History and Purpose of Claims in United States Patent Law By N. J. BRUMBAUGH, First Assistant Examiner, Division Seventeen, Inasmuch as the claims of an inventor constitute the chief bone of contention both in and out of the Patent Office, it is thought that a study of the evolution of the claims practice might not be without profit. While the first statutes did not positively require an inventor to summarize his invention in a claim or claims, the practice of doing so obviously grew directly out of certain requirements of these statutes. The United States practice, in its development, is the more interesting in comparison with that of the leading foreign countries. Referring briefly to the requirements of Foreign some foreign governments, it is to be expected Practice that our law should conform most closely (English). to that of Great Britain which requires a complete specification "to conclude with a distinct statement of the invention claimed." Patentees should state, not what they claim for their inventions, but what they claim as their inventions. Thornton on Patents, page 15. The same author states the purpose of the claim to be "to define and delimit the invention, to enable the patentee to inform all whom it may concern exactly what it is he considers is his invention, and it is upon these claims that the validity of his patent invariably hangs." Thornton gives the following rules for drawing claims under the English Practice: Be clear and precise and carefully enumerate the essential features, having in mind the question "what is the essence of the invention." Claim nothing that is not new. Do not claim the principle alone, but only in combination with means for carrying it into effect. Claim the principle carried into effect in a specific way, and you automatically protect the principle. The discovery that the principle can be successfully applied is the important point and other devices involving the new principle would at any rate be subservient to the master patent. Do not claim the principle and every way of carrying it into effect. Claim the combination if that is the novelty and also the one novel and essential element if there is one. The clever claim-draftsman is the man who covers by his claim developments which are not actually in view, without imperilling the validity of the patent by the use of too ambiguous language. Justice Fletcher Moulton in British United Shoe Machine Company vs. Fussell and Sons (Thornton, page 299), says that "the patentee must leave the public in no doubt whatever as to what constitutes that invention which he claims as his monopoly." Under the English practice a reference to the specification and drawings in the claim limits the claim to the construction described and shown. German claim: The proposed new German Patent Law 1913 has this requirement with respect to the "At the conclusion of the specification it shall be stated what is to be placed under protection as patentable." Under the German practice there must be some novel feature which performs or involves some new function. Claims for meritorious mechanical combinations are not patentable unless something has been accomplished which has not been accomplished before (Thornton on Patents). Radical improvements, for instance, in an internal combustion engine, which do not affect the cycle 1 |