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Patent claim formats, numbering and preamble

Considering the different parts of a patent application, the most important part is the claims. The statue that relates to the format of the claims is 35 USC section 112 and more particularly, the second paragraph. This paragraph establishes the requirement to “particularly point out and clearly claim the invention”. The only acceptable way to ‘particular mark and claim’ an invention in a legal class as defined in section 112 of 35 USC is by a sentence in English. This restriction can be the source of many problems in claim writing due to problems with English writing and word meanings.

The standard custom regarding sentence construction in claim writing is that each claim should be the direct object of a single sentence. The length of the sentence does not matter. To begin with, the sentence can start with ‘I (or we) claim’ or the equivalent ‘What is claimed is’.

The standard practice of the patent office is also to insist that each claim begin with a capital letter and a number. So each statement can be read as a complete sentence when taken with the introductory phrase such as “I claim.” Except for standard abbreviations, such as colons and semicolons, no other periods are allowed in the body of that statement.

As a result of the one-sentence rule, grammar, especially verb forms, must be carefully observed.

For instance:

I claim: a pen included

This does not form a complete sentence.

For instance:

I claim: a pen that understands

This does not violate the whole sentence rule.

In conclusion, the statement must form a complete sentence forming the direct object of the phrase “I claim.” Begin each claim with a capital letter and a number.

In addition, it is acceptable to include more than one claim in utility patents. That is, section 112 of 35 USC states that the specification will conclude with one or more claims.

In design patent applications, only one claim is allowed.

Also, any utility patent application with only one claim, that claim should not be numbered.

When there is more than one claim, each claim must begin with an Arabic number. Claims should be numbered consecutively and, to follow good practice, claims should be grouped and numbered in a logical order for consideration by the examiner to be assigned to the patent application. The usual practice is to start with the broadest claim and proceed to the narrower claim and group similar types of claim together.

Certain professionals may attempt to slip a broad, independent claim between dependent claims in the hope that the examiner will not realize it and in the hope that the examiner will allow all grouped claims.

This is not a recommended practice.

An affirmation usually has a preamble and a body.

Most claims have a preamble which can be an introductory statement for the purpose of naming or defining what is being claimed. Preambles can be quite long or they can be quite short depending on the type of assertion being used.

The preamble to most claims should simply be a general definition of the claimed invention. The length and detail should be chosen to match the body of the claim.

The whole drafting of the preamble should not be taken up until the scope of the claim is determined. Unnecessary and limiting limitations or statements in any part of the statements should be avoided and this warning applies to the preamble.

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