An Austin Patent Attorney’s review of patent claims

What are patent claims?

Patent claims are the most important part of a utility patent application and they define the scope of protection granted by a granted patent application. In essence, the patented claims define the limits of what the patent does and does not cover. Any other product that includes every limitation within a patented claim will be found to infringe on the claim. Patent claims must also be written in a specific format, therefore it is recommended that you contact a patent attorney to assist you with filing a utility application with claims.

In the United States, a patent application will generally have three independent claims and seventeen dependent claims, for a total of twenty claims. The independent claims are the broadest claims and will encompass the most important subject matter. The dependent claims will include each limitation defined in an independent claims as well as additional limitations. If you are reviewing a patent application the claims will be the last section in the application.

When writing claims it is important to write the claims broadly so that simple design arounds cannot be performed. However, it is also important to write the claims with specificity so that they are not so broad that they only cover what is already known. For example, if the individual who invented recumbent bicycles desired obtain patent protection it would have been important to recite limitations in a claim that discuss the positioning of the seat, because a bicycle itself was already disclosed to the public.

Specifically, when patenting software, telecom, or mobile applications it is important to take into consider the following:

                1) Who are you desiring patent protection from,

                2) Joint infringement, and           

                3) In Re Bilski.

First, if you file an application for a mobile application patent it is important that the claims are drafted from the prospective of other companies that might create the same software for your application before the product is ever downloaded/used. This is because a company who creates the same application as yours might not actually be running the programs itself that create your application, and the application may only be used by your end-user customers. Therefore, it is important to write claims with elements that are “configured to” do something as they would be in an app store or shelf before they are actually used. The reasons claims should be drafted this way is because companies do not desire to sue the individuals who actually downloaded/use your mobile application or the infringing mobile application because if you sue your customers they will not be return customers. Thus, when drafting a utility application claims should be drafted in a fashion that other products will be infringing your protect “when they are on the shelf” even before being sold. So larger companies that have deeper pockets then your end users can be sued.

Second, it is important to the claims are drafted so only one party is performing all of the actions. This is because it is easier to sue one party than multiple parties, and also because it is easier to sue one larger company than a plurality of end-users. For example, if you are claiming a mobile application that includes communications between a mobile device and a server, you will want one independent claim drafted from the perspective of the back end server and another from the perspective of the mobile device, without any elements from the other.

Third, In Re Bilski was a case that essentially required software patents to be tied to a tangible device. Therefore when drafting software claims it is important to include an element such as “a processor” or “a memory.” Recent court cases have upheld that a claim including data being transferred over “a network” overcomes the Bilski requirement.  

If you are an individual seeking patent protection for a software/mobile application patent, I strongly recommend you contact a patent attorney who has prior experience writing patents in these fields.

By | 2012-12-11T16:52:21+00:00 October 18th, 2012|Blog, Patent Basics|Comments Off on An Austin Patent Attorney’s review of patent claims