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In most jurisdictions, a patent is a right to exclude others from making,
using, importing, selling or offering for sale the subject matter defined by the
claims when the claim is for a thing (apparatus, composition of matter, system,
etc.). If a claim is for a method, the right to exclude would be to exclude any
single party from carrying out all the steps of the claim. In order to exclude
someone from using a patented invention, the patent owner, or patentee, needs to
demonstrate in a court proceeding that what the other person is using falls
within the scope of a claim of the patent; therefore, it is more valuable to
obtain claims that include the minimal set of limitations that differentiate an
invention over what came before (i.e., the so-called prior art). But the fewer
the limitations in a claim, the more likely it is that the claim will cover, or
"read on," what came before and be rejected during examination or found to be
invalid at a later time for lack of novelty or obviousness.
Under the European Patent Convention (EPC), a claim must define the matter for which the protection is sought in terms of technical features.5 These technical features can be either structural (e.g. a nail, a rivet) or functional (e.g. fastening means).6
Regarding the structure of a claim, under the European Patent Convention, what is called the "preamble" is different from the meaning the "preamble" has under U.S. patent law. In an independent claim in Europe, the preamble is everything which precedes the expression "characterized in that" or "characterized by" in a claim written according to the so-called "two-part form", and therefore everything which is regarded as known in combination within one prior art document, namely the closest prior art document.7 For this reason, in Europe, the preamble of a claim is sometimes also called "pre-characterizing portion".
The claims often use precise language. Certain words commonly used in claims have specific legal meanings determined by one or more court decisions. These meanings may be different from common usage. For instance, the word "comprises", when used in the claims of a United States patent, means "consists at least of". By contrast, the word "consists" means "consists only of", which will lead to a very different scope of protection.
Furthermore, in U.S. patent practice at least, inventors may "act as their own lexicographer" in a patent application. That means that an inventor may give a common word or phrase a meaning that is very specific and different from the normal definition of said word or phrase. Thus a claim must be interpreted in light of the definitions provided in the specification of a patent. The specification of a patent is a written description of how to make and use the invention (see also: sufficiency of disclosure). In U.S. law, a claim is interpreted in a Markman hearing. The Public Patent Foundation has constructed Free Claim Construction Dictionaries.
The expressions "in one embodiment", "in a preferred embodiment", "in a particular embodiment", "in an advantageous embodiment" or the like often appear in the description of patent applications and are used to introduce a particular implementation or method of carrying out the invention.12 These various embodiments may or may not each be claimed with specificity. They might serve as multiple examples of a more general "genus" that is claimed. In some cases the examiner might declare that what the applicant presented as variations of one invention are actually separate invention that need to be examined individually. Download