2.5 Composition claims
Composition claims are utilized when the invention pertains to the chemical nature of the materials or components involved. For instance, a claim related to a zinc electroplating solution might be structured as follows:
- A copper electroplating solution, comprising:
- (a) an alkaline solution of copper sulfate, 30-50 grams per liter;
- (b) sulfuric acid, 2-4 times the copper acetate solution; and
- (c) an aqueous solution of a pH-modifying substrate in an amount sufficient to adjust the pH to a value of 3.5-5.0.
When drafting claims, the patent drafter has the discretion to define each element as narrowly or broadly as necessary, considering factors such as prior art, the scope of the invention, and other relevant considerations. In the example claim above, elements (a) and (b) are more specific than element (c). Elements (a) and (b) explicitly name the compounds, whereas element (c) is described generically as "a pH-modifying substrate." This means that any pH-modifying substrate capable of adjusting the solution's pH to a range of 3.5-5.0 would fall under the scope of limitation (c).
2.6 Biotechnology Claims
Biotechnology, broadly defined, encompasses all practical applications of living organisms. In 1873, Louis Pasteur was granted U.S. Patent 141,072 for "yeast, free from organic germs of disease, as an article of manufacture," which is often recognized as the first patent related to a microorganism.
The applications for biological and life science inventions can be either commercial or therapeutic. Consequently, biotechnology inventions may encompass a wide range of subject matter, including cDNA, recombinant DNA, DNA fragments, proteins, monoclonal antibodies, anti-sense DNA and RNA, as well as recombinant and expression vectors.
A set of sample biotechnology claims designed to cover an invention related to nucleic acids and their encoded proteins could be formulated as follows:
- An isolated polynucleotide comprising a member selected from the group consisting of: (a) a polynucleotide encoding a polypeptide comprising amino acid 1 to amino acid 255 as set forth in SEQ ID NO:2; and (b) a polynucleotide which hybridizes to and which is at least 95% complementary to the polynucleotide of (a).
- The polynucleotide of claim 1 comprising nucleotide 1 to nucleotide 1080 of SEQ ID NO:1.
In this particular example, you'll notice that the gene sequence is referenced within the claim rather than being fully written out.
It's important to be aware that many countries have specific regulations governing biotechnology inventions, as well as distinct rules for sequence listings and biological material deposits.
When an invention involves a biological material, and a written description alone is insufficient for a person skilled in the art to replicate the invention within a patent application, providing access to the biological material may be a necessary step to fulfill statutory patentability requirements. To facilitate access to such biological materials for patent procedures, numerous jurisdictions have implemented a deposit system.
Here is an example of claims that involve such biological material:
- A seed of cotton cultivar designated PHY 78 Acala, wherein a representative sample of seed of said cultivar was deposited under ATCC Accession No. PTA-5666.
This example illustrates that a sample of the claimed cotton cultivar seed was deposited with the American Type Culture Collection (ATCC) and assigned a unique accession number ("PTA-5666") for identification and retrieval.
The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, established in 1977, aims to simplify the global recognition of deposited biological materials in patent applications.
The treaty stipulates that any Contracting Party that permits or mandates the deposit of microorganisms for patent purposes must acknowledge the deposit of a microorganism with any international depositary authority (IDA), regardless of its location. An IDA is a scientific institution, typically a "culture collection," that has received governmental assurance of its ongoing compliance with the Treaty's requirements.
2.7 Computer-Implemented Invention Claims
In most jurisdictions, abstract ideas, software or computer programs as such, purely mental acts, and business methods as such are generally excluded from patent protection and are not regarded as patentable subject matter. Although a detailed examination of the patentability of computer-implemented inventions in different jurisdictions falls outside the scope of this manual, patent drafters should remain mindful of how the subject matter of their clients’ inventions may be assessed in the jurisdictions where protection is sought.
Patent applications directed to computer software and/or hardware configured to execute specific algorithms typically include product claims (e.g., directed to an apparatus, device, or system), method claims, and use claims.
The first claim (Claim 1) in an application relating to a computer-implemented invention is frequently drafted as a method claim. This is because the operational or dynamic characteristics of computer programs form the core of most such inventions. Essentially, a computer program performs an algorithm, which is inherently a method.
It is equally important to incorporate product claims in the patent application for this type of invention. In most cases, computer-implemented inventions are carried out on general-purpose hardware, such as a personal computer or a handheld electronic device. As a result, it is often unnecessary to define particular structural hardware features.
In jurisdictions that allow a product claim to refer back to one or more method claims, a practical drafting technique for such a product claim is to reference both the independent and dependent method claims. This strategy allows the patent drafter to capture the full scope of the method claims within a single product claim.
Example
- A computer-implemented method for transferring a server from a standby mode to a fully activated mode, the method comprising the steps of:
- sending, from a client to the server, which is in a standby mode, an activation signal, wherein the activation signal is adapted to transfer the server from the standby mode to the fully activated mode;
- receiving, by the server, the activation signal; and
- transferring the server from the standby mode to the fully activated mode in response to the reception of the activation signal.
Claims 2-10 are also method claims and the claims continue:
11. A data-processing system comprising means for carrying out [each of the steps of] the method according to any one of Claims 1-10.
To modify the claim set for a jurisdiction in which such cross-referencing is not permitted, the patent drafter reformulates each method step using “means for …”:
11. A data-processing system comprising:
- means for sending, from a client to the server, which is in a standby mode, an activation signal, wherein the activation signal is adapted to transfer the server from the standby mode to the fully activated mode;
- means for receiving, by the server, the activation signal; and
- means for transferring the server from the standby mode to the fully activated mode in response to the reception of the activation signal.
In jurisdictions such as the United States, where claims that use the term "means" may be interpreted narrowly, a patent drafter may instead choose broader, more generic language, for example, "a transmitter for sending" rather than "means for sending."
The acceptable formats for claims relating to such inventions can vary widely across jurisdictions. These may include claims directed to computer-readable media, data structures, propagated signals, and computer program products. In some countries, specialized claim formats tailored for computer-implemented inventions are commonly used, particularly within the software domain. Generally, these formats represent adaptations of more basic claim categories and fall outside the scope of this manual.
A computer-readable medium claim, also known as a Beauregard claim in the United States, is intended to protect an invention when embodied in a tangible medium such as a CD-ROM. These claims, which may appear in several different formulations, allow a patent owner to seek damages not only from those who create or use infringing software but also from individuals or entities involved in its distribution, including retailers and wholesalers.
Professional Tip:
Always keep in mind that legal practice within each jurisdiction evolves as technology progresses. Therefore, it is crucial to stay informed about current legal developments in the specific fields and jurisdictions relevant to you and your clients.
One frequently used format for such a claim involves adapting the language of a method claim for the invention and introducing it with a “computer-readable medium” preamble:
- A computer-readable storage medium storing instructions that when executed by a computer cause the computer to perform a method for using a computer system to [a specified function], the method comprising: …
A data structure claim, also referred to in the United States as a Lowry claim, attempts to secure protection for computerized inventions that incorporate novel computer data structures. Among several potential formats, a commonly used structure is:
- A memory for storing data for access by an application program being executed on a data-processing system, comprising:
- a data structure stored in the memory, the data structure including information resident in a database used by the application program and including: a first data object configured to … ;
- a first data object configured to … ;
- a second data object configured to … ; and
- a third data object configured to … .
Frequently Asked Questions
What makes composition claims different from other types of patent claims?
Composition claims focus on the chemical makeup of a product, defining it by its specific ingredients, their concentrations, or ranges, rather than by structure or method.
Drafters typically choose which elements to define narrowly with named compounds versus broadly with generic terms, depending on how much flexibility they want to preserve in the final scope of protection.
Why do biotechnology claims often reference sequences instead of writing them out in full?
Biological sequences, such as DNA or protein sequences, can be extremely long, so claims typically reference a sequence listing (like "SEQ ID NO:2") rather than reproducing the entire sequence within the claim text itself.
This keeps the claim readable while still legally incorporating the full sequence, which is filed separately as part of the application.
Why would an inventor need to deposit a biological material with an organization like the ATCC?
When a written description alone isn't enough for someone skilled in the field to reproduce the invention, depositing a sample of the biological material satisfies the legal requirement that the invention be fully disclosed.
The Budapest Treaty helps streamline this process internationally, so a single deposit with a recognized depositary authority can generally be recognized across multiple countries' patent systems.
Should a software patent application only include method claims?
No. While the first claim in a software-related application is often a method claim, since software fundamentally performs a sequence of steps, applications typically also include product claims covering the device or system running that method.
Including both claim types helps ensure broader enforcement options, since it allows the patent owner to pursue infringement claims against different parties, such as manufacturers, distributors, or end users.
What is a "Beauregard claim," and why would I use one?
A Beauregard claim, named after a US court case, protects an invention embodied in a computer-readable medium, such as a storage device, rather than the underlying method or hardware alone.
This format can be useful because it allows a patent holder to pursue infringement claims against parties who create, distribute, or sell the storage medium itself, not just those who use the software directly; WOIPS' AI-powered Novelty Search can help confirm whether a similar claim format has already been used for comparable inventions before you finalize your drafting strategy.
This article draws on publicly available WIPO materials and real-world patent case studies for illustrative purposes; content has been adapted and is not an official WIPO publication.