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Specification includes claims only?

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mindlesslemming

Junior Member
What is the name of your state? WA

Hi,

Well I'm going to apply for a patent. I'm wondering if what is in the specification must be included in the claims verbatim.

For example do I have to list the parts of a very detailed assembly for a machine in the claims or can I just say "means plus function" of the very detailed assembly and then list the parts in the specification? I am getting to my limit of 20 claims so I thought this might save me some money.

Hope you can follow that :confused:
 


divgradcurl

Senior Member
Well I'm going to apply for a patent. I'm wondering if what is in the specification must be included in the claims verbatim.
No, it doesn't -- and in fact, if that's what you are trying to do, that is exactly the wrong way to go about writing up a patent application. The specification needs to be pretty specific, because you need to disclose the "best mode" or "preferred embodiment" of your invention -- otherwise, the patent is not "enabled."

However, the claims can -- and should be -- significantly broader in scope than the preferred embodiment. The general rule is that the specification should not limit the claims.

The problem with putting too much information in the claims is that it makes the claims too limiting, and then it makes it easy to get around the patent. If I were, for example, the inventor of the chair, I might have a claim that said something like "An apparatus for sitting, comprising a pad and a structure for supporting the pad some distance above a floor" or something like that. In the specification I might describe my "preferred embodiment" to have four legs, a back, arms, and be 27" off the floor, or whatever. But my claims themselves are very broad -- that way, virtually anything that could be used as a chair would potentially be covered by my patent, and I would be well protected.

On the other hand, if I had the above specification, and wrote the claim as "an apparatus for sitting, comprising a pad, a structure with four legs, a back, and arms, that supports the pad 27" off of the floor," I would be certain to get a patent issued -- but then a competitor could make a chair with the pad 29" off of the floor, or with only three legs. or with no arms, etc., and such a chair would NOT be infringing on my patent -- since there are so many limitation in the claims, it becomes very easy to design around the claims.

Therefore, you want the fewest limitations possible in your claims -- of course, you can't simply claim the world. You do have to limit your claims to what you actually invented, which usually means adding limitations so that you are only claiming your invention, and not trying to claim prior art. Writing a patent -- a good patent, that will provide a lot of protection -- is a skill that requires a lot of practice.

I am getting to my limit of 20 claims so I thought this might save me some money.
I am assuming from this that you have not enlisted the services of a patent agent or patent attorney. If you are doing this alone, the USPTO examiner will draft the claims for you if you ask them to -- the claims won't be as broad as if they were drafted by an experienced agent, but they will likely be better than claims that simply cover the preferred embodiment.
 

mindlesslemming

Junior Member
Thanks for your help, divgradcurl.

I believe that my main independant claim is as broad as possible without infringing on prior art.

One more quick question, when writing a "means plus function" claim, should the "means" be preceded by an adjective such as if the invention comprised a additive for making paint dry faster, one should say "additive means for making paint dry faster" or can you get away with simply "means for making paint dry faster"?

Thanks for you insight! It's nice to have some feedback from you :D
 

divgradcurl

Senior Member
One more quick question, when writing a "means plus function" claim, should the "means" be preceded by an adjective such as if the invention comprised a additive for making paint dry faster, one should say "additive means for making paint dry faster" or can you get away with simply "means for making paint dry faster"?
Adding the adjective is not necessary, it's a style thing. If you like it, use it. The only time it might be necessary is if you have more than one "means" term in a single claim term, then the adjective can help identify which means term you are talking about. But it's not necessary -- it's just a label.
 

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