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Patent Draft

Esther Arias Pérez-Ilzarbe

October 20092009

Oficina Española de Patentes y

Marcas

Esther.arias@oepm.es

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Patent Draft

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Creations

of the mind

IP Assets

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•!Patent gives its owner certain limited-term rights to exclude others from making, using or selling an invention in a country

•!In return for these rights, the patent must describe how to construct the invention and how to use it, and define in a set of valid claims the scope of protection requested

•!A patent may not allow to practice the invention defined therein: NO GUARANTEE of Freedom to Operate (ex. health regulations; cross patents)

•!Once the patent rights run out, everyone can use the information to invent further and so more knowledge becomes available to society

What is a Patent?

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1.! Mechanical Devices and Articles of Manufacture:

“hockey skates”

2.! Process/Methods: “new apparatus for filtering and

purifying plant extracts” as well “his filtration method”

3.! Chemical compositions or compounds: “Tamiflu”

4.! Isolated and Characterized Molecules

5.! Genetic organisms/Gene sequences

6.! Computer programs?- USA, and EP with some conditions

7.! Improvements on prior inventions: “improved brush to

clean the floor”

What can be the subject of a

Patent?

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A typical patent application includes the following sections

–!Object of invention

–!Statement of invention

–!Summary of invention

–!Brief description of drawings –!Detailed description of the invention

–!Claims

–!Drawings

Patent = Disclosure

PATENT APPLICATIONS ARE SIMILAR AROUND THE

WORLD ALTHOUGH LAWS DEFINE DIFFERENT RULES

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Patent Thicket

HOW CAN BE APPLY FOR

NEW PATENTS?

IT IS DIFFICULT

TO FIND A

“FREE WAY” BUT YOU HAVE

TO TRY IT !

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Requirements on Patentability

•! Novelty

•! Inventive Step

•! Industrial Applicability

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Novelty: Legal basis

An invention is new when it is

not part of the state of the art

Everything made available to the public anywhere in the world prior to the relevant date

time (year)

2006 2007 2008 2005 2004 2003 2002

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What is the state of the

art?

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Examining Novelty: the

Novelty test

•! The invention as claimed is examined on

novelty, rather than the embodiments

•! An Application is not new when the state of

the art has all the features of the application

and is suitable for solving the same

problem as the Application

VIAGRA AS HAIR RESTORER IS NEW

ALTHOUGH THE COMPOUND ITSELF IS WELL KNOWN

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Disclosure available before

The filing/priority date (if any) of the application?*

Identify the technical

Features of the claim

Identify technical features

In a disclosure that are Common to the claim

Identical ?

novel

Not novel

novel no

no

yes

yes

(*) it is assumed

that the priority

is validly claimed

Novelty Flow Diagram

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A device for watering plants

having a water containing portion

(1), a handle (2), an opening with a lid (3) and a spout (4)*.

* A spout is a projecting pipe or tube, e.g. in a

tea-pot.

A

B

C

D

F E

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Suppose we had only the Novelty

requirement for Patentability ...

MAIN

INVENTION

Other Inventions ?

Are minor, merely novel

improvements to known

devices worthy of protection?

Inventive Step ... O

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•! Historical Introduction

–! Novelty

–! Utility

–! … something more…

•! Non-Obviousness (DE, US, UK)

•! Reasons to establish this requirement

–! ...it must be a good reason to grant a monopoly.

–! ...discourage speculators.

–! ... minimize misgivings by limiting patents to free

trade

Inventive Step ...

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Harmonization

Article 33(3) P.C.T.

... a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious

to a person skilled in the art

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Inventive step

•! The question is, which inventions are

obvious having regard to the state of

the art?

•! This is a quite subjective question, isn’t

it?

•! Using the Problem/Solution approach

makes the decision process as

objective as possible

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PROBLEM-SOLUTION

APROACH

Basic Elements

•! Identify the closest prior art: eliminate irrelevant prior art

•! Formulate the problem to be solved

•! Prevent the use of hindsight

•! Is the solution obvious to the skilled person, starting from the closest prior art?

•! But It does not automatically give you the right answer!

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Q1. Closest prior art?

Q2. Difference with (claimed) invention (in terms of technical features)?

Q3. Technical effect (if any)?

Q4. (Objective) technical problem?

Q5. Solution = Difference?

Q6. Would the person skilled in the art:

–! recognize and solve the problem, on the basis of the totality of the prior art, and without employing inventive skills?

PROBLEM-SOLUTION

APROACH

Questions

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At the USPTO: Graham v John Deere (1966)

“..to a person having ordinary skill in the art”

•! State of the Art determination ( Analogous Prior Art)

•! Differences between prior art and claims •! Resolving the level of ordinary skill in the

pertinent Art

•! Secondary considerations

EVIDENCE: The prior art must suggest or motivate the

desirability of the claimed invention and within a reasonable

expectation of success.

BOTH MUST BE FOUND IN THE PRIOR ART NOT ON

APPLICANT’S DISCLOSURE

>=?@A!?@=B*&)6*CD9CE?!?@=B*

US METHOD FOR INVENTIVE STEP EVALUATION

Test TSM : TEACHING, SUGGESTION, MOTIVATION

BUT AFTER 2007 (KSR DECISION): more flexible application of the TSM

test

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INVENTIVE STEP EXAMPLE

1.- PEPPER AND SALT

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PEPPER AND SALT

Claims:

1.- Cutlery item constituted by a hollow handle (1), for receiving spices, with

a rear part lid (2) with outlet-openings (3) where it is installed a cover

element (4) that prevents escape of the spices during non-use.

2.- Cutlery item according to claim 1, characterized in that the cover element

(4) is provided with protrusions (5) which penetrate into the openings (3) in

a closed position.

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Closest Prior Art: D1

The closest element of

the prior art has a hinged

lid that covers the holes

(movement in horizontal plane).

Examined Application D1

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1.- In view of document D1:

Do the claims 1 and 2 have Novelty

and Inventive Step?

2.- What technical feature would be

necessary to combine and object

claim 2?

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3.- Facing document D2, is claim 2 Inventive?

Another document D2 arises

Pepper container with a cover

comprising protrusions to penetrate

into the openings of the lid to

prevent clogging.

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SOLUTION:

"! Claim 1 is not new:

it comes directly and unambiguously from

document D1

"! Claim 2 lacks inventive step:

it will be obvious for a person skilled in the art to

combine the locking means disclosed at

documents D1 and D2.

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Drafting a patent is one of the steps of a

commercial strategy, but sometimes

patents applications are a strategy to close

the market

Failure?

Success?

Enforcement

Commercialization

Grant and publication of the patent

Prosecution of the patent application

Drafting and filing of a patent application

Crystallizing the idea behind the invention

Finding a solution for a technical problem

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For drafting patent applications it is

important

•! To understand the invention

•! Find the “gist” of the invention (essence)

•! Find the right embodiments

•! Find the right words, terminology and

sentences to describe the invention

•! Have imagination: how competitors could

avoid the claimed invention but still take

advantage of its teachings (foreseeing

the future)

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One way road

•! You cannot broaden the disclosure and the claims

after the application that was filed

•! You do not get a second chance except for simple

clarifications and for narrowing the claims when

further prior art is taken into account

•! You cannot get protection for what is not described

properly

•! You cannot broaden the claims of a granted patent

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The 10 steps involved in patent drafting

1 Spotting the invention

2 Generalizing the invention

3 Drawing one or more figures showing the invention

4 Arranging the figures of the drawing in a sequence

5 Deciding on the terminology to describe the invention

6 Drafting the claims

7 Drafting the detailed description (reference numerals)

8 Inserting the reference numerals in the claims

9 Writing the introductory part of the description

10 Writing the abstract using the reference numerals

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Step 1: Spotting the invention

•! Identify what that invention is about.

•! If there is a novel invention

•! What are the differences between the closest prior art and the invention that can spot?

(or catch, detect, determine, discern, discover, distinguish, find, isolate, identify, notice, make out, locate, perceive, pick out,recognize, single out etc.)

•! Which specific difference has the technical effect that seems to be the most important one?

(most significant, most substantial or most unexpected one)?

•! Identify the new feature(s) or combination of features which provide the “trick” of the invention (inventive step requirement): what problem did the invention solve

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•!1 s t C l a i m

•!35 claims more

WO2007112987

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Search report

WO2007112987

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Written opinion.-search report of WO2007112987 O

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Written opinion.-search report of WO2007112987

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Written opinion.-search report of WO2007112987 O

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US3899803- cited in the search report of WO2007112987

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Step 2: Generalizing the embodiment

of the invention

•! Once we have spotted the specific feature or combination of features important for the invention we are still not quite ready to draft our main claim.

•! We need to generalize the important feature(s) and crystallize what we think the general idea underlying the invention is.

•! This can be done once a narrow main claim has been drafted and is reviewed (several times).

•! It is important to generalize the concept of the invention by concentrating on the essential features,by using broad technical concepts, broad language and by avoiding unnecessary limitations.

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Steps 3 and 4: Drawings

•!Drawings are required when they are necessary for the understanding of the invention.

•!To make patent drafting easier, it is good to have a sensibly ordered set of drawings which move from a broad overview, via intermediate drawings to those that show the details of the invention.

•!Flow sheets and diagrams are considered drawings.

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Step 5: Deciding on the terminology to

describe the invention

•!When writing the description it can be helpful to have a set of drawings to hand which you have labeled with the names of the parts shown in the drawings.

•! Write down next to each element shown in each of the figures show these elements are called by the specialist and how they could be named in broad terms

(e.g. instead of copper wire it might be electrical conductor)

•! Use dictionaries and/or published patent documents downloaded from the internet

•!Be carefull using words containing absolutes of any sort: if a patent application uses words like “must” or “always”, these words express a very precise and accurate situation in case of litigation

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The claim or claims shall define the matter for which

protection is sought (searched).

Claims shall be clear and concise.

They shall be fully supported by the description.

A series of numbered statements in a patent specification, usually following the description, that

define the invention and establish the scope of the

monopoly conferred by the patent.

Each claim consists of one sentence starting with a capital letter and ending with a full stop

Step 6: The Claims

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The drafting dilemma

•! Claiming too broadly (covering prior art):

–! No Protection at all since the claim is not “new”

•! Claiming too narrow (terminology, features):

–! Competitor can use the invention

•! Claiming just right:

–! This is an art and requires lots of imagination.

–! Each claim should be a single sentence and should

be clearly worded (drafted, written)

–! Each claim should be precise and without

unnecessary repetition

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Specific vs General

•! Description of a specific compound destroy novelty of a general claim that include the specific compoun

Document describing a copper cable

DESTROY NOVELTY

Claim: metal cable

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General vs Specific

•! A general description claim doesn’t

destroy novelty of a specific compound

Document describing a “metal cable”, and in

all the embodiments the metal is copper

NOT DESTROY NOVELTY

Claim: aluminium cable

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•! Rights are given to claims only, not for any matter described in

the complete specification. On the other hand claiming what is not

supported by the description must be avoided

•! Claims define the boundaries of legal protection and form a

protective fence around invention

•! Each claim is evaluated on its own merit and, therefore, if one of

the claims is objected, it does mean that the rest of the

claims are invalid: dependent claims often cover advantageous

ways to realize the invention. They can be used as fallback

positions in case the independent claim is rejected or cancelled

by a court

The drafting dilemma

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Types of claims

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BASIC STRUCTURE OF CLAIMS

A PATENT CLAIM IS COMPOSED OF THREE PARTS:

1.! PREAMBLE/INTRODUCTORY PHRASE/PRIOR ART

2.! MAIN BODY OF THE CLAIM OR INVENTIVE PART OF THE

CLAIM

3.! THE LINKING WORD THAT JOINS THE TWO

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CLAIM FORMAT …

•!Claim shall define the invention in terms of technical

features

•!Definitions in terms of non-technical features are excluded:

-!Economic advantages

-!Aesthetic features

-!Legal statements

-!Value statements

-!Statements of origin

-!Fancy names..

Example: “A new and inexpensive instrument for

executives with an urge to write” .

Could be a pen or pencil?

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CLAIM FORMAT …

TRANSITION WORDS

COMPRISING – CONSISTING OF

• “Comprising” is equivalent to “open” definition

A geometrical device comprising three sides

connected together at equal angles

(Covers primarily an isoscelese triangle but also

inlcudes various poligons)

• “Consisting of” is equivalent to “closed” or “exactly”

A geometrical device consisting of three sides

connected together at equal angles of 60º

(limited to an isoscelese triangle)

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CLAIM FORMAT …

TRANSITION WORDS –

Characterized

Substantially as described

Use of…for the treatmente of condition…

• “Characterized in that" or "characterized by”

This format is used in EP patents, but not in USA

patents,

• “Substancially as described”

Omnibus Patent. Format not allowed in USA patents.

-"Use of substance X in the manufacture of a

medicament for the treatment of condition Y” Swiss patent

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•!Independent Claim: The claim which covers all the significant characteristics of the invention. Generally, the first claim is Independent Claim which reflects the whole picture of the invention.

•!Dependent Claim: The claim which depends on a claim or several claims is called dependent claim. Generally, the subsequent claims of an Independent claim are Dependent Claim.

•!Omnibus Claim: It is usually used in order to ensure that nothing that has been mentioned in the description and drawings has been left out of the claims. The words such as "substantially as described" or "substantially as described with reference to the drawings" or "substantially as described herein" are commonly used to claim as Omnibus Claim

"Apparatus as described in the description" or "An x as shown in Figure y".

NOT ALL THE COUNTRIES ALLOWED OMNIBUS CLAIMS

Types of claims

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•!Jepson Claim: A Jepson claim admits that the invention is an improvement on a previous invention. The claim must be written in a specific order. First, give a general description of the known elements or steps of the existing invention. Second, state “wherein the improvement comprises” or something similar like “wherein the combination with”. And third, list the elements or steps that are new or improved over the previous invention.

A system for storing information having (...) wherein the improvement comprises…

In USA they are rarely used, since they introduce a potencial risk. Everything before the separating phrase is assumed to be known, whether that is in fact true or not

•!Swiss Claim:. Swiss-type claim or "Swiss type of use claim" is a claim intended to cover the first, second or subsequent medical use (or indication) of a known substance or composition.

Use of substance X in the manufacture of a medicament for the treatment of condition Y…

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Step 7: Purpose of the description.

•! To disclose and teach the invention;

•! To support the claims;

•! To provide the basis for interpretation of the

•! claims;

•! To provide a context within which to view the claims;

•! To provide basis for future amendment of the

claims (during prosecution or litigation).

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Shall disclose the invention in a manner sufficiently

clear and complete for the invention to be carried out by a person skilled in the art.

Describe in detail at least one way of carrying out the

invention claimed;

This shall be done using examples where appropriate

and with reference to the drawings, if any

Bearing in mind that the application, when published, will be prior art against new inventions, it is important to avoid including examples which unnecessarily disclosure details of potentially new developments

The description O

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•! Describe the invention in its context. Start with the big

picture and work into the detail of the invention.

•! Do not throw the reader right into the heart of the

invention: lead the reader progressively along a logical

path with no sudden changes of direction.

•! Avoid criticisms of prior art, just compare technical

features

•! When the way in which an invention is capable of

explotation in industry is not obvious from the description or the nature of the invention, the

description should end by an explicit indication

The description

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Step 8: Inserting the reference numerals

in the claims

•! When the detailed description is finished

it takes only a little time to insert the

reference signs or reference numerals

into the claims drafted earlier.

•! The parts list made during the drafting of

the description can help to avoid errors or

omissions

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Step 9: Introductory part of the

description

•! The description shall first state the title of the invention

•! Specify the technical field to which the invention relates;

•! Indicate the background art which, as far as known to theapplicant, can be regarded as useful for the understanding,searching and examination of the invention, and, preferably,cite the documents reflecting such art;

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Step 10: The abstract

•! Intended to help searchers know what the

patent is about.

•! 150 words maximum.

•! Often based on the main claim, but this is not always

helpful.

•! Unlike the other parts of an application, does

not contribute to the disclosure of the invention.

•! But an abstract is “prior art” for future applications

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Following Step 10: Review

•!When you have finished your specification

(complete description, claims,

drawings,abstract) review it, particularly with

reference to the language of the claims.

•!Are all the features mentioned in the claims

also present in the description?

•!Have you explained how the embodiments or

elements of the invention interact or can be

used together?

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1. Entitlement to own and file.

2. What is patentable.

3. Novelty. 4. Best Mode.

5. Inventive step vs obviousness.

6. Treatment of amendments.

7. Claim structure.

8. Unity of invention. 9. Continuation and divisional application.

10. Information and inequitable contact.

11. Examination experience.

12. Litigations.

Differences between US and

European patents

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Entitlement to own and file

•! Ownership of patent in USA goes to first to invent, in Europe to

the first inventor or successor to [e.g. employer, assignee …]

•! In USPTO normal application has to be filed by inventor or

someone acting for and on behalf of inventor so get ownership

before filing.

Filing in the wrong name with deceptive intent can lose application – can result in jail sentence

•! EP patent application can be filed by anyone, but have to show

entitlement (authoritation/right) during the prosecution of the

application

Note – for applications going through PCT route there is no requirement to show

entitlement during European phase

Correction of inventorship possible without loss of patent

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USA

Whoever invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and useful

improvement thereof, may obtain a patent therefor, subject to the conditions

and requirements of this title. [35 U.S.C. 101]

A broad statement, but subject to much case law to determine what is covered.

EPO

European patents shall be granted for any inventions, in all fields of

technology, provided that they are new, involve an inventive step and are

susceptible of industrial application. [Article 52(1) EPC]

A broad statement but with many detailed exclusions:-

discoveries, scientific theories, mathematical methods, aesthetic creations,

schemes, rules and methods for performing mental acts, playing games or

doing business, and programs for computers, presentations of information,

AS SUCH [Article 52(2)-(3) EPC]

inventions the commercial exploitation of which would be contrary to "ordre public" or morality; plant or animal varieties or essentially biological

processes for the production of plants or animals; methods for treatment of

the human or animal body by surgery or therapy and diagnostic methods

practised on the human or animal body. [Article 53 EPC]

The extent of the exclusions are being continually tested.

What is patentable O

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•! US

–! Detailed and complex provisions concerning novelty – seven different

criteria on which an invention is deemed lacking in novelty or lost [35

U.S.C. 102]

–! One year grace period for documents published before filing application

but after making invention

–! Earlier filed applications prior art for assessment of novelty if filed before

the invention by the applicant

–! “Swearing behind"

(an inventor, in certain circumstances, can get a US patent even

though the invention became public before the inventor filed an original patent application)

•! EP

–! EP absolute novelty based on availability to the public [Article 54 EPC]

with severely restricted six month grace period for International Exhibitions and disclosure which is an “evident abuse” [Article 55 EPC]

–! The content of European patent applications as filed, the dates of filing of

which are prior to the priority date and which were published on or after

that date are prior art for assessment of novelty [Article 54(3) EPC]

Novelty

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US :

US patent law requires the inventor to include the best

way to practice the invention in the patent application (35 US Code section 112). This way, the inventor

cannot get a patent and still keep some essential or

advantageous aspect a secret.

EP: European patent law has no such requirement. At

least one way of practicing the invention must be

included in the application (Article 83 EPC), but there

is nothing that states this way must be the best way, or

even a good way.

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Inventive step v obviousness

•! USPTO – Full availability of earlier filed later published

applications as art [subject to “swearing behind”]

•! EP – No availability of earlier filed later published applications as

art for assessment of inventive step

•! USPTO obviousness

A test called “teaching, suggestion, or motivation” (TSM) test,was applied to determine whether invention obvious or not. More

flexible application of the TSM test:

Overturned by Supreme Court in 2006 case [KSR v. Teleflex].

“A court must ask whether the improvement is more than the predictable use of

prior-art elements according to their established functions”.

•! EP Inventive step: Problem and solution approach applied

SIGNS THAT RAISING OF US STANDARD LEADING TO RESULTS

CLOSER TO EP APPROACH, HOWEVER FORM OF ARGUMENT

LIKELY TO BE VERY DIFFERENT

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Treatment of amendments

US

•! No amendment shall introduce new matter into the disclosure of

the invention. [35 U.S.C. 132]

EP

•! The European patent application or European patent may not be

amended in such a way that it contains subject-matter which

extends beyond the content of the application as filed. [Article

123(2) EPC]

Although looks the same – application very different - US permits

reasonable interpretation of what the application discloses – EPO

look to near explicit disclosure

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Claim structure

•! US high cost penalty for multiply dependent claims and problems in application before courts

This leads to many independent claims being filed in the USA

•! EP high cost penalty for too many claims and ability of courts to find claims partially valid

This leads to much use of multiple dependency which are better dealt with in courts and easier to draft and examine

•! No common drafting style that is good for US and EPO (e.g JAPSON CLAIM or Omnibus claima)

For PCT applications, draft claims for Europe and make preliminary amendment on entry into US regional phase

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Unity of invention

•! US same invention

If two or more independent and distinct inventions are claimed in

one application, the Director may require the application to be

restricted to one of the inventions……[35 U.S.C. 121]

This leads to many continuations and divisional applications being filed in the USA

•! EP same inventive concept

The European patent application shall relate to one invention only

or to a group of inventions so linked as to form a single general

inventive concept [Article 82 EPC].

This appears [and usually is] more generous than the US provisions.

•! However EP Rule 43(2) – one claim per category (product,

process…) of invention [with exceptions] is leading to more

divisionals being filed in Europe

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Continuations and divisional

applications

•! USPTO – at present, freedom to divide as you see fit

subject to potential for “double patenting” objections

•! EPO – April 2010 restrictions in when divisionals can

be filed – more limited concept of double patenting

(New Rule 36 EPC and other rule changes)

•! USPTO – ability to better specification by improving

disclosure in a continuation [cip-continuation in part]

•! EPO – unambiguously derivable test prevents adding

subject matter between a parent and a divisional

application

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Information and inequitable

conduct

•! USPTO – full duty of disclosure

You lose your patent if you do not tell USPTO all that

you know that might be relevant to examination “DUTY

OF CANDOR”

Possibility of going to jail

•! EP theoretical availability of requirement to provide

information relating to prosecution elsewhere [Article 124 and Rule 141 EPC]

Only penalty is if applicant fails to respond to request

[deemed withdrawal]

O

EP

M

USPTO

•! High staff turnover ! low examiner experience ! seemingly

arbitrary outcomes

•! High incidence of serial prosecution [one objection raised and

dealt with, a fresh objection raised] ! high level of appeals

•! Low quality of granted patents and high cost of challenge

EPO

•! Highly skilled examiner body and low staff turnover !

experienced examiners ! professional examination most of the

time [even if you lose]

•! Low incidence of serial prosecution ! low level of appeals

•! HOWEVER appeal numbers in EPO are rising [still very much below appeal numbers in USPTO]

•! High quality of granted patents and low cost of challenge

[opposition]

The Examination Experience

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38

O

EP

M

“Peer-to-Patent opens the patent examination process to public participation for the first time.Become part of this historic program.

Help the USPTO find the information relevant to assessing the claims of pending patent applications. Become a community reviewer and

improve the quality of patents”.

O

EP

M

6/10/09

39

O

EP

M

What happens in the event of

mistakes?

USPTO

Relatively easy to remedy most procedural mistakes

and even some mistakes of substance [e.g. content of

specification]

EPO

Relatively difficult to remedy procedural mistakes –

mistakes of substance still difficult to remedy but some easing of requirements followed EPC 2000 [entry into

force in December 2007]

O

EP

M

Litigation

US

•! No central litigation forum except ITC – otherwise district by

district but US-wide enforceability

•! Extremely high cost of litigation but extremely high market to justify cost

•! Ability to amend post-grant through re-examination/reissue

process [high cost]

EP

•! No central litigation forum as yet – country-by-country litigation,

high variability in costs and outcome, severely limited ability to

enforce Europe-wide

•! Lower costs of litigation for individual countries than in US but smaller markets – litigation throughout Europe would probably

exceed cost of litigation in USA

•! Ability to amend post-grant through limitation process [low cost]

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40

O

EP

M

Conclusions

•! Major differences in practice between US and EPO

•! US procedure more “forgiving” than EP procedure

•! Not possible in most cases to write one patent that is

good for both USPTO and EPO

•! US unlike any other large jurisdiction, therefore treat as

an exception

•! EP model is being adopted by more and more

countries – drafting to EP standards likely to be good for most countries

•! High quality of EP patents seen as persuasive in many

jurisdictions

O

EP

M

Example of a patent family

6/10/09

41

O

EP

M

O

EP

M

6/10/09

42

O

EP

M

O

EP

M

COULD THIS INVENTION BE A PATENT?

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43

O

EP

M

EXAMPLES

O

EP

M

6/10/09

44

O

EP

M

O

EP

M

6/10/09

45

O

EP

M

O

EP

M

6/10/09

46

O

EP

M

O

EP

M

6/10/09

47

O

EP

M

O

EP

M

6/10/09

48

O

EP

M

O

EP

M

6/10/09

49

O

EP

M

O

EP

M

6/10/09

50

O

EP

M

O

EP

M

6/10/09

51

O

EP

M

O

EP

M

6/10/09

52

O

EP

M

O

EP

M

CLAIM 1

CLAIM 3 CLAIM 2

CLAIM 10

CLAIM 11

CLAIM 12

CLAIM 13 CLAIM 14

CLAIM 16

CLAIM 15 CLAIM 17

CLAIM 18 CLAIM 16

CLAIM 20

Three independent claims: CL1, CL18, CL20

CLAIM 4

CLAIM 5 CLAIM 6

CLAIM 7 CLAIM 8

CLAIM 9

6/10/09

53

O

EP

M

O

EP

M

6/10/09

54

O

EP

M

O

EP

M

6/10/09

55

O

EP

M

O

EP

M

-!HOW TO DRAFT PATENTS-Oviligy Renault LLP http://www.slideshare.net/webgoddesscathy/how-to-draft-a-patent

-!Patent Application Drafting mistakes-Paul N.Katz

http://www.ipo.org/

-!Guidelines on writing patent specification-Patent wire

http://patentwire.co.in/Guidelines.pdf

-!Determining the scope of a patent- Arnould Engelfriet http://www.iusmentis.com/patents/claims/

-!Patent Drafting –Bangkok 25 September–7 October 2006.Karl Rackette http://www.ecap-project.org/

-!Patent drafting workshop-Manila 10-14 October 2005.Karl Rackette http://www.ecap-project.org/

-!Differences between US and European patents

http://www.iusmentis.com/patents/uspto-epodiff/

-!Comparison of EPO and USPTO practices. Author: Jim Boff. Phillips & Leigh, London 10th June

2009. http://www.justice.gov.il/NR/rdonlyres/992486AA-0744-4B3B-9EA8-5FF410F3234D/15021/

USEPpractice.ppt

-!New Rule 36 EPC and other rule changes.

http://www.jenkins.eu/articles/divisional-european-patent-applications---new-rule-36-epc.asp

-!Patent reform act. http://www.winston.com/siteFiles/publications/Patent_Reform_Act.pdf

REFERENCES