Patent: A presentation on "Patent Drafting" by Ms. Vinita Radhakrishnan - BananaIP

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Transcript of Patent: A presentation on "Patent Drafting" by Ms. Vinita Radhakrishnan - BananaIP

  • Patent DraftingVinita Radhakrishnan

  • Patent System: Rationale Public Goodinventor must provide a complete and accurate public description of the invention in order to enable others to use that information to invent further, thus pushing technology forward for the benefit of society

    Quid pro quo

  • Patent DraftingSkill basedTechno-legal ExpertiseOne time chanceNot allowed to add forgotten or missed out details latercannot get protection for what is not described properly

  • The Drafting DilemmaImplications ofClaiming too broadly Claiming too narrowClaiming just right: This is an art and requires lots of imaginationClaim must be adequately supported by the descriptionMust avoidNot claiming what the client wantsClaiming what the client does not use or need

  • One way roadCannot broaden the claims of a granted patentCannot broaden the disclosure and the claims beyond what has been included when drafting the application that was filedYou are responsible for getting the scope of protection the inventor deserves

    You do not get a second chance

  • Patent drafting for IndiaSpecification Drafting Claim Drafting

  • Specification DraftingA specification is a techno-legal document containing scientific information constituting patent rights. Purpose of SpecificationDisclose details of the invention for which protection is soughtDefine legal boundaries of the invention for which protection is sought

  • Sufficiency of DisclosureDisclosure of an invention in the specification is intended for a person skilled in the art to understand and work the invention DisclosureSupport ClaimsEnablementMust enable a person skilled in the art to carry out the invention described in it Best ModeOn the date of invention

  • Clarity of DisclosureDisclosure must be clear, precise, honest and openNo doubts must be casted on the scope of the invention Lack of clarity- Ground for Revocation

  • Contents of SpecificationTitlePreambleName, Address and NationalityField of Invention and use of inventionPrior Art and Problem to be solvedObject of InventionGeneral statement of inventionDetailed Description of InventionStatement of claimsDrawingsAbstractDeposit

  • Title Sufficiently indicating the subject-matter of the inventionFifteen wordsHas to indicate the nature of InventionNeed not describe the invention

  • Preamble

    The following specification particularly describes the invention and the manner in which it is to be performed.

  • Name, address and nationality Full NameAddress: Place of Business or residenceNationality of Applicant

  • Field and Use of InventionGeneral art to which the invention belongs.Utility of InventionAdvantages that the invention possesses over conventional practices The section may start as follows:

    This invention relates to

  • Prior Art and Problem to be solvedMust clearly bring out the current state of the art of technology relating to the invention.Identify Closest Prior artPatents or applicationsTechnical LiteratureBooks etc.Differentiate the invention from prior artDisadvantages or problems existing with the prior art that the invention solves

  • Object of Invention The necessity of the invention has to be fortified in this sectionBring out the positives of the Invention

    The principal object of this invention is Another object of this invention is A further object of this invention is

  • Statement of InventionMost 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 inventionClear description of the nature of InventionSpecific examples

  • ClaimsClaims define the extent of protection sought for an invention and form the heart of the specification Techno-legal part of the Specification

  • DrawingsSubmitted on separate sheets made on a scale sufficiently large to show the invention clearly Dimensions must not be markedSequentially numberedmust not have any descriptive matter unless they contain flow diagramsConsistent Labeling

  • AbstractActs as a noticeAmendment by controllerConcise summary of the invention Must start with the title of Inventionindicate 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 protection

  • DepositMust 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 Indian Filing.Geographical Origin of the material must be disclosed.

  • General DisclaimersTo 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.

  • DefinitionAvoid use of jargons and slangsNot commonly used terms must be defined and sufficiently described for the benefit of PHOSITATerms in foreign languagesMandatory to provide English equivalents

  • Provisional ApplicationStand aloneIs not a skeleton or rough draftEnough details to clearly identify the invention and its scope must be providedClaims, object and Statement of Inventions are optionalDrawings if mandatory if required to support the invention.

  • Claim Drafting

  • Describe

  • The Cat Sat on the Mat

  • In 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".

  • ClaimsClaims define the metes and bounds of an inventionClaim Limits the extent of protectionWhat is not claimed is disclaimed!

  • Parts of claimSingle sentence ending with a period.Three partsIntroductory PhraseIntroduces the subject matter of the inventionBodydefines a particular embodiment of the invention Transition Phrasejoins the introductory phrase and the body of claim Open ended v. close ended claims

  • ExampleI claim a pencil having an eraser fastened to one end.Introductory phrase - a pencil Transition phrase havingBody an eraser fastened to one end


  • CLAIM CLASSIFICATIONIndependent ClaimsDo not depend on any other claim Generally defines the essential novel features of the most preferred embodiments of a product or a process.A pencil having an eraser fastened to one end.

  • CLAIM CLASSIFICATIONDependent ClaimsDepend on either an independent claim or another dependent claimMultiple-dependent claimsA 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. matterProcess ClaimsA Process Claim is used for process inventions and has to clearly define the steps involved in the process. Product ClaimsA product claim may be claimed as an apparatus, a system, a device, an article or any other product.

  • Other claim typesMarkush ClaimsSystem Claim

    Product by process claimsFingerprint claims

    Structure ClaimComposition ClaimGene Sequence claimDiagnostic method claim

  • Actual Structure exampleA compound having the formula

    Scope of protection rendered by the claim stated in the illustration is limited to the compound bearing the molecular structure.

  • Markush type Claim include a chemical entity along with the various variants of the same close ended claims

  • Markush claimA compound having the formula

    Wherein X is selected from a group consisting of Cl, Br, F and I.

  • Product by process claimWhen the product cannot be clearly defined and is best defined by the process of preparing the same

  • ExamplePolyjuice potion: A potion that transforms one person to another person he desires to look and sound like

    What is claimed is a potion prepared 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 barrel

  • Chemical Composition or Combination ClaimsNovel 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 andd. 63% water.

  • Example 2What is claimed is1. A shampoo composition comprising 20- 30% of at least one Surfactant; 5-15% of at least one conditioning agent;1-3% of atleast one anti fungal agent andwater.

    2. The shampoo composition as claimed in claim 1, wherein the antifungal agent is selected from a group consisting of pyrazole, imidazole, triazole, tetrazole and pentazole.

    3. The shampoo composition in claim 1 wherein said anti fungal agent is imidazole.

  • Example 3A shampoo composition comprising 20- 30% of at least one Surfactant; 5-15% of at least one conditioning agent;1-3% of at least one anti fungal a