Some fine examples turned up, of patent claims having but a single word. Ian A. Calvert alerts us to US 3,775,489 PROCESS FOR FLUORINATED AND OF AROMATIC AND POLYNUCLEAR HYDROCARBON COMPOUND AND PLURAL CARBONS PRODUCED THEREBY, issued November 27, 1973 to J. L. Margrave et al. Claim 12 has the single word “Perfluoroperhydrocoronene.” Claims 13-19 have other, related chemical names, and are one-word each. Joshua D. Isenberg informs us that claim 2 of US 2,699,054 TETRACYCLINE, issued January 11, 1955 to Lloyd H. Conover, reads: “2. Tetracycline.”
It is readily apparent from these examples that the ability of a patentee to be his own lexicographer can be quite handy. Here, when a new chemical is invented, the inventor can give the chemical a new name, and the claim can simply be that chemical name. In claims interpretation, we turn first to a common meaning of a claim term. In the case where a claim term is a new word, there is not yet any common meaning of this word. So, we turn next to the specification. And, that is where we find the meaning of this claim term.
A single-word claim is a particularly fascinating example of the trade-off between two opposed principles of claim interpretation. The specification is not imported into the claims. And, the claims are interpreted in light of the specification. Interplay between these two principles is often a factor during patent prosecution, and much case law is available for study in these areas. Clearly, in the case of a single-word claim, the second of these principles predominates. For, without the specification, how could a single-word claim be interpreted? The single-word claim is also an example of the importance of 35 USC §112. Claims must be supported in the specification.
- How-to guide How-to guide: How to understand and implement the ‘E’ in environmental, social and governance (ESG)
- How-to guide How-to guide: How to manage third party supply chain data privacy, security risks, and liability (USA)
- How-to guide How-to guide: How to investigate the social media activity of prospective employees (USA) Recently updated