Statutory Claim Types

AuthorRonald D. Slusky
Pages233-241
CHAPTER FIFTEEN
Statutory Claim Types
We saw in Chapter Fourteen that maximizing a patent’s value requires
claiming the invention in all its commercially significant settings. In this
chapter we will see that a patent’s value also depends on claiming the
invention using a particular one or more of the three main statutory claim
types—method claims, apparatus claims, and composition claims. These
derive from the four statutory subject matter classes defined in 35 U.S.C.
101: method claims for “processes”; apparatus claims for “machines” and
“manufactures [manufactured items]”; and composition claims for chem-
ical compounds and other “compositions of matter.”
Many inventions lend themselves to being claimed using a particular
statutory claim type. A paper clip would certainly be claimed as a man-
ufacture using an apparatus claim; an oil-refining procedure would be
claimed as a process using a method claim, and so forth. However, many
inventions can be claimed using more than one statutory claim type. In
fact, maximizing the patent’s value may depend on it.
The central consideration is the anticipated enforcement scenario. A
patent infringer is one who, without authority, makes or uses or offers
for sale or sells or imports a patented invention.1 As a practical matter,
the patent owner will typically want to assert her patent against only
some of these, such as manufacturers or importers. This allows the pat-
ent owner to collect royalties (or obtain an injunction against infringe-
ment) at the wellhead; it is usually impractical to chase after innumerable
wholesalers, retailers, or consumers. However, the ability to effectively
assert a patent against a particular class of infringers may depend upon
the statutory claim type(s) that were used to define the invention.
Apparatus (Machine/Manufacture) Claims
Apparatus Claims Generally
Many inventions are implemented in machines or as manufactures
and, as such, are defined by apparatus claims. Indeed, for many inven-
tions this may be the only claim type that makes sense. The chair and
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