Definition Claims

• Author: Ronald D. Slusky
• Pages: 137-145

CHAPTER TEN

Definition Claims

A fallback feature claim stakes out a more limited parcel of intellectual

property than its parent. As we saw in the previous chapter, the con-

tingency being guarded against is that prior art teaching of the subject

matter intended to be captured by the parent claim may surface after the

patent application is filed, rendering the parent claim unpatentable or

invalid. A fallback feature claim intentionally retreats from the boundar-

ies defined by its parent claim to a narrower but possibly more patent-

ably secure position, as depicted in Figure 10–1. The author refers to such

prior art as “invention-relevant” prior art because not only does the par-

ent claim read on it, but the prior art actually discloses what the inventor

thought she had invented.

This chapter discusses another important type of claim, referred to as

a definition claim. Like fallback feature claims, definition claims are typi-

cally in dependent form. Unlike fallback feature claims, however, defini-

tion claims are not intended to retreat from what the inventor regarded

as her invention. Rather, a definition claim defines more specifically the

invention boundaries that were intended all along, as also depicted in

137

FIGURE 10–1Fallback feature claims and definition claims address

different kinds of prior art.