Statement of Claims, which followed the description in a complete specification, is considered to be the most significant part of the patent. A claim refers to the expression of technical facts in legal terms to define the invention’s scope sought to be protected under patent law. The objective of patent claims is to clearly and concisely define the invention’s scope to ensure that others are informed about the extent of protection and comply with the monopoly rights being granted. What is not claimed in the patent claims becomes open to public use, notwithstanding its disclosure in the description. Therefore, clarity and conciseness are mandates of patent claim drafting.
Lack of clarity and conciseness of claims is one of the substantive grounds for rejection of a patent application by the Patent Office. In Anup Engineering Ltd. v Bharat Heavy Electricals Ltd., the opponents objected to an application for a grant of a patent for an apparatus for producing metallic bellows on the grounds of ‘unfair description.’ As the complete specification did not clearly describe the invention, the ground for opposition was upheld. It is pertinent to note that each claim is evaluated on its own merit. So, where an objection is received in respect of one of the claims, there is no effect on the rest of the claims’ validity.
Points to be kept in mind while drafting patent claims
Since the claims that define the legal protection received by the grant of a patent, drafting clear and concise patent claims is of utmost importance. The following must be taken into consideration while drafting patent claims:
● As per standard practice, claims must be in a single sentence and clearly worded.
● For claims to be clear, they must be specific and not be vague or hypothetical. A claim must be clear in the sense that it should not cause the reader to speculate about the scope of the claim. For example, if the words like “thin,” “strong,” “a major part,” “such as,” “when required” or “any” is used, then it forces the reader to make a subjective judgment and not an objective observation unless such expression follows any definite values.
● For claims to be concise, they must be specific and succinct, i.e., they should not be repetitive and excessively wordy.
● Claims should have a precise and well-known meaning for a person skilled in the field.
● In furtherance of clarity and conciseness, the language and construction of claims must not be open to varied interpretations. For example, “A stool comprising a seat and attached legs made of wood” can be interpreted to mean that the seat and legs are both made of wood, or only the legs are made of wood.
● The subject-matter of the patent must not be defined in terms of its objective, where the subject-matter can be defined in better terms.
● Claims must clearly and concisely cover the inventive elements of the invention to place the invention properly.
Amendment of Claims
Section 59 of the Patent Act provides that an amendment can be carried for the following purposes-
● to limit the scope of the claim through a disclaimer;
● to correct an obvious error; or
● to add an explanation or description that explains the claim better.
Therefore, to comply with the mandates of clear and concise claims, claims can also be amended to clarify the meaning of a claim or substitute a term used with a different one that narrows down the claim’s scope and makes it more concise.