Claiming Use of an Object
The meaning of a
patent claim is crucial. If the
claim describes something which is already known it is invalid and
unenforceable. When drafting a
claim it is very important to know how it will be interpreted by a Patent
Office, and more importantly, by a Court.
A common form of claim
commences “A [device] for [a particular purpose] …..”.
Such claims have been interpreted by the Courts on a number of occasions,
and the established legal meaning of such a claim is “A [device] which is
suitable for [a particular purpose] ….”.
The importance of understanding the correct interpretation can be
illustrated by giving a few examples.
A hook having features A, B and C
Clearly, there is no limitation on the kind of hook being claimed, and any
hook having the full compliment of features A, B and C will fall within its
scope. Regardless of its function,
if a hook having these features was already public knowledge when the patent
application was filed the claim will be invalid.
A hook for a crane,
having features A, B and C
The accepted meaning of this claim would
be “a hook which is suitable for a crane, having features A, B and
C”. The meaning of “a crane”
is well understood, and a Court should have little difficulty in deciding what a
crane is. A fish hook is clearly
not suitable for use with a crane because of its dimensions and strength, and
even if it possesses all of the necessary features A, B and C it will not fall
within the claim. In the case of an
earlier disclosure of such a fish hook the claimed invention will still be
regarded as novel. (There might, however, be lengthy legal argument about
whether it would be obvious to apply features known in relation to fish hooks to
A hook for lifting heavy objects, having
features A, B and C
On first sight it might appear that this would exclude fish hooks.
However, words like “heavy” are relative.
A salmon is heavy in relation to a minnow.
Such relative terms are generally disregarded by patent examiners.
It is very unlikely that such a claim would be held to exclude fish
Another very useful
way of claiming the use of an object is “A [device] when used in [a particular
process] ….”. Such a claim is
legally construed as confining the scope of the claim to the specified use. To
give another example:
A hook when used in lifting roof tiles stacked
on a pallet, having features A, B and C
claim is limited to the particular use in question, i.e. lifting roof tiles
stacked on a pallet. Therefore,
even if the kind of hook possessing features A, B and C is already known for
catching fish, the claim is still valid provided the specified use is not
previously known, or obvious.
© Craske & Co., 2009
Last updated: 27 December 2010