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Patent Drafting
Vinita Radhakrishnan
Patent System: Rationale
Public Good inventor 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 Drafting
Skill basedTechno-legal Expertise
One time chanceNot allowed to add forgotten or missed out
details latercannot get protection for what is not described
properly
The Drafting Dilemma
Implications of Claiming too broadly Claiming too narrow
Claiming just right: This is an art and requires lots of imagination Claim must be adequately supported by the
description Must avoid
Not claiming what the client wants Claiming what the client does not use or need
One 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 deserves
You do not get a second chance
Patent drafting for India
Specification Drafting Claim Drafting
Specification Drafting
A 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 Disclosure
Disclosure of an invention in the specification is intended for a person skilled in the art to understand and work the invention
Disclosure Support Claims
Enablement Must enable a person skilled in the art to carry out
the invention described in it Best Mode
On the date of invention
Clarity 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 Revocation
Contents of Specification
Title Preamble Name, Address and Nationality Field of Invention and use of invention Prior Art and Problem to be solved Object of Invention General statement of invention Detailed Description of Invention Statement of claims Drawings Abstract Deposit
Title
Sufficiently indicating the subject-matter of the invention
Fifteen words Has to indicate the nature of Invention Need 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 Name Address: Place of Business or residence Nationality of Applicant
Field and Use of Invention
General art to which the invention belongs. Utility of Invention Advantages that the invention possesses
over conventional practices The section may start as follows:
“This invention relates to …””
Prior Art and Problem to be solved
Must clearly bring out the current state of the art of technology relating to the invention.
Identify Closest Prior art Patents or applications Technical Literature Books etc.
Differentiate the invention from prior art Disadvantages 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 section
Bring 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 Invention
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 Invention 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 Specification
Drawings
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 Labeling
Abstract
Acts as a notice Amendment by controller Concise summary of the invention Must start with the title of Invention indicate clearly the technical field and the technical
problem and solution 150 words Reference can be made to formula or drawing Not used for purpose of interpreting the scope of
protection
Deposit
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
Indian 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 PHOSITA
Terms in foreign languagesMandatory to provide English equivalents
Provisional Application
Stand alone Is not a skeleton or rough draft Enough details to clearly identify the invention
and its scope must be provided Claims, object and Statement of Inventions are
optional Drawings 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".
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
Introductory Phrase Introduces 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 claims
Example
“I claim a pencil having an eraser fastened to one end.”
Introductory phrase - “a pencil” Transition phrase – “having” Body – “an eraser fastened to one end”
GENERALIZATION IS THE KEY
CLAIM CLASSIFICATION
Independent 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 CLASSIFICATION
Dependent ClaimsDepend on either an independent claim or
another dependent claimMultiple-dependent claims
A 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 ClaimsA product claim may be claimed as an
apparatus, a system, a device, an article or any other product.
Other claim types
Markush Claims System Claim
Product by process claims Fingerprint claims
Structure Claim Composition Claim Gene Sequence claim Diagnostic method claim
Actual Structure example A 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 claim
A compound having the formula
Wherein X is selected from a group consisting of Cl, Br, F and I.
Product by process claim
When the product cannot be clearly defined and is best defined by the process of preparing the same
Example
Polyjuice 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 Claims
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 1
What is claimed is
A shampoo composition comprising a. 25 % of Alkyl ether sulphate; b. 10% of Dimethicone; c. 2% of imidazole and d. 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 and water.
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 3
A 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 agent and Water
wherein the antifungal agent is selected from a group consisting of pyrazole, imidazole, triazole, tetrazole and pentazole.
Tips
Pre drafting Understand the invention Identify the crux of the invention Consider all possible embodiments Plan the structure Play the role of a devils advocate
Tips
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 PHOSITA while
drafting the claim.
Claim Drafting is all about
Precision! Clarity! Imagination! Foresight!
Take home for the day
Claim Language
Invention should be clear from the wording of the claim alone
Meaning of words: If necessary may be defined in description
Claim should define a solution not the problem Claim must comprise all essential features
Structural features Functional Features
About Description
Support in the description for every Claim Support over the whole breadth of claim Not every aspect have to be proven by
example
Infringement
Types
DirectLiteral Infringement Infringement by doctrine of Equivalence
Indirect
Literal Infringement
Claim Construction Comparison Claim by claim - element by element
© Brain League Consultants-2005-2006
Doctrine of Equivalents
Equivalents of a claimFunctionWayResult
Prosecution History Estoppel
Indirect Infringement
Contributory Infringement Aids infringement
Sale Material part of invention Not a staple
Fact Pattern
PANCAKES, is a restaurant chain in Bangalore specializing in serving breakfast. In 2004, PANCAKES’ pancake sales dropped. In an effort to improve pancake sales and increase profits, PANCAKES designed a new pancake, with a hole in the centre, to hold syrup, butter, whipped cream, and other toppings, such as fruit. The hole prevents the toppings from spilling all over the plate. The pancake hole was the perfect size and shape to hold the ideal amount of toppings and discourage waste by PANCAKES’ employees and patrons. More efficient use of toppings, and increased pancake sales, translated into greater profitability. PANCAKES marketed the new pancakes under the name “PuddleCakes™”, and filed patent applications for the concept in India
Prior Art
Elements
Pan cake Hole
Claims: As filed
A prepared food item, said food item having a hole to retain a second food item when said second food item is placed in said hole.
Amended Claims
A prepared food item having a top surface, a bottom surface, a perimeter and a side edge and further provided with a hole disposed centrally and shaped to retain a second food item within the hole by forming a substantially circular inner side wall and a bottom wall from the surrounding first food item, the diameter of said hole being no more than half of the diameter of the first food item.
A pancake prepared on a heated surface and having a top surface, a bottom surface, a perimeter, and a side edge, said pancake further including a centrally disposed reservoir adapted to retain an amorphous topping when said topping is placed in said reservoir.
Kahani mein twist
One day, while eating PuddleCakes at a PANCAKES restaurant, the CEO of ‘TASTY Foods’, hit upon an idea for increasing his company’s sales of pre-pressed frozen hamburger patties. His idea was to place a hole in the centre of the hamburger patties to create a reservoir for holding condiments, such as mustard, ketchup, and mayonnaise. The hole prevents the condiments from squeezing out of the bun. TASTY Foods began selling its pre-pressed, frozen hamburgers with a hole under the name “PuddleBurgers.”‘BURGER QUEEN’ a take away joint next to ‘PANCAKES’ in Indira Nagar started serving puddleburgers as their new arrival into the take away cuisines.
PANCAKE UNHAPPY. WANTS TO SUE….Your take on the matter???