What is a patent claim?
While a patent application includes many parts (e.g., specification, drawings, etc.), the patent claims are the most important component of the patent application as they define the exclusionary boundaries of a patent application.
If an Applicant wants to obtain protection over a particular feature of an invention, said feature MUST be included in the claim as: 1) courts will not read a feature into a claim from the specification; and 2) the United States Patent and Trademark Office (USPTO) will not consider patentability arguments related features which are not recited in a patent claim.
Accordingly, an Applicant will be foreclosed from obtaining legal protection for a specific feature unless said feature is included in a patent claim, irrelevant of whether said feature is described in the other parts of the patent application (e.g., specification, drawings, etc.). In such an instance, the Applicant will have in essence dedicated said subject matter to the public. Further, the Supreme Court in as early as 1891 stated: “the claim is the measure of his right to relief, and while the specification may be referred to limit the claim, it can never be made available to expand it.” (McClaim v. Ortmayer, 141 U.S. 419, 424 (1891))
In view of the above, it is critical for an Applicant to thoroughly review a drafted claim set to ensure that all of the features (e.g., “outer boundaries”) which they desire legal protection for are included explicitly in the patent claims.