Patent Claim

The word claim comes from the old French word “clamer” which means to call or claim. Under the from Latin word “clamare” it translates to shout or proclaim.

In the context of patents, a claim refers to the specific legal description of the invention that defines the scope of the patent protection. A patent claim is essentially a description of the technical aspects of an invention that the applicant wishes to protect. It is crucial because it specifies the exclusive rights granted to the patent holder.

Official Definition of 'Claim'

In India, the Patents Act, 1970, governs patent claims. According to Section 10(4)(c) of the Act, every complete specification must end with a patent claim or claims that define the scope of the invention for which protection is claimed.

'Claim' as defined in legislation(s)

Section 10(4)(c)[2] of the Patents Act, 1970 states that every complete specification must "end with a claim or claims defining the scope of the invention for which protection is claimed."

Rule 13(3)[3] of the Patents Rules, 2003 mandates that the claims should be clear, concise, and supported by the description.

Legal provision(s) relating to 'Claim'

Section 10(4)[4] of the Patents Act, 1970 highlights that the claims must sufficiently define the invention to enable a person skilled in the art to understand and implement the invention.

Section 48[5] of the Patents Act, 1970 highlights the rights of a patentee, indicating that the scope of the patent holder's protection is determined by the language used in the claims.

Section 10 (5)[6] Patents Act 1970:- (5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

'Claim' as defined in international instrument(s):-

PCT Framework: Under the Patent Cooperation Treaty (PCT), claims are "numbered statements defining the invention" and must avoid references to descriptions/drawings (Omnibus Claims). They must use technical/functional features to delineate scope[7].

Deviations from the Indian Conceptualization of the Term

India's Patents Act, 1970 (Section 10(5)) requires claims to relate to a single invention or a group of inventions forming a "single inventive concept". They must be "clear, succinct, and fairly based" on the specification[8]. Hybrid claims (product + process) are restricted unless they are structured with functional limitations[9].

Deviations Regarding the Definitions

• Hybrid Claims: India generally prohibits combining product and process claims in a single statement unless framed as functional claims, unlike the U.S. and Europe[10].
• Scope Interpretation: Indian courts sometimes adopt a purposive approach, allowing amendments that expand the scope beyond the literal wording if supported by the description[11].
• Functional Language: While the U.S. permits broader functional claims, India requires structural limitations to avoid indefiniteness[12].

Appearance of the Term in Databases

• Database Maintained by the Government: The Indian Patent Office database follows local statutory requirements, including Section 10(5) for claim drafting and restrictions on hybrid claims[13].
• Other Databases:
  • Espacenet (EPO): Classifies claims as product, process, or product-by-process, with hierarchical dependency trees.[14]
  • WIPO PCT Database: Reflects PCT standards, emphasizing technical clarity and prohibitions on Omnibus Claims[15]

'Term' as defined in case law(s)

The Delhi High Court in F. Hoffmann-La Roche Ltd. & Anr. Petitioners v. Cipla Ltd[16] held as follows:- “Claims must be read as ordinary English sentences without incorporating into them extracts from body of specification or changing their meaning by reference to the language used in the body of the specification”

The case further laid out the various principles of claim construction:

·        Claims define the protection scope of a patent under Section 10(4)(c) of the Patents Act, 1970.

·        No limit on the number of claims, but an additional fee applies after ten claims (as per the 1st Schedule of the Act).

·        Claims can be independent or dependent.

·        Claims follow an inverted pyramid structure, with the broadest at the top and the narrowest at the bottom.

·        Courts use national patent laws and claim drafting rules for interpretation.

·        Claims must be a single sentence defining an invention or inventive concept.

·        Various claims may define different embodiments of the same inventive concept.

·        The first claim is the parent claim, and subsequent ones are subsidiary.

·        If subsidiary claims introduce a new inventive concept, a divisional application is required.

·        Claims can cover products, substances, apparatus, methods, formulations, dosage regimes, and, in some cases, methods of use or treatment.

·        Dependent claims reference the parent claim while adding further limitations or restrictions.

·        Independent claims stand alone with fewer limitations, covering a broader scope.

·        Each claim must be invalidated separately as some claims may remain valid even if others are invalid.

·        U.S. courts conduct 'Markman hearings' to define claim scope, while Indian courts adopt a similar interpretative approach.

The same court also cited the case of Edward H. Phillips v. AWH Corporation[17] wherein it was held that:- “claims have to be given their ordinary and general meaning and it would be unjust to the public, as well as would be an evasion of the law, to construe a claim in a manner different from plain import of the terms and thus ordinary and customary meaning of the claim term is the meaning of the term to a Person of Ordinary Skill in the Art as of effective date of filing of the patent application. In case of any doubt as to what a claim means, resort can be had to the specification which will aid in solving or ascertaining the true intent and meaning of the language employed in the claims and for which the court can consider patent prosecution history in order to understand as to how the inventor or the patent examiner understood the invention”

Types of Patent Claims

Patent claims have various types, based on their style of drafting, invention type, structure and invention field:

1. Claims Based on Drafting[18]

Independent Claims: These are primary claims that stand alone and define the novel features of an invention. Under this type of patent claim the patent application has to include at least one independent claim.

Dependent Claims: Under this type of claim the claims depend on one or more independent claims and narrow down the scope of protection by adding additional limitations.

Omnibus Claims: These claims refer to drawings or descriptions but are not commonly allowed in many jurisdictions.

2. Claims Based on Invention Type[19]

Process Claims: These types of claims are used generally for processes a yield desired results.

Product Claims: Used for inventions that are products,for example mixtures, food, or alloys

Software Claims: Utilize apparatus or method claims to cover software inventions, often requiring a connection to a physical implementation

3. Claims Based on Invention Field[20][21]

Jepson Claims: Used for inventions that improve existing technology, highlighting the novel features over prior art.

Markush Claims: Common in chemical and biotech inventions, allowing selection from a group of features with similar characteristics.

Swiss-type Claims: Used for new medicinal uses of known compounds, but not allowed in India.

4. Claims Based on Structure[22]

Composition Claims: Used for inventions related to the chemical nature of components or materials.

Apparatus Claims: Describe the physical components of an invention and how they interact.

Mean-plus-function Claims: Describe elements in terms of their function rather than precise design.

Regional Variations

• India: Does not allow Swiss-type claims or method of treatment claims for medical uses.[23]
• Australia and New Zealand: Allow method of treatment claims but have restrictions on certain types of medical use claims.[24][25]
• Europe: Does not allow Europe-style claims for second medical uses.[26][27][28]

International Instruments –

1. Paris Convention –

Art. 4 (H) of the convention indirectly refers to the Patent Claims stating that “— Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.”[29]

2. Patent Cooperation Treaty (1970) –

Art. 6 of the PCT provides that “The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.”[30]

3. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (1994) –

TRIPS does not specifically deal with Patent Claims however, it has been interpreted within the ambit of Art. 27 and Art. 29 of the agreement which talk about Patentable Subject Matter and Conditions on Patent Applicants.[31]

4. European Patent Convention (1973)

Art. 84 pf the EPC states that “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”[32] Further, Rule 43 of EPC Implementing Regulations states the requirements that the claim must be supported with as well as the form and content of the claim.[33]

Jurisdiction	Claim Interpretation	Functional Claims (Means-Plus-Function)	Patentability Restrictions
United States	Broad interpretation during prosecution, narrower in litigation	Allowed but limited to disclosed structure	Business methods & abstract ideas restricted
India	Strict textual interpretation, claims must be fully supported	Not allowed in general	Restricts pharma patents; software patents require hardware
United Kingdom	Purposive construction	Not explicitly recognized, follows EPO	Aligns with EPO but slightly more flexible
China	Strict textual interpretation, minimal flexibility	Not allowed	Business methods & software patents heavily restricted
Japan	Literal claim interpretation, strict clarity requirements	Not allowed	Software and business methods restricted unless technical contribution is shown

International Experiences -

way ahead

FNOL (First Notice Of Loss) is especially prone to a lack of structure which can lead to delays in claim processing and bad customer outcomes.

There are mainly three members, including two professionals who face challenges with patent claim construction:

a)     Patent holder/ Patent inventor

b)     Patent Attorney/ Patent Agent

c)     Jurists/Practitioner

The significance of confidentiality while construing patent claims cannot be neglected. The fact is that yet an idea is not patented, as this step of patent claim construction is just before the last step of a grant of patent. Patent holders may get many doubts while construing a patent and they may get confused at this stage, which may make them take assistance from others by disclosing all about their patent product, which is not yet public. If the patent holder does not effectively preserve the confidentiality of his or her invention at this point of claim construction, he or she runs the risk of the invention being leaked to competitors who may obtain a patent before him or her.

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[1] Formal Assertion, Law Academic, available at https://law.en-academic.com/34584/formal_assertion

[2] The Patents Act, 1970 (as amended till March 11, 2015), available at https://ipindia.gov.in/writereaddata/portal/ipoact/1_31_1_patent-act-1970-11march2015.pdf.

[3] The Patents Rules, 2003 (Updated till June 23, 2017), available at https://ipindia.gov.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf.

[4] The Patents Act, 1970 (as amended till March 11, 2015), supra note 2.

[5] Ibid.

[6] Ibid.

[7] Patent Cooperation Treaty (PCT) FAQs, World Intellectual Property Organization (WIPO), available at https://www.wipo.int/pct/en/faqs/faqs.html.

[8] Multiple Independent Claims Under Indian Patent System, Mondaq, available at https://www.mondaq.com/india/patent/1115216/multiple-independent-claims-under-indian-patent-system.

[9] Changing Trends in Claims Category, LexOrbis, available at https://www.lexorbis.com/changing-trends-in-claims-category/.

[10] Ibid.

[11] IP Courts Revisiting the Scope of Claims Amendment, AsiaLaw, available at https://www.asialaw.com/NewsAndAnalysis/ip-courts-revisiting-the-scope-of-claims-amendment/Index/1860.

[12] Supra note 9.

[13] Patent Search, India Filings, available at https://www.indiafilings.com/learn/patent-search/.

[14] Espacenet Help - Claims, available at https://is.espacenet.com/help?locale=en_IS&method=handleHelpTopic&topic=claims.

[15] Supra note 7.

[16] 2015 SCC ONLINE DEL 13619.

[17] 415 F.3d 1303.

[18] Patent Cooperation Treaty (PCT), World Intellectual Property Organization (WIPO), available at https://www.wipo.int/treaties/en/registration/pct/.

[19] Everything to Know About Patent Claims – Functions, Parts, and Types, Sagacious Research, available at https://sagaciousresearch.com/blog/everything-to-know-about-patent-claims-functions-parts-and-types/.

[20]  Supra note 18.

[21] Patent Claims: Structure and Types, Intepat, available at https://www.intepat.com/blog/patent-claims-structure-and-types-of-patent-claims/.

[22]  Ibid.

[23] Indian Patents Law Indirectly Recognizes Swiss-Type Claims, Mondaq, available at https://www.mondaq.com/india/federal-law/30975/indian-patents-law-indirectly-recognizes-swiss-type-claims

[24] Methods of Medical Treatment, Australian Law Reform Commission, available at https://www.alrc.gov.au/publication/genes-and-ingenuity-gene-patenting-and-human-health-alrc-report-99/7-exclusions-from-patentability/methods-of-medical-treatment/.

[25] Patentability of Methods of Medical Treatment in Australia, Henry Hughes IP, available at https://www.henryhughes.com/site/news/patentability-of-methods-of-medical-treatment-in-a.aspx.

[26] Infringement of Second Medical Use Claims in Europe, Finnegan, available at https://www.finnegan.com/en/insights/articles/infringement-of-second-medical-use-claims-in-europe.html.

[27] Patents: Second Medical Use Cases at the EPO, Kilburn & Strode, available at https://www.kilburnstrode.com/knowledge/covid-19/patents-second-medical-use-cases-at-the-epo.

[28] Patent Protection for Methods for Treatment in Europe and the US, LaVoix, available at https://www.lavoix.eu/patent-protection-for-methods-for-treatment-in-europe-and-the-us/?lang=en.

[29] Art. 4 (H), Paris Convention for the Protection of Industrial Property (as amended in 1979). WIPO Lex

[30] Art. 6, Patent Cooperation Treaty (As modified in 2001). WIPO Lex

[31] Art. 27 and 29, Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). WIPO Lex

[32] Art. 84, Pg 144, The European Patent Convention (November 2020), European Patent Convention

[33] Rule 43, Pg 32, Implementing Regulations to the Convention on the Grant of European Patents (November 2022), Implementing Regulations to the Convention on the Grant of European Patents