product claims could be of a spare part or a chemical component used in pharmaceutical sector for manufacturing drugs.
A process claim or a method claim: It is referred to claiming the unique process involved in developing a product. The process involved in the manufacturing of an article which the inventor finds unique, industrial applicable and non-obvious can be claimed.
As per Section 3(m) of the Indian patents act, 1970 A mere scheme or rule or method of performing mental act or method of playing game is not an invention.
For example: method of playing chess or teaching cannot be claimed.
Thus there lies a clear distinction of industrially applicable and non- industrially applicable product and processes which are claimed.
A Product by process claim:
Even the product by process claims has their patentability based on the product claims but, they need to be sufficiently supported by process claims. The onus to prove the product by process claims lies with the inventor who needs to sufficiently provide evidence that the product under consideration can be manufactured through the claimed process. If the process is changed then it would result in a different product. In short the product is explicitly defined by the process involved in its making.
Software application based claims are normally classified as system claims and method claims. These claims are similar to product by process claims where the software application is claimed along with the method of working. This style is followed as in most of the jurisdictions software “per se” cannot be patented. It needs to be backed with the hardware application details too. In the United States a claim to a computer program is referred to as Beauregard claim which emphasizes on software being encoded in a computer readable media.
Jepson Claims are the ones where the preamble of the claim hints towards the prior art and the body states the improvement of the invention over the prior art. The phrase used in Jepson claims is normally: “wherein the improvement comprises”. Jepson claims are drafted when a clear cut demarcation between the prior art and existing invention is sought for. Jepson claims help when the invention is a small but significant improvement over the prior art. Jepson claims are considered to be easily comprehendible during litigation.
An example of Jepson claim: US4, 892,244;
In a staple cartridge insertable within a surgical stapler and containing staples and comprising an elongated body including one or more longitudinal slots for slidably receiving one or more longitudinal pusher bars comprising a firing mechanism of said surgical stapler, and a plurality of drivers engageable by said pusher bars for ejecting the staples from the cartridge, said staple cartridge releasably fastened to a said surgical stapler, the improvement comprising a lockout mechanism connected to said longitudinal slots for preventing said pusher bars from passing more than one time through said longitudinal slots.
Markush Claims: It involves a claim written to cover one amongst the many elements which are a possibility in an invention. The alternatives have to be of similar property and should exhibit similar activity. In case of a chemical compound the alternatives must evolve from the same mother structure. For example; a collection of chemicals with similar structures. Similarly a group of sensors in case of an electronic based software application may be utilized while framing a Markush claim.
An example could be, a compound comprising of inert gases selected from a group of helium, neon, argon and krypton. The Markush claims diminish the requirement of adding up more claims thus reducing the costs.
Some schools do follow claiming things not as a part of invention but may be deemed to be related. As a norm such a practice is not considered healthy for the specification.
The claims constructions in design patents normally are just a single claim. Since the design patents deal with the aesthetics and the specification is inclusive of drawings. In case of articles being too distinct then it is mandatory for the applicant to file the design patent as two applications and each application having a single claim supported by relevant drawings.
The claims for any kind of invention should not be very narrow or very broad. They should be drafted in a way that a person skilled in the art should be able to decipher it. Also, it must be taken care that too much about the invention should not be revealed. Also, too little information about the invention may attract loads of infringement charges. The narrow claims get easily examined and may get patented without many hassles. But, the chances of post grant opposition is brighter. On the contrary the broader claims involve greater risk of rejection as the revelation with respect to the invention is broader and more. But, if granted a broader claim has less chance of being challenged. Terminologies like “comprising of”, “consisting of”, and “consisting essentially of” must be used judiciously as per the requirement.