So, what problems should be paid attention to in the practice of writing a claim?
1. The claim shall be based on the specification.
For the sake of confidentiality and protection, applicants are often reluctant to disclose their technical solutions too much, hoping that the scope of protection of the claims is as wide as possible. This will cause the claim to be unsupported by the specification, that is, the claim will not be supported by the specification, which will lead to the rejection of the patent application because it does not meet the provisions of Article 26, paragraph 4, of the Patent Law.
In application practice, the stipulation that the claim should be based on the specification can be analyzed from the following three aspects:
First, the technical scheme protected by each claim in the claims should be completely recorded in the specification, that is, every technical feature in the claims should be recorded in the specification (except for some features belonging to the known technology). At the same time, the manual should also clearly explain various technical features and the relationship between their work and operation modes. We should pay special attention to this when applying for mechanical invention. It is not enough to state all the mechanical parts, but also to describe them clearly.
Second, in order to obtain the widest possible scope of protection, claims, especially independent claims, are generally a summary of one or more specific technical solutions recorded in the specification. Usually, this kind of hypergeneralization needs the support of enough embodiments to be allowed. For example, if the specification records the connection modes such as screwing, welding and riveting, it can be summarized as "positioning connection" in the claim, so the protection scope is not limited to these connection modes disclosed in the specification. However, if only the threaded connection is disclosed in the embodiment of the specification, it cannot be summarized by the "positioning connection" in the claim.
It should be noted here that when the superordinate concept is used in the claims, the content summarized by the superordinate concept should not be juxtaposed with the content of the subordinate concept. For example, the permanent core mould of hollow floor is made of hard thin-walled pipe or steel pipe, which is wrong. Because hard thin-walled pipe is the upper concept of steel pipe.
Generally speaking, the more specific embodiments are recorded in the specification, the higher the general concept is allowed. That is to say, the more specific embodiments recorded in the specification, the wider the scope of protection of the claims. In the applications of the United States and Japan, the applicants often use more than a dozen embodiments to support the summarized claims. Of course, it needs to be explained here that not all generalized claims need to be supported by multiple embodiments. For claims related to a whole class of products or machinery, if there is good support in the specification and there is no reason to doubt that the invention or utility model cannot be implemented within the scope defined by the claim, even if the scope of the claim is very wide, it is allowed. For example, in the patent application entitled "Construction method of hollow floor slab", the technical feature of the independent claim is that the hard thin-walled pipe is fixed in concrete through positioning pieces, but when implementing this specification, only the positioning method of binding the thin-walled parts in concrete with N-shaped iron wires is disclosed, but those skilled in the art can think that many conventional positioning pieces can be used to position the hard thin-walled pipe in concrete without creative labor, so this generalization is allowed.
When the embodiment disclosed in the specification is not enough to support the upper concept or there is no suitable upper concept, the claim can be written in the form of parallel technical scheme. However, it should be noted that the description of the parallel technical scheme should be clear. For example, there should be no parallel selection generalization term "hard thin-walled pipe for hollow floor is made of cement fiber pipe, steel pipe, plastic pipe or other similar materials", in which the description of "other similar materials" is unclear and cannot be juxtaposed with specific objects or methods.
Third, technical features should be used to express the complete technical scheme in the claim, and the adopted technical features should be specific features with technical meaning. Specific features here refer to specific structural features or method steps. When a technical feature cannot be defined by structural features, or is not as clear as that defined by function or effect features, and the function or effect can be directly and clearly verified by experiments or operations fully specified in the specification, the invention is often defined by function or effect features. However, it is easy to appear that the restriction on the features of function or effect may lead to the generalization of other features or methods not recorded in the specification, so that the claims are not limited in the specification. For example, an invention application named "A mechanical toy animal" claims 1 as follows: "A mechanical toy animal consists of a power mechanism, a transmission structure and a movement mechanism, and is characterized by adding a set of structures for controlling the toy animal to squat, sit, lie, stand and walk." Obviously, the technical features of the characteristic part of the claim are defined by functions, but the specification only discloses specific embodiments. It is difficult for the technicians in this field to find other different control mechanisms to control the squatting, sitting, lying, standing and walking of toy animals without creative work, so such functional restrictions are not allowed.
Article 33 of the Patent Law allows the applicant to add part or all of the technical scheme to the specification at the application stage when it has been disclosed in the original published claim but not recorded in the specification. However, this does not mean that the claim is substantially supported by the specification. Whether the claim is supported by the specification depends on whether the technical personnel in the field can directly obtain or summarize the technical scheme required by the claim from the technical content recorded in the specification.