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Secrets of Patent Law: The Unwritten Rules

Posted by Stanton Braden | Mar 07, 2024 | 0 Comments

There are several rules of patent law that often govern interpretations imparted to patent claim language, even though those rules may not be specifically delineated in a statute. 35 U.S.C §112(b) states that the “specification shall conclude with one or more claims pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention.” The Manual of Patent Examining Procedure (MPEP), the guidance provided to patent examiners governing patent examination in the United States Patent and Trademark Office (USPTO), states as follows at MPEP§ 608.01 (m):

The claim or claims must commence on a separate physical sheet or electronic page and should appear after the detailed description of the invention. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material. While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with “I (or we) claim,” “The invention claimed is” (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the Office of Data Management. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v.Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). There may be plural indentations to further segregate subcombinations or related steps. In general, the printed patent copies will follow the format used but printing difficulties or expense may prevent the duplication of unduly complex claim formats.


Claim formatting and other guidelines are not specifically delineated in a statute; however, case law, administrative law, custom, and practice all influence how claim formatting and structure are interpreted. The USPTO apparently uses a fairly accurate system to capture formatting and other nuances existing in claim presentation during the prosecution of a patent application. While punctuation can play a major role in determining what words or phrases are modified by other words or phrases, punctuation marks have also been used to read in requirements into a claim based on the description of those requirements found in the specification (not inclusive of the claim). Cultar Corp. v. A.E. Staley, F.3d 1328 (FED Cir. 2000).

Further, recent case law suggests that mere spaces, i.e., indentations, can play a major role in claim interpretation. Shotkam LLC v. Tachyon, Inc., Dist. Court, SD Texas 2021. Shotkam reproduces Claim 1 of U.S. Patent No. 8,908,045 as follows:

1.      A camera device comprising:

a camera mounted on a shooting device to capture video discharge data of the shooting device associated with at least one of a sight picture, a target lead, and a shooting technique, the camera is independent of a targeting system of the shooting device, and the video discharge data allows a shooter to estimate a lead given to a target in both a case where the target was hit and where the target was missed, and also to estimate a shooting device alignment relative to a target in both the case where the target was correctly aimed at and where the target was incorrectly aimed at;

at least one of

a [reticle] generating system to add a [reticle] in a field of view towards a discharge end of the shooting device, and

an indicator generating system to add a graticule in the field of view towards the discharge end of the shooting device, to indicate an aim point of the camera; and

an alignment system to adjust a position of the aim point of the camera relative to the aim point of the shooting device.

The court in Shotkam LLC determined:

The formatting of Claim 1 supports Shotkam's construction. As shown above, "an alignment system" is indented to the same degree as "at least one of," and not further indented in line with "a [reticle] generating system" or "an indicator generating system." That indentation is meaningful. See 37 C.F.R. § 1.75(i) ("Where a claim sets forth a plurality of elements…each element…of the claim should be separated by a line indentation."); accord MPEP § 608.01(I)(i); see also MPEP § 608.01(m) ("there may be plural indentations to further segregate subcombinations or related steps.").

The court went on to find that the “[t]he embodiments also support reading the ‘alignment system' as an element separate from the list that includes the ‘[reticle] generating system' and the ‘indicator generating system.'” Had no specific meaning been accorded to the indentation (or, in this case, the lack thereof), the alignment system may have been determined to be part of the recitation involving the indicator generating system.

Misplaced modifiers have a long-standing place in the English language. They, by definition, impart confusion to a phrase or phrases. Where commas, semicolons, and spaces are placed has the potential to cause ambiguity and misplaced meaning in claim language. Such may be the basis for a finding of claim indefiniteness under 35 U.S.C. §112 or outright invalidity.

Patent claims are often viewed as single sentences, and the MPEP provides that:

“[e]ach claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” MPEP § 608.01(m)

Nevertheless, outside of the forgoing requirements governing the use of commas, modern practice often reflects certain liberties taken with claim language that may make an English major cringe. These include claims with several colons (devices often used to separate independent clauses) throughout the claim, meant to lend specific effect to certain claim portions in an effort to impart certainty to claim language.

There are many more nuanced aspects of patent law that we'd be happy to tell you about.

How Gallium Law Can Help

If you would like to discuss this issue further or seek advice about what language to use in your own patent application, please fill out this online form or call us at 651-256-9480 to schedule a consultation.

*The information in this article is not legal advice and should not be relied on. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.

About the Author

Stanton Braden

Stanton Connell Braden is a graduate of the University of Illinois at Champaign-Urbana with a Bachelor of Science in Electrical Engineering (B.S.E.E.), Master of Business Administration (M.B.A.), and Juris Doctor (J.D.). Additionally, Stanton holds a Master of Science in Electrical Engineering...


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