The purposes of the claims of a patent are to define the metes and bounds of an invention, and to place the public on notice of what constitutes an infringement. Generally speaking, the requirements for patent claims are that they must:
- define the matter for which protection is sought, preferably in terms of the “technical features of the invention”,
- be clear and concise/succinct, and
- supported by matter disclosed in the specification, and enabled across their full scope.
There are arguably only 2 basic types of patent claim:
- claims to a physical entity (e.g., compound, product, apparatus) and,
- claims to an activity (e.g., process, use).
For many inventions, claims in more than one category are needed for full protection. In the field of chemical sciences (meaning chemical compositions such as those arising in the fields of chemistry, materials science, petrochemicals, pharmaceuticals, and biotechnology), to properly protect the invention a patent may protect any one or more of the following subject matter:
- a compound, which may be defined as a class of compounds, as a specific compound, or group of specific compounds,
- a composition containing the compound,
- an article made from, or containing the compound,
- a process for preparing the compound (and the compound when prepared by the process),
- a composition when used in a particular manner or under some defined circumstances (generally understood as a pseudo method claim),
- a compound for treating a medical condition,
- a method of using a compound for a specific purpose (e.g., for curing a polymer composition), or for treating a medical condition (a method of treatment claim), and
- the use of a compound in the manufacture of a medicament for treating a medical condition (known as “Swiss style” claims).
Another common claim type is a claim to a kit, which either comprises a novel component (compound or composition), or is constructed to ensure that the kit components are applied simultaneously/sequentially to produce a new product or synergistic affect, or the kit limited to use in a novel and inventive method.
In the field of biotechnology, patentable subject matter includes isolated naturally-occurring micro-organisms, peptides, or proteins, and (under some limited circumstances) gene sequences. Patent claims can therefore be directed to one or more of these categories, too. For protein-type inventions claims can be directed to a nucleic acid encoding the protein, a vector containing the nucleic acid, and a host cell comprising the nucleic acid or vector.
Depending on the circumstances, there are a myriad of other claim types that can be pursued. For example, claims to a precursor or an intermediate (e.g., such as a pre-polymer) may be appropriate. In another example, claims could be directed to a solution that has some specific use. For example, a copper electroplating solution that comprises a solution of copper sulfate, sulphuric acid, and wherein the pH has been adjusted to a specific range.
In another example, the invention may lie in methods of identifying compounds that achieve a certain technical effect (e.g., A binding assay for detecting one or more specific analyte(s) in a sample), or may lie in the particular spatial configuration of entities of a mixture (e.g., one entity may be an immediate release phase and the other entity may be a prolonged release phase).
In the field of chemical sciences (e.g., chemistry, materials science, petrochemicals, pharmaceuticals, biotechnology, etc) to protect an invention one or more different types of patent claims may be required. The choice of claim types depends on the invention at hand, under what circumstances there may be infringement, who may license the patent, and should ultimately align with the applicant’s commercial objectives.
Outlined in this article is a summary of the main types of claims that are pursued when drafting a patent application in the chemical sciences field. It is impossible to foreshadow all the types of patent claims that may be pursued, and thus when an idea is an important commercial asset, it is wise to engage a qualified patent attorney to assist in the generation of relevant intellectual property rights that suitably protect that commercial asset. At Spruson & Ferguson, we have a number of highly experienced attorneys who can assist in navigating these complexities.
The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.