A claim can be novel, inventive and fully supported and still be of little use to the client. Good patent claim drafting starts with a commercial question. What will this claim actually let the client do?
Examiners test claims against the prior art. Competitors test them against their own products. The second test decides whether a patent earns its cost. This article sets out the questions we ask before filing a claim set in India, the United States or Europe. It also explains the rules behind each question.
- A claim is valuable only if a competitor’s product or process falls within it and the patentee can prove that it does.
- The broadest claim is not always the most useful. A narrower claim that one competitor plainly infringes can be worth more.
- Claims should name acts done by one party, in one country, that can be seen or tested from outside.
- India and the EPO restrict later amendment, so fallback positions must be in the specification on the day of filing.
- Product, method and system claims, plus divisional or continuation filings, should work together as one plan.
Start with the competitor, not the embodiment
Inventors describe what they built. A claim must also cover what a competitor is likely to build. Those are different things.
Take a hypothetical client that has developed a clip on vibration sensor for industrial pumps. The sensor sends readings to a cloud server, which predicts bearing failure and alerts the plant manager’s phone. The scientifically interesting part is the prediction model. The commercially important part may be elsewhere. It may be the way the clip mounts without stopping the pump, because that is what customers pay for.
So the first questions are commercial. Which feature makes customers choose this product? What would a rival have to copy to compete, and how might it reach the same result differently?
Who infringes, and where?
A patent is enforced against acts. The claim should therefore describe acts that a single competitor performs within the territory of the patent.
In India, section 48 of the Patents Act, 1970 lets the patentee stop others making, using, offering for sale, selling or importing the product. For a process patent, it covers using the process and dealing in the product obtained directly by that process. The Act has no express provision on contributory or induced infringement. A claim that can only be infringed by several parties acting together is therefore hard to enforce in India.
The United States is more developed on this point. Under 35 U.S.C. 271(a), whoever makes, uses, offers to sell or sells a patented invention in the United States, or imports it, infringes. Section 271(b) makes active inducement an infringement. Section 271(c) covers knowingly supplying a material component especially made or adapted for infringement that is not a staple article. The Supreme Court held in Limelight Networks v Akamai (2014) that inducement requires an underlying direct infringement. On remand in 2015, the en banc Federal Circuit required all steps of a method claim to be attributable to one entity.
In Europe, Article 25 of the Agreement on a Unified Patent Court covers direct use. Article 26 covers supplying means relating to an essential element. Article 26 does not apply to staple commercial products unless the supplier induces infringement. Section 60 of the UK Patents Act 1977 is similar.
Back to the pump sensor. A system claim requiring the clip, the server and the manager’s phone may be infringed by nobody alone. The hardware maker, the cloud host and the customer each perform only part. Separate claims to the clip, and to the server method as one operator would run it, are far easier to assert.
Can infringement be detected and proved?
A claim to an internal step that happens inside a competitor’s server is hard to prove without disclosure. A claim to a feature that can be seen on the product, measured in a laboratory or observed in its output is much easier.
Courts expect element by element proof. Our note on claim mapping and evidence in Bansal v Philips shows how a decree can fall when each element is not proved. Before filing, ask how you would show each limitation in a rival’s product using only a purchased sample, public documents or a test.
Where the key feature is hidden, consider a claim to its visible effect, as long as the specification supports it. For process inventions, protection for the product obtained directly by the process helps. It is available under section 48(b) in India, under 35 U.S.C. 271(g) in the United States and under Article 25(c) of the UPC Agreement.
How easily can it be designed around?
Every limitation is a gift to a competitor. Ask whether a rival could drop each one, or swap it for an equivalent, and still compete.
Claims are read in light of the specification in all three systems. Under Phillips v AWH (Federal Circuit, en banc, 2005), claim terms carry the meaning a skilled person would give them after reading the whole patent. A doctrine of equivalents exists, but prosecution history can limit it. At the EPO, G 1/24 (18 June 2025) requires the description and drawings to be consulted whenever claims are interpreted for patentability. We discuss this in our note on EPO G 1/24 and claim interpretation. In Europe, the scope of protection for infringement purposes is governed by Article 69 EPC and its Protocol. The UPC Court of Appeal applies the same principles, for example in NanoString v 10x Genomics (26 February 2024). Indian courts also read claims in light of the complete specification.
The practical lesson is the same everywhere. Do not rely on equivalents to rescue a narrow claim. Use functional or generic language where the specification supports it. Describe several alternative embodiments so the claim is not read down to one example.
Is the broadest claim the most useful?
Not always. A very broad claim attracts prior art and invalidity attacks. It may also fail if the specification does not enable or support its full scope. In India, section 10(5) requires claims to be clear, succinct and fairly based on the matter disclosed.
A good claim set therefore climbs down in steps. The independent claim covers the commercial core as broadly as the art and the disclosure allow. Dependent claims add features that a real competitor’s product is likely to have. If the broad claim falls, a dependent claim that still reads on the market product keeps the patent valuable.
Consider a hypothetical coating that cures at a low temperature. A claim to any coating with a certain polymer may look impressive. A claim limited to curing below a stated temperature may be what stops rivals from selling into the same factories. Ideally the claim set contains both.
Will it still matter in five years?
A claim drafted only for the first prototype can expire commercially before it expires legally. Ask where the product and the business are heading. Will the sensor move into the pump housing? Will the analysis run on the device instead of the cloud? Wording that does not tie the invention to today’s architecture keeps the claim relevant.
The limits on later amendment make this important. In India, section 59(1) allows amendment only by way of disclaimer, correction or explanation. An amended claim must fall wholly within the scope of a claim before the amendment, and no new matter may be added. Article 123(2) EPC bars added matter, and Article 123(3) EPC bars extending protection after grant. In practice, you can narrow later but you cannot broaden beyond what was disclosed. Fallback positions must be written into the specification when it is filed.
How the claims fit the portfolio
Product, method and use claims protect against different defendants. Divisional applications allow further claims while an application is pending. India permits a divisional under section 16 before grant. The EPO permits one while the earlier application is pending. The United States offers continuation practice under 35 U.S.C. 120, which lets applicants pursue claims aimed at a competitor’s product once it appears. Plan these filings together. Our international patent support team coordinates claim strategy across these routes, and our patent drafting and prosecution services cover the Indian side.
A short claim review checklist
- Does at least one independent claim cover the feature customers pay for?
- Can one competitor infringe it alone, in the country where the patent is held?
- Could you prove each limitation from a purchased product, public material or a test?
- Which limitation would a rival drop first, and is there a claim without it?
- Does the claim survive the likely next version of the product?
- Are fallback features and alternatives described in the specification now?
- Do product, method and system claims, and any divisional or continuation, cover different defendants?
Patentability remains the threshold. But a claim earns its value in a licence negotiation or a courtroom. Asking these questions before filing costs little. For the Indian filing process itself, see our step by step guide to patent filing in India.
Frequently asked questions
What makes a patent claim commercially valuable?
A claim is valuable when one competitor infringes it alone, infringement can be proved, and a simple change will not avoid it. Novelty and inventive step are only the starting point.
Should patent claims be as broad as possible?
Independent claims should be as broad as the prior art and the disclosure allow. Dependent claims should add features that real products use, so that a narrower valid claim remains if the broad one fails.
Can I broaden my patent claims after filing in India?
No. Section 59(1) of the Patents Act, 1970 requires an amended claim to fall wholly within the scope of a claim before amendment. Later broadening is not allowed, so the specification must support fallback positions from the start.