Claims are the structured description of the unique elements of a patented technology. The claims in a patent application are the specific pieces that are examined and eventually approved by a patent examiner to define the scope of an invention. Thus, the claims of a patent, rather than the description, serve the practical purpose of defining the elements that are protected. This also means that the claims are the pieces that are targeted in invalidity searches, to prove that they existed previously.
In practice, the patent claims enable the practitioners in the field of the invention to determine whether or not a product or process can be considered to fall under the invention protected by a patent. The scope of the granted claims may be as broad as those of the patent claims initially submitted by the patent applicant for examination, or they could be substantially restricted in scope or number by the examiner based on the available prior art.
Claims in AOP Studies
In many cases, AOP Studies focus on a particular claim or set of claims in the Study patent that are of significant interest. This is because the issues of Invalidity and Patentability are largely based on whether the claims in the patent or application are indeed novel and non-obvious. The particular claim then becomes the primary basis for the choice of initial keywords used in a search.
For your submission to serve as prior art for a given Study patent, the reference needs to disclose as many of the features in the claims of the Study patent as possible. For example, consider that the following claim (1) is the primary focus of the Study:
1. A composition for extending the durability of car paint comprising:
– low-molecular weight polyethylene polymers
– ultraviolet light stabilizer
– titanium oxide nanoparticles
In this case, the winning reference would describe the claim and all four of the additional features, or “elements.” If your reference only has one or two of the elements, it may still be useful, but it is less likely to win the Study. Also consider that the reference cannot simply contain all of these keywords. In this example, the keywords must fit together to represent a car paint that consists of each feature together.
Independent vs. Dependent Claims
Independent claims are solitary claims that do not need any further explanation, whereas dependent claims include the details of the corresponding independent claim. Independent claims represent the foundation of the technology, while dependent claims provide additional detail about the features and aspects that make the basic technology unique and different from anything else.
The example in the above section represents an independent claim. The claim describes a technology that improves car paint, and it defines four specific features. This full claim can stand on its own without any necessary support.
Claim 2 below is an example of a dependent claim, which depends on claim 1 above:
2. A claim according to claim 1, wherein the ultraviolet light stabilizers comprise nitrogen-containing bicyclic rings.
By definition, the dependent claim contains all of the features and details of the independent claim on which it depends. Thus, claim 2 includes all the four features of claim 1, plus the additional pieces described in claim 2. The main difference is that claim 2 is narrower than claim 1 based on those additional features. Thus, if an AOP Study points to a dependent claim, it is important to remember that all of the features in the independent claim also apply to your search.