Unit 4-Types of Claim-Part 1

1. Basic types of claim

To obtain thorough protection for an invention, a patent application typically contains claims in several categories. This section explains the various types of claims that a patent practitioner may draft in order to secure the widest possible scope of protection for their client.

In general, claims fall into two principal categories:

Product (Physical Entity) Claims: These claims relate to tangible, physical objects. Examples:

“A steering mechanism incorporating an automatic feedback circuit…”
“A woven garment comprising…”
“An insecticide consisting of X, Y, Z.”
“A communication system comprising a plurality of transmitting and receiving stations.”

Process (Activity or Use) Claims: These claims relate to activities, operations, or uses involving material products. Such activities may be carried out on material products, energy, other processes (for example, control processes), or living organisms.
Example: Processes in which a material product is employed to perform a specific function.

1.1 Product Claims: Further Details
Product claims can be subdivided into two primary subcategories:

Substances or Compositions: For example, a chemical compound, a mixture of compounds, or a pharmaceutical formulation.
Under U.S. patent law, this category is referred to as a “composition of matter.”
Physical Entities: For example, an apparatus, article, object, device, machine, or system in which multiple components interact.

Under U.S. patent law, this category is referred to as a “machine” and “manufacture.”

Example and Drafting Practice for an Apparatus Claim: A claim directed to a camera tripod or a window crank is a product claim aimed at a physical entity; broadly, this may be described as an “apparatus claim.”

When drafting this type of claim, a patent practitioner typically begins with a preamble that identifies the apparatus and sometimes indicates its function. Next, the practitioner specifies the essential elements of the invention – the components necessary for the apparatus to perform its intended function. The inventive aspect resides in these essential elements.

1.2 Infringement of a Product Claim:
In general, under patent law principles (for example, those applied in the United States and most jurisdictions): Infringement occurs when an unauthorized third party makes, uses, offers for sale, sells, or imports the claimed product (or an equivalent thereof) during the term of the patent.

Professional Tip
Once you believe you have adequately captured the core of the invention, carefully review the claim again and again to determine how many words can be removed while still maintaining the essence of the invention. It can be useful to involve the inventor(s) in this exercise, as it may help them develop a clearer conceptual understanding of their invention.

Process (or method) claims
A process claim relates to:

a process that produces a product (e.g., a manufacturing process); or
a process that does not produce a product (e.g., a process for computing data or a process for diagnosing the safety of a system).

Generally, the terms process and method are regarded as interchangeable in claim drafting.
A method claim might appear as follows:

A method for making tea, the method comprising:

boiling water;
adding sugar to the boiling water;
adding tea leaves to the boiling water to form a mixture;
adding milk to the mixture; and
filtering the mixture.

This section examines process claims, which define a sequence of steps.

Order of Steps: Although a process claim may list steps in a particular sequence (for example, boiling water before adding sugar), in many jurisdictions these steps are assumed to be performed in any order unless the claim explicitly requires a specific sequence. This assumption applies both when evaluating prior art and when analyzing infringement. For example, although boiling water must occur before adding sugar, the step of adding sugar could take place after other steps, such as adding milk.
Infringement Considerations: When assessing infringement, claim drafters should identify and possibly eliminate limitations that are not essential. For instance, when drafting a process claim for making tea, it should be considered whether adding milk and sugar is invariably required for the invention, or whether the core inventive concept can be carried out without these elements.
General Infringement Rule: Infringement of a process claim generally occurs when an unauthorized third party performs the claimed process. In addition, if the process results in a product, unauthorized acts involving the use, offer for sale, sale, or importation of the direct product of that process also constitute infringement of the process claim.

Use Claims (A Form of Process Claim)

Definition: A claim directed to the use of a product within a process is referred to as a use claim. This is considered a specific form of process claim and is recognized in certain jurisdictions.
Jurisdictional Differences:
EPO (European Patent Office): A use claim such as "the use of substance X as an insecticide" is treated as equivalent to a process claim like "a process of killing insects using substance X."
United States: Use claims must be drafted as process claims; this particular format is not recognized as a separate claim type.
Further discussion of use claims appears in a later section (2.3).

1.3 Preamble with the purposive expression “for”

Claims beginning with expressions such as “An apparatus for carrying out the process…” are interpreted with particular care in many jurisdictions.

Interpretation: Such wording may be interpreted as merely indicating an apparatus that is suitable for the stated purpose.
Implications for Anticipation and Infringement:
An apparatus that possesses all the claimed features but is unsuitable for the specified purpose (or would require modification to perform it) would generally neither anticipate the claim nor infringe it.
Likewise, a claim directed to a “mold for molten steel” implies certain limitations relating to the mold; a plastic ice cube tray, which has a far lower melting point, would not fall within the scope of such a claim.
Product for a Particular Use: The same reasoning applies to claims directed to products intended for a specific use. A claim to a substance or composition for a particular use implies that the product is suitable for that use.
A known product that is identical to the claimed substance but unsuitable for the stated use would not destroy the novelty of the claim.
A known product that is suitable for the stated use (even if it has never been described for that purpose) would generally destroy novelty in many jurisdictions.
Exception: Certain jurisdictions provide special rules for claims concerning the use of a known substance or composition in surgical, therapeutic, or diagnostic methods.
Let us now consider a sample apparatus claim.

Example

An apparatus for supporting a camera, comprising:

a pivotal mounting configured to hold the camera; and
a plurality of legs arranged to support the pivotal mounting.

The preamble specifies that the claim concerns an apparatus for supporting a camera; the body of the claim states that the essential components of this apparatus are a pivotal mounting for the camera and legs arranged to support the pivotal mounting.

Keeping in mind that, from an infringement standpoint, the patent drafter should always assess whether certain words could be removed while the claim remains complete, one might ask whether the adjective “pivotal” is strictly necessary to describe the mounting of the tripod.

This section clarifies how method claims are interpreted, particularly when they include functional language.

Distinguishing Method Claims: Unlike apparatus claims that may indicate suitability for a particular purpose (for example, “an apparatus for carrying out the process”), a method claim such as “A method for re-melting galvanic layers” uses the phrase “for re-melting” as a functional feature that defines a step of the method itself, rather than merely indicating suitability.
Process Steps vs. Product Outcome: A distinction arises when a process claim includes physical steps that result in a product. In these situations, referring to the purpose of the product implies only that the process must be suitable for producing that result, rather than requiring that the production of the product be an explicit step within the method.
Prior Art Impact: If prior art discloses a method without specifying its intended product, it may anticipate a claim directed to the same method that does specify a particular product. This is because the prior art method is considered capable of producing that product, even if that purpose was not explicitly mentioned.

2. Specific types of claim

2.1 Product-by-process claims
These claims define a product in terms of the process used to manufacture it (for example, “Product X obtainable by process Y”).

Allowability and Requirements: Such claims are permitted in certain jurisdictions, provided that the product itself satisfies the standard patentability criteria (novelty, inventiveness, and so on).
Novelty and Process: A product is generally not regarded as novel merely because it is produced by a new process. In many jurisdictions, product-by-process claims are interpreted as claims directed to the product itself.
Scope of Protection: Regardless of the wording used (for example, “obtainable,” “obtained,” or “directly obtained”), these claims are directed to the product and provide absolute protection for that product.
Meeting Novelty Requirements: For the claim to be novel, the product must not be identical to an already known product. The applicant carries the burden of demonstrating that variations in the process parameters produce a different product, often by showing differences in the properties of the resulting product.
Jurisdictional Nuances:
EPO: The purpose of the process is taken into account when determining the characteristics of the product. This differs from the assessment of the method itself, where mentioning the purpose of the product only indicates suitability.
Protection Extension: In jurisdictions such as the EPO, if the claim is directed to a process for obtaining a product, patent protection also extends to products directly obtained through that process, regardless of whether the process causes a complete transformation or only superficial changes (such as painting).
Other Jurisdictions (e.g., Japan): Some jurisdictions interpret product-by-process claims as method claims. Japan has considered such claims indefinite and permits them only in exceptional situations, such as when defining the structural characteristics of the product is impossible or impractical at the filing date.

Professional Tip

Strategic Consideration: Always assess whether a product-by-process claim is not only allowable but also the most effective strategy for protecting the invention in a specific jurisdiction.
Claim Strategy: Consider including such claims as part of a broader set of claim formats, allowing flexibility to later select the most suitable option depending on jurisdiction, prior art, and other relevant considerations.
Typical Use Cases: These claims are particularly common for complex chemical entities that are difficult or impossible to define structurally, such as polymers or food products.

Example
This product-by-process claim is intended to protect a specific oat drink:

A homogeneous and stable cereal suspension having the taste and aroma of natural oats, comprising intact ß-glucans from the starting material, and having a viscosity below 0.5 Pas at room temperature, obtainable by:

(a) dry- or wet-grinding rolled oats or otherwise heat- and water-treated oats to meal;
(b) suspending the oatmeal in water, if the meal has been produced by dry grinding;
(c) treating the suspension with ß-amylase, … ;
[ … ]
(g) subjecting the suspension to ultra-high temperature (UHT) treatment to obtain a sterile product while inactivating the enzymes added.

Frequently Asked Questions

What are the two main categories of patent claims?

Patent claims generally fall into two principal categories: product claims, which cover tangible physical objects such as a device, apparatus, or composition, and process claims, which cover activities, operations, or methods, such as a manufacturing process or a way of using a product.
Most patent applications include claims from both categories to secure the widest possible scope of protection for an invention.

What is a use claim, and is it recognized everywhere?

A use claim describes the application of a known product within a process, such as "the use of substance X as an insecticide," and is treated as a specific form of process claim in jurisdictions like the EPO.
The United States does not recognize use claims as a separate format; there, the same idea must be drafted as a standard process claim instead.

Does the order of steps in a process claim matter for infringement?

Not necessarily. Even if a process claim lists steps in a particular sequence, most jurisdictions assume the steps can be performed in any order unless the claim explicitly requires a specific sequence.
This assumption applies both when comparing the claim to prior art and when evaluating whether a third party's process infringes the claim.

What is a product-by-process claim, and when is it useful?

A product-by-process claim defines a product by describing the method used to make it, such as "Product X obtainable by process Y," and is typically used when the product's structure is difficult or impossible to define directly.
This format is especially common for complex chemical entities like polymers or food products, where describing the exact structural characteristics would be impractical.

How does claim wording like "for" or "obtainable by" affect what the claim actually protects?

Purposive language such as "an apparatus for carrying out the process" is usually interpreted as indicating suitability for that purpose, rather than adding a strict functional requirement, which affects both novelty and infringement analysis.
Since small wording choices like this can significantly change the scope of protection, WOIPS' AI-powered Novelty Search can help identify how similar claim language has been interpreted in related prior art before you finalize your drafting strategy.

The Secretariat of WIPO assumes no liability or responsibility with regard to the transformation or translation of the original content.
World Intellectual Property Organization (WIPO) (2023). WIPO Patent Drafting Manual, Second edition. Geneva: WIPO. DOI: 10.34667/tind.44657