Patent Claims: Drafting With Precision and Directed Towards the Invention


Patent Claims are the most important part of the patent specification. Why it becomes an important part is because it defines the invention. In other words, the patent claims define what the invention claims, thereby creating a boundary. Defining the boundary of the invention, the patent claims purportedly suggest the extent of the protection being conferred by the grant of the patent. The claim is expressed in the format stating the technical facts associated with the patent, defining the scope. While having the patent granted, the invention comes up in the public domain whereby it tells the public about the scope of the patent and what can constitute the infringement. This information holds importance because it is this information on which the right is exercised and claimed and what will constitute an infringement. The patent specification contains varied numbers of documents, out of which the patent claims define the scope and other documents only explain the invention while remaining in the scope. In India, Section 10 (4) (c) of the Patents Act states that every complete specification must end with a patent claim or patent claims that define the scope of the invention for which protection is claimed.


[Image Source: gettyimages]

While drafting patent claims, there are no such statutory filing formula and the drafting depends on each invention. As mentioned the claim specifies the boundary of the invention, hence the drafting of the claim more or less depends upon the protection that is sought for. The drafting has to be done keeping in mind the protection that is sought for. Since the drafting must be done to secure the applicant’s right over the invention, it is necessary that the claim must be of such a nature and should not be too broad or too narrow. It should not be too broad to contain the invention which the applicant has not invented. And on the other hand, it should not be narrow to lose out on necessary protection. The particular case was very important for us to discuss how important efficient drafting is required while claiming the patent. If the inventor does not draft the claim in such a way, where he ends up not ascertaining the advance that he has made in the invention, he might lose getting the patent.

The ENCO Case

Claims of ENCO’s U.S Patent No. 7,047,191 were held to be invalid under 35 U.S.C. § 101 concerning it be directed to an abstract idea. The plaintiff, in this case, is Enco System Inc. who filed an infringement suit against DaVincia LLC.

The Present case involves ENCO’s U.S Patent No. 7,047,191 which is a method of providing the captioning in an audio-visual signal of which Claim 1 includes limitation such as

  • Selecting the number of lines of caption data to be displayed (I have an image below showing how my phone does this).
  • Determining the caption encoder system being used
  • Training the system to on new words;
  • Using AV cues to time the captioning so that it displays at the appropriate time.

The District Court while delving into the case found that claim limitation written in a generalized form which uses “broad form functional terminology.” Therefore, the court forms an opinion that the claim limitation does not show any such concrete configuration that could serve to ground the abstract idea and just found the claims directed to the abstract idea of “automated stenography implemented on a computer.”  

The patents are granted on the premise that the inventor has provided some advance through the invention over the prior art. The court looks into the claims and specifications searching the objective suggestions, where the court found that the patent claims are improperly “directed to” an abstract idea. The court quoted Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) and remarked that the patent document asserts as the “focus of the claimed advance over the prior art.”

While observing the patent claims the court held that the focus “is simply the abstract idea of automating the AV-captioning process.” Even if the invention involves computers, it is not directed to “any specific improved computer techniques for performing those functions-functions intrinsic to the concept of AV captioning.” The court noted that the invention simply provides automation of work previously done by humans and hence nothing new.

The court writes, “The advance is only at the abstract level of computerization because claim 1 fails to set forth specific techniques for processing the data, instead of reciting known computer techniques for automation of known processes.” Moving further the court also remarked that “The claims do not incorporate anything more beyond conventional computing hardware and software, which do not transform the subject matter into an eligible application of the abstract idea.”

The team at GPF has drafted patent claims for clients around the world. The efficient and highly experienced team of professionals at GPF have worked with clients, drafting claims for their inventions which have successfully led to the grant of patents.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back Global Patent Filing us at

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