patent specification drafting series: claim drafting updated, by arun narasani

Claimsby, Arun Narasani

© Brain League IP Services Pvt. Ltd. 18 Oct, 2012

Agenda

● Basics● Claim structure● Claim types

● Drafting● Preparation● Drafting

● Interpretation

● Common questions


Claim Basics


Claims overview

● 35 USC 112: specification● Claims must define the subject matter being

claimed● Claims must particularly point out and distinctly

claim what applicant regards as his invention– define the boundaries of an invention - “metes and

bounds”

● Claims must be fully enabled by the specification


Statutory classes

● US: process, machine, (article of) manufacture, or composition of matter, or any new and useful improvement thereof

● India: product or process


Proper sentence

● Claim forms a complete sentence forming the direct object of the phrase “I claim”

● “I claim: A pencil having an eraser fastened to one end.”

● Note the capital letters and the full stop


Ordering

● Claims are presented in a logical order and numbered consecutively

● Logical grouping of claims is allowed (using a line, for example)● logical ordering makes it easy to understand the

structure of claims


Claim structure

● <preamble> <transition phrase> <body of claim>● “A pencil having an eraser fastened to one end.”

● <A pencil> <having> <an eraser fastened to one end.>


Preamble

● Introductory phrase to set the context of a claim● need to define what the claim is about● cannot say: “A method comprising:”

● Limitations in preamble may or may not be given effect● context specific● ensure that a specific element disclosed in

preamble is also part of the body; else remove it


Preamble

● Short preamble is better when possible● enough purpose or intended use may be necessary

for categorization


Transition phrase

● “comprising”:● open● means “including but not limited to”

● “consisting”/”consisting of”:● closed● useful in chemical arts

● “consisting essentially of”:● partially open● useful in chemical arts


Transition phrase (contd..)

● Other uncommon transition phrases● “including”, “having”, “containing” and “wherein”

– Really not used anymore in the electronics/software domain


Body

● Includes material limitations of an invention

● New element introduced by an indefinite article (e.g. “a” or “an”)● further references to the same element may use a

definite article (e.g. “the”)

● An element not introduced by an indefinite article is not allowed● said to have no antecedent basis

● Elements may be claimed in function language


Body (contd..)

● Double inclusion of elements without separate structures may be rendered indefinite

● Single element performing multiple functions may be claimed using function language


Claim types – subject matter

● Product claims● compound/ device/ machine/ artcile (of manf.)/

system

● Process/ Method claims● as one or more steps for performing/ treatment/ use

● Apparatus claims● with active components

● Use


Claims types – subject matter

● Apparatus● with active components

● Article (of manf.)● without active components

● System: ● set of discrete elements (with active components

and/or non active components)


Claim types – scope

● Markush (selected from group consisting of A, B, and C)● functionally equivalent alternatives

● Mean-plus-function/ Step-plus-function● to cover multiple structures/actions (through

multiple embodiments)● equivalent (same function, substantially same way,

substantially same result)● avoid when possible


Claim types – scope

● Omnibus● India specific; not allowed in US


Claim types – scope (to avoid)

● Product by process● patentability assessment only by product● process steps are also considered for infringement● process steps may be considered for validity

● Beauregard (computer readable medium)● no more considered statutory


Claim types – scope (to avoid)

● Jepson ● (.. wherein the improvement comprises ..)● makes it easier for examiners to reject based on

prior art

● Signal● "an electromagnetic signal carrying computer-

readable instructions for.."● reject anything but a physical form of energy


Claim types – structure

● Independent claims

● Dependent claims

● Multiple dependent claims (avoid when possible)● alternative form only

– “according to claims 3 or 4”– “either claim 1 or 2”– “any one of claims 1, 2 and 3”

● cumulative claiming not allowed– “according to claims 3 and 4”


Claim Drafting


Preparation

● Reasons for obtaining a patent

● Problem that led to the solution● helps in broadening the scope of claims

● Novelty according to inventor● many times inventors may not know

● Prior art according to inventor● known products/services, and literature


Preparation

● Commercial environment● product/ combination● consider combination claims (ex: Apparatus

comprising a processor)

● Possible applications?

● Likely users / infringers?


Claim drafting

● Independent claims covering multiple facets● based on commercial and strategy considerations

● Multiple set of independent claims ● broad, medium, narrow● subject to financial considerations

● Dependent claims adding relevant limitations● claim differentiation


Claim drafting (contd..)

● Claim considerations● overlap with prior art; understand what we are

relying on when it comes to prosecution● circumvention; ensure that claims avoid clearly

known prior art● directing towards target infringers● focus on literal infringement; define terms clearly

(+ve decision based on equivalence is rare)

● Communicate with client● review and iterate


Claim differentiation

● Every claim is assumed to have a different scope● having dependent claims automatically implies that

broader scope of protection is sought through corresponding independent claim

● So it always good to have one or two limitations pushed to dependent claims● while ensuring that independent claims have novel

elements to rely on


Clarity of claims

● Ambiguous terms● “like”, “close to”, “almost”, “near” etc

● Glorification● “.. where said greatly improved device comprises

of:”

● Appropriate punctuation● “A tool for manufacturing a machine comprising: ..”● “A tool for manufacturing a machine, comprising:”


Clarity of claims

● “A tool for manufacturing a machine, said tool comprising:”

● Essential elements● a claim for improved blades for a fan does not need

to recite the fan motor as an element

● Unity of invention● one application must have claims relating to one

inventive concept


Claim interpretation


Structure

● Every claim set (set of independent and dependent claims) can be thought as a tree● independent claim will be the trunk● dependent claim will be a branch● a dependent on a dependent will be a branch on a

branch and so on...

● Dependency● based on embodiments

– Linear (chain) vs radial (circle)


Scope

● Independent claims● covering all embodiments or speicific to an

embodiment● terms specific to an embodiment limits the scope of

the claim● evaluate each term

● Dependent claims● branch out for each embodiment/ new feature● use limitations relating to specific embodiments/

features in dependent claims


Common Questions


Questions

● What if I don't understand the invention?● ask the inventors; understand the fundamental

problem being solved

● How many embodiments?● as many as you can; push the inventors for more

information; enables broad claims


Questions

● How many independent claims?● as many required to cover all novel aspects; ideally

one specific novelty per independent claim

● When to use dependent claims?● for specific embodiments in a broad claim set● for substitutes/variations, for specific elements


Questions

● Functional limitation● method claims● for products, provide only generally understood

function where possible

● Structural limitation● product claims● for methods, to avoid being abstract (ex: software)

● When to use Means-plus-function?● cover discrete embodiments


Questions

● Plurality or multiple● plurality: literally means at least two; “one” has also

been considered to part of “plurality”● multiple: definitely means at least two

● Reference numerals in patent claims● do not use in claims unless required by law/rules;

potentially limits the scope of the claim


● “at least one” or “one or more” ● “at least one of a X, a Y, and a Z”: means minimum

one category

patent specification drafting series: claim drafting updated, by arun narasani

Documents

users infringers

claim types

active components

prior art

product combination

eraser fastened

preparation

claim differentiation