A Presentation on "Patent Drafting" by Ms. Vinita Radhakrishnan

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Transcript of A Presentation on "Patent Drafting" by Ms. Vinita Radhakrishnan

Patent DraftingVinita RadhakrishnanPatent System: Rationale Public Good inventor must provide a complete and accurate public description of theinvention in order to enable others to use that information to invent further, thus pushing technology forward for the benefit of society "uid pro quoPatent Drafting Skill based Techno-legal Expertise One time chance Not allowed to add forgotten or missed out details later cannot get protection for what is not described properlyThe Drafting Dilemma mplications ofClaiming too broadly Claiming too narrow Claiming just right: This is an art and requires lots of imaginationClaim must be adequately supported by the description Must avoidNot claiming what the client wantsClaiming what the client does not use or needOne way road Cannot broaden the claims of a granted patent Cannot broaden the disclosure and the claims beyond what has been included when drafting the application that was filed You are responsible for getting the scope of protection the inventor deservesYou do not get a second chancePatent drafting for ndia Specification Drafting Claim DraftingSpecification Drafting A specification is a techno-legal document containing scientific information constituting patent rights. Purpose of Specification Disclose details of the invention for which protection is sought Define legal boundaries of the invention for which protection is soughtSufficiency of DisclosureDisclosure of an invention in the specification is intended for a person skilled in the art to understand and work the invention DisclosureSupport Claims EnablementMust enable a person skilled in the art to carry out the invention described in it Best ModeOn the date of inventionClarity of Disclosure Disclosure must be clear, precise, honest and open No doubts must be casted on the scope of the invention Lack of clarity- Ground for RevocationContents of Specification Title Preamble Name, Address and Nationality Field of nvention and use of invention Prior Art and Problem to be solved Object of nvention General statement of invention Detailed Description of nvention Statement of claims Drawings Abstract Deposit%tIe Sufficiently indicating the subject-matter of the invention Fifteen words Has to indicate the nature of nvention Need not describe the invention !7eambIeThe following specification particularly describes the invention and the manner in which it is to be performed. Name, address and nationality Full Name Address: Place of Business or residence Nationality of ApplicantField and Use of nvention General art to which the invention belongs. Utility of nvention Advantages that the invention possesses over conventional practices The section may start as follows:%hs nventon 7eIates to .""Prior Art and Problem to be solved Must clearly bring out the current state of the art of technology relating to the invention. dentify Closest Prior artPatents or applicationsTechnical LiteratureBooks etc. Differentiate the invention from prior art Disadvantages or problems existing with the prior art that the invention solvesObject of nvention The necessity of the invention has to be fortified in this section Bring out the positives of the nventionThe principal object of this invention is .Another object of this invention is .A further object of this invention is .Statement of nvention Most essential and distinguishing features of the invention Detail the essential novel features of the invention for multiple embodiments. One embodiment of the invention is..One further embodiment of the invention is.Detailed Description Sufficient detail so as to give a complete picture of the invention Clear description of the nature of nvention Specific examples Claims Claims define the extent of protection sought for an invention and form the heart of the specification Techno-legal part of the SpecificationDrawings Submitted on separate sheets made on a scale sufficiently large to show the invention clearly Dimensions must not be marked Sequentially numbered must not have any descriptive matter unless they contain flow diagrams Consistent LabelingAbstractActs as a noticeAmendment by controllerConcise summary of the invention Must start with the title of nventionindicate clearly the technical field and the technical problem and solution150 wordsReference can be made to formula or drawingNot used for purpose of interpreting the scope of protectionDeposit Must be made if the invention includes biological materials. Material cannot be adequately described in the written description. Reference must be provided in the specification. Deposit must be made on or before the date of ndian Filing. Geographical Origin of the material must be disclosed.General Disclaimers To cover the embodiments that are the a result of minor modifications or modifications that may be possible in the future as a result of advancement of technology. Definition Avoid use of jargons and slangs Not commonly used terms must be defined and sufficiently described for the benefit of PHOSTA Terms in foreign languages Mandatory to provide English equivalentsProvisional Application Stand alone s not a skeleton or rough draft Enough details to clearly identify the invention and its scope must be provided Claims, object and Statement of nventions are optional Drawings if mandatory if required to support the invention.Claim DraftingDescribeThe Cat Sat on the Matn other words..The feline mammal was occupying, in a sense, a wholly if not entirelysedentary position within the general context of what was, as couldclearly be seen in this situation, a horizontally-spread woven textilefloor-covering, as is sometimes -- but not always -- the case".Claims Claims define the metes and bounds of an invention Claim Limits the extent of protection What is not claimed is disclaimed!Parts of claim Single sentence ending with a period. Three parts ntroductory Phrase ntroduces the subject matter of the invention Body defines a particular embodiment of the invention Transition Phrase joins the introductory phrase and the body of claim Open ended v. close ended claimsExample"I claim a pencil having an eraser fastened to one end." ntroductory phrase - a pencil Transition phrase having Body an eraser fastened to one end GENERALZATON S THE KEYCLAM CLASSFCATON ndependent Claims Do not depend on any other claim Generally defines the essential novel features of the most preferred embodiments of a product or a process. pencil having an eraser fastened to one end. CLAM CLASSFCATON Dependent Claims Depend on either an independent claim or another dependent claim Multiple-dependent claims pencil as in claim 1, where said eraser is fastened to said pencil on one end using an adhesive.Types of claim based on Subj. matter Process Claims A Process Claim is used for process inventions and has to clearly define the steps involved in the process. Product Claims A product claim may be claimed as an apparatus, a system, a device, an article or any other product. Other claim typesMarkush ClaimsSystem ClaimProduct by process claimsFingerprint claimsStructure ClaimComposition ClaimGene Sequence claimDiagnostic method claimActual Structure example compound havng the fo7muIaScope of p7otecton 7ende7ed by the cIam stated n the IIust7aton s Imted to the compound bea7ng the moIecuIa7 st7uctu7e.a7ush' type CIamncIude a chemcaI entty aIong wth the va7ous va7ants of the same cIose ended cIamsMarkush claim compound havng the fo7muIaWhe7en X s seIected f7om a g7oup consstng of CI, B7, F and I.Product by process claimWhen the product cannot be clearly defined and is best defined by the process of preparing the sameExample !oIyjuce poton: A potion that transforms one person to another person he desires to look and sound likeWhat s cIamed s a poton p7epa7ed by:Mixing 12 lacewing flies that have been stewed for 21 days , 1 ounce of crude Antimony, 4 leeches that have been "unsucculated, 1 pinch of powdered horn of a Bicorn that has been "lunar extracted" and extract of Extract of The-Transfigured-Being-To-Be floowed by 21 days of brewing in a oak barrelChemcaI Composton o7 Combnaton CIams Novel Combination product patents including two or more already known chemical compounds. These compounds may be available in the public domain. But so long as the combination is novel, they can be patented. A composition claim usually shall include several components both essential and non essential for the invention.Example 1What is claimed isA shampoo composition comprising a. 25 % of Alkyl ether sulphate; b. 10% of Dimethicone; c. 2% of imidazole and d. 63% water.Example 2What s cIamed s1.shampoo composton comp7sng of at Ieast one Su7factant; 515 of at Ieast one condtonng agent; 1 of atIeast one ant fungaI agent and wate7.. %he shampoo composton as cIamed n cIam 1, whe7en the antfungaI agent s seIected f7om a g7oup consstng of py7azoIe, mdazoIe, t7azoIe, tet7azoIe and pentazoIe.. %he shampoo composton n cIam 1 whe7ensad ant fungaI agent s mdazoIe.Example 3shampoo composton comp7sng of at Ieast one Su7factant; 515 of at Ieast one condtonng agent; 1 of at Ieast one ant fungaI agent and Wate7whe7en the antfungaI agent s seIected f7om a g7oup consstng of py7azoIe, mdazoIe, t7azoIe, tet7azoIe and pentazoIe.TipsPre drafting Understand the invention dentify the crux of the invention Consider all possible embodiments Plan the structure Play the role of a devils advocateTips Keep the inventor informed. Draft Claim outline before starting to draft the description. Finalize the claim after specification is drafted Avoid Unnecessary information Keep in mind the level of PHOSTA while drafting the claim.Claim Drafting is all aboutPrecision! Clarity! magination! Foresight! Take home for the dayClaim Language nvention should be clear from the wording of the claim alone Meaning of words: f necessary may be defined in description Claim should define a solution not the problem Claim must comprise all essential features Structural features F