What is a claim set made of?
How independent and dependent claims fit together, how a claim sentence is built, and what a first reading checks.
Publisher: patentagents.ai
Short answer
A claim set is the numbered list of claims in a patent application. It includes at least one independent claim and may also include dependent claims. Each dependent claim incorporates the limitations of a referenced claim and adds a further limitation.
What is an independent claim?
An independent claim stands on its own, with its own features and with no reference to another claim. Section 112 of title 35 lets a claim be written in independent form, or in dependent or multiple dependent form. A set can include more than one independent claim when the subject is stated in more than one form, such as a method and a device that carries out that method.
Read an independent claim from the opening, through the transition, to the features. The opening names the kind of subject, such as a method, a device, or a composition. Comprising permits additional unrecited elements. Consisting of generally excludes them from the claimed combination. Choose the transition for the intended claim scope, and use that same transition each time the list works the same way.
Keep each feature to something the source material describes. Remove a part the source set does not support, and add a part the description treats as necessary. Leave an open point unresolved rather than filling it with a guessed value.
How does a dependent claim work?
A dependent claim retains every limitation of the claim it references and adds a further limitation. It may introduce an additional component when that component is supported by the specification and clearly introduced in the claim.
On a first set, give each added feature its own dependent claim so each detail is easy to check. Combine details later when they always appear together. Number the claims in order, and point each reference at an earlier number that exists.
A multiple dependent claim refers to more than one earlier claim in the alternative only, and then specifies a further limitation. Section 112(e), 37 CFR 1.75, and MPEP 608.01(n) state that rule. An acceptable reference uses or, as in a machine according to claim 3 or claim 4. A reference that joins those claims with and falls outside that alternative form. Those same sources state that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim.
Why does each part keep one name?
37 CFR 1.75 requires the terms and phrases in the claims to find clear support or antecedent basis in the description, so a reader can find the meaning of a claim term there. Use one working term for each part in the claims and in that description. If the notes say gate and a comment says switch for the same part, choose one term and keep it. Record the other word as an alias in the source glossary.
An element is commonly introduced with 'a' or 'an.' Use 'the' to refer back to that element, including an element incorporated from a claim on which the claim depends.
Claim 1: A system comprising a processor. Claim 2: The system of claim 1, wherein the processor ...
Put a number, a size, or a mode into a claim when the source material contains it. Leave an open question on the open-point list until the source set records a value.
What does a first reading check?
A first reading checks the shape of the set before it polishes sentences. For each independent claim, confirm that it stands alone, that it uses the working terms, and that each feature points at something in the source set. For each dependent claim, confirm the number it cites, the added feature, and that the added feature still fits the earlier claim.
Then read the list as a list. Note which sentences stand alone, which sentences only narrow an earlier one, and which words were treated as settled. You will change sentences after that. The list is where those changes land. When you change a term, change it in every claim that uses it, and read the set once more for the old word. patentagents.ai can produce an editable first claim draft from a technical description and export that draft as a Word .docx file.
Claim set reading flow
- 1Read each independent claim on its own
- 2Read each dependent claim and the earlier claim it refers to
- 3Check that each part has one name
- 4Edit the set and read it again for the old word
Sources
Tradeoffs and limits
- One independent claim is easier to read and can leave a second arrangement in the description for a later independent claim.
- A separate dependent claim for each added feature is easier to check and can make the set longer than one combined claim.
- "Comprising" permits additional unrecited elements; "consisting of" generally excludes them from the claimed combination. Choose the transition for the intended claim scope, not merely because the description contains additional detail.
Next step
One link. Choosing it does not start a run.