Claims are the most crucial part of a patent document. They define the scope of protection awarded to a patentee upon grant of the patent. In other words claim define the boundary of the invention which cannot be passed by any third party without consent of the patentee.
Broadly two types of claims are included in a claim set that accompanies a complete specification.
They are 1) Independent claims and 2) Dependent claims.
Independent claims:
An independent claim is a stand alone claim that contains all essential elements necessary to define an invention. It does not make reference to any other claim.
Dependent claims:
A dependent claim is a claim that contains reference to another claim, and thereby includes all features of the referred claim. These claims are used to further describe the invention and are narrower in scope compared to the dependent claims.
There are also other kinds of claim classification.
Example: Jepson Claims, Omnibus claims etc.
Jepson claims:
In these claims, a statement is made in the preamble relating to state of the prior art and this claim is an improvement to the prior art.
Omnibus claims:
Omnibus claims are said to be claims which refer to the description or drawing without providing any specific limitations.
Furthermore, another classification of claim types is according to the subject matter of the claims. According to WIPO there are nine specific claim types. Some of the main types are:
- Apparatus Claims.
- Method Claims
- "Use" Claims
- Composition Claims
- Product-by-process Claims
- Software claims 1
Apparatus claims are used to define and protect an apparatus while the method claims mention a sequence of steps which form a part of a product or process. A composition claim is used to seek protection for a chemical composition. Product-by-process claims are used to define a process of manufacture. Software claims are used to describe a software invention.
A claim ordinarily contains three parts2. They are:
- The Preamble
- Transitional Phase and
- The Body
The Preamble is the part of the claim that mentions the category of the invention.
Ex: A method or an apparatus or a composition etc.
Transitional Phase is the part of the claim that transitions to the body of the claim.
Ex: "including", "comprising", "consisting of" etc.
Body is the main part of the claim which mentions the different elements and the scope of the claim. It also explains how the different elements exist in relation with one another3. This is the most crucial part of the claim which must contain the patent essentials like novelty, inventive step etc.
In the Indian scenario, Section 10 of the Indian Patents Act, 1970 deals with the contents of specification to be filed in a patent application.
Section 10(4)(c) and Section 10(5) deal with claims in a complete specification.
Section 10(4)(c) states that,
"Every complete specification shall-.c) end with a claim or claims defining the scope of the invention for which protection is claimed."4
Section 10(5) states that,
"The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification."5
Multiple claims in a patent application are usually present to define and describe the invention sufficiently and clearly with a limited scope.
Multiple independent claims:
Majority of patent applications filed in India have only one independent claim (in each category of product and process), and the other are dependent claims which refer to the independent claim. But, to effectively protect the scope of the subject matter and be able to enforce claims against various infringing parties, multiple independent claims are required in some instances. The multiple independent claims relate to a single invention and a single inventive concept but pertain to different aspects of the invention.6
Example-1:
In case, in an invention related to a plug and socket assembly, there is a single independent claim which relates to a plug and defines the socket therein, then such claim is of limited use if manufacturer of the plug and socket are different. It is so because while the socket has been disclosed, it has not been claimed in the claims. A similar situation can emerge in a client-server system where separate independent claims are required to be written with respect to the client and the server. This would make the claims enforceable and reduce chances of workaround being created.
Example-2:
If the invention relates to a mould for casting an article, then different aspects of the present invention relates to a method of making the mould and the process of casting the article.
If only independent claims relating to process of the caste are mentioned, complete protection to the invention will not be achieved.
Hence, multiple independent claims are used to define different aspects of the invention and also offer maximum protection to the inventor.
In Chapter 09.03.08 of the Manual of Patent Office Practice and Procedure, the following has been mentioned w.r.t multiple independent claims,
"Independent claims of different categories may relate to a single inventive concept and may be allowed in one application, when they are linked to form a single inventive concept and are supported by the description".7
Hence, under Indian patent law multiple independent claims in a single application should be allowed if they relate to a single inventive concept.8
But in practice, the Indian Patent Law has developed, much in lines with the EPO, where objections are raised by the Controllers if multiple independent claims are present in the application.
During examinations, objections are generally raised based on the Section 10(4)(c) and Rule 13(4).
The objection is usually stated as, "Multiple independent claims with overlapping scope is not allowed" or "Multiple dependent claims are not allowed as it makes the scope of subject matter vague and indefinite."
In this regard, generally, Attorneys have argued that the presence of multiple independent claims themselves does not make the scope of an invention unclear or non-compliant with Section 10 requirement. Attorneys also argue that in many cases with multiple independent claims, the scope is well defined and also limited. Independent claims are used to give maximum protection to the inventors in terms of enforceability of claims without leading to any uncertainty of scope. Some also argue that in Indian law, there is no specific limit to the number of independent or dependent claims.
It may be noted that in EPO, only one independent claim is allowed for each category (product and, process) in a patent application. There are exceptions to this rule in case of plurality of interrelated products, different uses of a product or apparatus etc.9 It is this EP practice that is becoming more accepted in Indian patent office despite no specific requirement being present in the Indian Patent Act or Rules.
In this regard, the Indian Patent Office also published draft guidelines for examination of patents10 which stated that "Further independent claims are only justified where the inventive concept covers more than one category, e.g. apparatus, process, product, complementary versions within one category constituting unity of invention, e.g. plug and socket, transmitter and receiver, which work only together" which is now becoming an accepted practice. However, these guidelines have yet to be fully and formally accepted in the Indian Patent Law.
In common parlance, Controllers in the Indian Patent Office now tend to allow multiple independent claims in one category when these claims relate to a complementary subject matter such as transmitter-receiver based invention where one product and process set may be allowed from the perspective of the transmitter and other from the perspective of a receiver.
However, the Indian law gives a great amount of discretion to Controllers in terms of determination of clarity, scope etc. which is why a clear practice is yet to evolve across patent office jurisdictions in this regard. The practice is still seen to be varying at the Indian Patent Office with few Controllers allowing patent irrespective of any number of multiple independent claims being present, while some at the other extreme allow only a single independent claim in a claim set.
An example of allowed multiple independent claims in a patent application in India is provided below:
Patent No: 328744
Patentee: Samsung Electronics Co., Ltd.
Title: TRANSMITTING APPARATUS AND INTERLEAVING METHOD THEREOF
Independent claims 1 and 3 of the claim set relate to a transmitting apparatus and method, whereas Independent claims 5 and 7 related to a receiving apparatus and method. Originally, an objection was raised by the Controller regarding presence of multiple independent claims but finally the patent was allowed grant with multiple independent claims being present in the claim set since the claims are related to complementary subject matter.
Slowly but surely the prospect of allowance of multiple independent claims has improved in the Indian patent office, and now at least multiple independent claims with complementary subject matter are often being allowed by the Indian Controllers.
What must be kept in mind though is that no matter the number of claims, under Indian Patent law, all claims of an application must relate to one single inventive concept. If the Controller feels that due to presence of multiple independent claims, there is a lack of unity of the subject matter they may raise an objection under Section 16 of the Indian Patents Act as well, requiring that a divisional application be filed for a set of independent claims and claims dependent thereon.
In conclusion, any lacunae in protection of the invention will give the competitors a chance to exploit thereby creating a detriment to the inventor to exploit and commercialize his/her invention. Therefore, all the aspects of law, procedure and practice discussed above must be considered when drafting and prosecuting patent applications in India.
The usage of multiple independent claims is inevitable in certain inventions to provide necessary protection to the invention. These claims will continue to be used to provide maximum protection to the invention which is the result of the hard work of the inventors.
Footnotes
1. WIPO, Pg No:37 "Patent Claim Format and Types of Claims". Accessed at https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_phl_16/wipo_ip_phl_16_t5.pdf
2. WIPO, Pg No:3 "Patent Claim Format and Types of Claims". Accessed at https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_phl_16/wipo_ip_phl_16_t5.pdf .
3. Ibid.
4. The Patents Act, 1970, India.
5. Ibid.
6. Chapter 09.03.08 Manual of Patent Office Practice and Procedure, Indian Patent Office. Accessed at https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Manual_for_Patent_Office_Practice_and_Procedure_.pdf .
7. Manual of Patent Office Practice and Procedure, Indian Patent Office. Accessed at https://ipindia.gov.in/writereaddata/Portal/Images/pdf/Manual_for_Patent_Office_Practice_and_Procedure_.pdf .
8. Ibid.
9. Rule 43(2) of European Patent Convention. Accessed at: https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_3_2.htm#:~:text=According%20to%20Rule%2043(2,independent%20claim%20in%20each%20category.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
