Types of claims of an Invention. Digest # 02, 2020

Vitaliy Orikhon
Patent Counsel for IPR GROUP

Andrey Zharov
Patent Counsel for IPR GROUP

Quite a number of people assume that patents must be huge scientific discoveries, however, contrary to that line of thought, there are slightly less than a million patents registered worldwide every year.

Thanks to international agreements such as the Paris Convention for the protection of industrial property and the Patent Cooperation Treaty (PCT), many of these registered patents relate to the same inventions that are patented in many countries, but nevertheless, a huge number of scientific discoveries are still made every year.

Indeed, such significant scientific discoveries are registered each year as patents, such as methods for treating severe diseases, but most of the time, less significant inventions are submitted for registration, such as improvements to already known inventions. This is due to the fact that improving something previously known, can sometimes produce a new stage of development in the industry. An example is a microwave oven. The main working element of the microwave oven is a device called “magnetron“, which was initially used exclusively for military purposes, in radars. However, due to the chance, magnetron found a new use, and a patent for a microwave oven was registered in 1946, after which the first household microwave oven was released in 1955. And now it is difficult to imagine a kitchen without a microwave oven.

It is not correct to assume that patents usually relate only to complex objects. Many patents have already been issued for simple, everyday products, such as pens, lighters, dryers, and so on.

Any patent for an invention begins with a patent application. A properly drawn up patent application plays an essential role in the registration of an invention. The patent systems of many States are quite similar, and three patentability criteria are applied to patents for inventions: novelty, an inventive step, and industrial applicability. Of course, there are rules for drawing up patent applications. These rules are clearly adopted by national patent offices, as well as international and regional patent offices, such as WIPO, EPO, EAPO, and others. However, in each country, some formal rules regarding the drafting of the application are different. The compliance of the claimed invention with these rules falls on the shoulders of the applicants.

Any application for an invention must consist of a description, claims, abstract and, if necessary, graphic materials.

The description must disclose the entire essence of the invention, be sufficient for its implementation, and confirm the claim of the invention.

The claim of an invention is a brief verbal description of it. It expresses the essence and describes the features of the invention that enable it achieve the claimed technical result. The claim of an invention determines the scope of legal protection that the patent provides.

The claims must be based on the description of the invention and the listed features must be fully disclosed in the description.

The abstract to the application for an invention is an abbreviated statement of what is contained in the description.

This article is aimed at revealing the specifics of the main, law-defining part of a patent application, namely, the claims.

There are 8 types of claims that are used in practice when drafting patent applications. This wide variety is due to the fact that each type of claim is determined by the object of the invention.

  • Below are the types of claims with analysis and examples of their execution:
  1. Apparatus claim

The Apparatus claim is one of the most popular type of claims. This type of claim is targeted at protecting the rights of the inventor in relation to a device/apparatus or a system. This type of claim can be defined by certain keywords (“device”, “apparatus” or “system”).



[Claim 1]. A display apparatus, comprising: a top chassis; a bottom chassis; a liquid crystal panel configured to display images; a light source, disposed at a side of the liquid crystal panel, configured to generate light ; a light guide plate configured to guide the light radiated from the light source to the liquid crystal panel; a quantum dot sheet disposed at a front of the light guide plate; at least one optical sheet disposed at a front of the quantum dot sheet; a middle mold provided between the top chassis and the bottom chassis, and having an outer frame unit and a middle supporting unit to support a front edge unit of the light guide plate while extended toward an inner side from the outer frame unit; and a supplement member coupled to the middle supporting unit and configured to reflect the light radiated from the light source.

  1. Method claim

This type of claim is targeted at protecting inventions in relation to the function of the invention. It allows claiming of the function/methods of using the invention, separate from the technical part of the invention (technical features). The keywords to this type of claim are “method or “process”.



[Claim 1] A method for producing a fertilizer comprising:

decomposing one or more biopolymers in an initial water substratum to produce hydro lyzates thereof, wherein the initial water substratum includes a plurality of raw materials dispersed within a liquid; and

performing a polymerization of the hydrolyzates to produce a co-polymer of fulvic acid and poly-metallic humates (CPFAPH).

  1. The “Use” claim/ Swiss-type claims

The “Use” type claim is targeted at protecting the use of the invention. This type of claim is also known as the “Swiss-type”. This type also protects the use of chemical compounds (invention). Although this might be an already known chemical compound, a new use for it can be claimed. The keyword for this type of claim is “use”.



[Claim 1] Use of a dipeptide L-glutamic-L-tryptophan acid (L-Glu-L-Trp) as a means for enhancing tissue oxygenation by suppression (reducing a synthesis) of HIF-Ια factor in case of diabetic foot.

  1. The “Composition” type of claim

The “Composition” type regards the claim of the invention relating to substances, which in their chemical nature, are composed of two or more simpler substances. If we talk separately about composite materials, then they can be characterized as an artificially created heterogeneous material consisting of two or more components. The keyword here is “composition”.



 [Claim 1] An immediate release pharmaceutical composition comprising: (a) remogliflozin or pharmaceutically acceptable salt or ester thereof, (b) metformin or pharmaceutically acceptable salt thereof, and (c) a pharmaceutically acceptable excipients, and wherein the remogliflozin or pharmaceutically acceptable salt or ester thereof, and metformin or pharmaceutically acceptable salt thereof present in a weight ratio of about 1 : 1 to about 1: 15. 

  1. The “Product-by-Process” type of claim

The “Product-by-Process” type of claim is used when protecting an invention related to the process for the production of some kind of product. Sometimes this type of claim can be revised to the “Method claim” type. Information concerning “Method claims” can be found above. The distinctive feature for this type of claim is the phrase, “by a process”.



[Claim 10] A process for producing a chocolate product where all ingredients are from a cocoa pod.

  1. The “Biotechnology” type of claim.

This type of claim is directed at protecting inventions related to a bio organism (living organism). This claim usually protects DNA, DNA fragments, recombinant DNA, protein, monoclonal antibodies, antisense DNA, antisense RNA, Recombinant vectors and Expression vectors. The keywords used are: biological material, deposit, reagent and sample.



[Claim 14] A reagent that modulates the activity of a OATP2-related polypeptide or a polynucleotide wherein said reagent is identified by the method of any of the claims 10 to 12.

  1. The “Software” type of claim.

This type of claim relates to the invention, which protects a computer software and/or hardware. It is usually used in protecting the software part of the invention, and can also be used/combined with the other types of claims. For example, the “device” type or “method” type for the protection of hardware featured in the invention.



[Claim 21] A tangible, non-transitory computer-readable medium storing instructions, that, when executed by at least one processor, cause the at least one processor to perform a method for dynamically balancing processing of sensor-based data and signals in vehicles, comprising:
receiving signals associated with sensors in the vehicle, transmitting the signals over a network for offboard processing; making a request for authorization to process the signals onboard the vehicle; receiving a response to the request; and
selectively processing the signals onboard the vehicle based on the response.

  1. The “Omnibus” type of claim

This type of claim is related to the invention, which references the application materials (figures, description) without providing any other explanation.



 [Claim 25] A method, use or compound as substantially herein described with reference to the examples and/or figures.

There are certain features in the preparation of claims that may affect the prosecution process in a particular jurisdiction. For example, claims with so-called multiple dependencies are not accepted for consideration by the patent office of the Russian Federation but accepted by Ukrainian and EAPO. The “Omnibus ” type claims are not accepted for registration in CIS and EAPO countries but accepted in the EPO (in case if “they are absolutely necessary”) and in the United Kingdom.

Concerning registration by a method of treating diseases in the CIS countries, it is necessary to be guided by the disclosure of not only the staged steps for using the medicine for treating but also show and explain the phased steps for receiving the product of this medicine.

In light of the above, in order to avoid additional costs, during preparation for the filing stage and further response to the Office Action to bring to the required standards, it is necessary to prepare the claims in line with the national legislation of the state where protection is planned to be requested.

It is important to note that not all types of claims can be accepted for consideration in a particular patent office. As already noted above, each state has its own system of approach for the examination of inventions.

In summarizing all of the above, we can draw the following conclusions:

  • The scope of the invention is fully characterized by the completeness of the disclosure of the main features of the invention in its claims.
  • For the structure of the invention application, the set of claims is the most essential and functional part.
  • A poorly formulated claim of an invention is primarily vulnerable and does not give the patent owner the necessary protection against encroachment by third parties.
  • Different types of claims are aimed at protecting completely different inventions.
  • For the qualitative composition and drafting of claims, it is first and foremost necessary to take a responsible approach to the choice of the type of claim.
  • Before submitting an application to a particular jurisdiction, the claims should be prepared in accordance with the requirements of the national office.

Hopefully, this comprehensive overview will help patent practitioners, as well as individual and corporate applicants to gain a better understanding of the peculiarities of drafting and prosecuting a patent application, thus protect the rights of patents more effectively.