Claims:
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Rules concerning claims:
- They should be placed at the end of the specification.
- If more than 1, they need to be separated by a line of indentation.
- They should be arranged in order of scope so that the first claim is the least restrictive (broadest).
- Claims of like species should be grouped together.
- Process and product claims need to be separately grouped.
- Any measurements should be in the metric system, followed by English units.
- They may contain tables if tables are necessary to conform to specification guidelines.
Grammatical rules:
- Claims should begin with “I (or we) claim” or “The invention claimed is”.
- A claim is divided by a colon (:) which generally describes the things or steps.
- Either a semicolon or comma separates each paragraph.
- The last step should have an “and” after the semicolon (; and).
- Each claim should begin with a capital and end with a period (only the first word in a claim is capitalized.
Dependent claims:
A series of singular dependent claims is allowed where a dependent claim refers to a preceding claim, which in turn, refers to another preceding claim.
Rules governing dependent claims:
- A dependent claim must further limit the subject matter of a previous claim.
- There is not a minimum or maximum number of dependent claims.
- A dependent claim may refer back to any preceding claim; there may be a string of these.
- A claim depending from a dependent claim should not be separated from any claim which does not also depend (directly or indirectly), from the dependent claim.
- Example: 2. The product of claim 1 in which...
Since independent claims are the broadest claims of an application and dependent claims depend on independent claims, the broadening of a dependent claim cannot broaden the scope of the invention.
A lesser burden of proof may be required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima facie case of obviousness when the product is claimed in the conventional fashion.
Multiple dependent claims:
A series of dependent claims that refer back in the alternative form to more than one proceeding independent or dependent claim.
Rules governing multiple dependent claims:
- They may only refer to one set of claims.
- They cannot depend on another multiple dependent claim.
- They cannot depend on more than one previous claim.
- They may not serve as a basis for any other multiple dependent claim, either directly or indirectly.
- They will not contain all the limitations of all the alternate claims to which they refer.
- The limitations or elements of each claim that is incorporated by reference with a multiple dependent claim must be considered separately.
- They must be considered in the same manner as a plurality of single dependent claims.
- Restriction may be required between the embodiments of a multiple dependent claim.
- A multiple dependent claim can contain in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration.
Markush claims:
- An acceptable form of alternative expression.
- Markush claims always contain the phrase; “consisting of” and the conjunctive “and”.
- They never contain “or”.
- Markush claims always contain the phrase; “consisting of” and the conjunctive “and”.
- Example: R is selected from the group consisting of A, B, C and D.
- Two common phrases include:
- “Chosen from the group consisting of” and “chosen from the group consisting essentially of”.
