U.S. Patent Claims: An Introduction for the Patent-Newbie

If you are reading this, then some twist of fate has created a compelling need for you to become acquainted with one of the fundamental concepts in U.S. patent law, namely patent claims. Welcome, patent newbie! For most lay people, patent law is like a giant loaf of dry white toast. And, newbie, you’re about to consume a few slices of that dry white toast. Bon appetite!

A more helpful (but less amusing) metaphor is a fence, namely a physical structure often used to mark the perimeter of a person’s plot of land. Claims are the part of a patent which defines the scope of protection which the patent provides for an invention. The land enclosed by a fence is land from which the land owner can exclude the presence of others (would-be trespassers). Subject matter that falls within (or is enclosed by) the scope of a patent’s claims is subject matter which the patent owner can exclude others from making, using and/or selling. Hence, a patent claim is like a fence.

Constructing a fence to enclose the plot of land is analogous to preparing, filing and then prosecuting a patent application. The land itself is like the specification of the patent application. A map of the land is like the drawings of the patent application. Patents typically include multiple claims of varying scope. Such claims are like nested fences.

If you hunger for more dry white toast, an expanded version of this discussion can be found at this link. The expanded version explores the fence-analogy via a detailed, hypothetical example set in the late 1880′s in the USA, during the era of the “land rush” (or “land run”).

About the author

Thomas Auchterlonie

Thomas S. Auchterlonie, JD, is a registered patent attorney who has over 24 years of intellectual property experience with an emphasis in patent preparation and prosecution, freedom to operate and pre-litigation patent opinion work. In addition, he has counseled regarding trademarks, trade dress, domain names, copyrights and open-source software licensing. He advises established businesses as well as emerging companies in all aspects of Intellectual Property law. Examples of technologies that Tom has handled include: hearing prostheses, e.g., cochlear implants and bone conduction devices, including audio signal processing (e.g., genetic algorithm) systems, near field RF communication systems, wireless power delivery systems, electrode array stimulation systems and mechanical transducer systems; software; ICs and LCDs, as well as their fabrication; x-ray filters and their fabrication; Storage Area Networks (SANs); and photocopiers (xerography, paper transport & print-job management). Prior to joining Symbus, Tom spent many years in the private practice of law, working with a number of highly respected national law firms including Kilpatrick, Townsend and Stockton; Harness, Dickey & Pierce; and Birch, Stewart, Kolasch & Birch. Also, Tom practiced intellectual property law in the corporate world, having served as the founding Director of the Fujitsu Patent (Preparation and Prosecution) Center. Education: BS, Physics, Dickinson College; Master of Engineering -- Electrical, City College of New York, JD, George Mason University School of Law. Bar Memberships: Virginia. Registered Patent Attorney, U.S. Patent and Trademark Office.