A tip for reading patent claims

(Making efforts to speak generally, to appeal to today’s 140 character attention span).

In less than 140 characters:

The point of novelty is in a claim that begins with “A…”.


When reviewing claims in an issued patent, find a claim which begins with “A”. Somewhere in THAT sentence is the “point of novelty, the detail which makes the invention patentable beyond all prior inventions. Every claim that begins with “The” is dependent upon a claim that begins with “A,” and is just giving additional narrowing details. The broader claim allowed was still an allowed claim, though, so the narrowing details in the depending claims are not what pins down the invention.

Why this is true:

Patents are allowed 3 independent claims (without paying for excess claims fees). Therefore, issued patents tend to have no more than 3 independent claims granted. Prosecution involves multiple depending claims because it cannot be known, ahead of time, what an examiner will agree is sufficiently narrow, to not describe things that are already known. Claims that are too broad, including independent claims (ones beginning with “A”, and not depending from any other claim), will be rejected. To appease the examiner, claim language will be modified (or combined with language of multiple claims or other details in the application) until the claims are allowable. Therefore, any claims that ultimately issue must all be narrow enough to have been considered allowable, and the broadest of these are necessarily the allowed claims that are independent claims. Therefore, the magic detail(s) that created the 20 year monopoly for the invention must be found there. Do not be distracted by nifty details in depending claims, because they are not what clinched the grant of protection.