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 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
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 Specification
 Disclose details of the invention for which
protection is sought
 Define 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
 Patentsor 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 languages
 Mandatory 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 entirely
sedentary position within the general
context of what was, as could
clearly be seen in this situation, a
horizontally-spread woven textile
floor-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 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.
 A pencil having an eraser fastened to one end.
CLAIM CLASSIFICATION
 Dependent Claims
 Depend on either an independent claim or
another dependent claim
 Multiple-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 Claims
A 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 2
What is claimed is
1. 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
 Structuralfeatures
 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
 Direct
 LiteralInfringement
 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 claim
 Function
 Way
 Result
 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???
Thank You

Questions, Comments
Observations???
vinitaradhakrishnan@gmail.com