Patent Specification Drafting Series: Claim Drafting Updated, by Arun

Claims
by, Arun Narasani
Agenda
Basics

Claim structure Claim types Preparation Drafting
Drafting

Interpretation Common
questions
Brain League IP Services Pvt. Ltd. 18 Oct, 2012
Claim Basics
Brain League IP Services Pvt. Ltd.
18 Oct, 2012
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
18 Oct, 2012
Statutory classes
US:
process, machine, (article of) manufacture, or composition of matter, or any new and useful improvement thereof product or process
India:
18 Oct, 2012
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
18 Oct, 2012
Ordering
Claims
are presented in a logical order and numbered consecutively grouping of claims is allowed (using a line, for example)
Logical
logical ordering makes it easy to understand the structure of claims
18 Oct, 2012
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.>
18 Oct, 2012
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
18 Oct, 2012
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
18 Oct, 2012
Body
Includes New
material limitations of an invention
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 Single
inclusion of elements without separate structures may be rendered indefinite element performing multiple functions may be claimed using function language
18 Oct, 2012
Claim types subject matter

Product
claims
compound/ device/ machine/ artcile (of manf.)/ system
Process/
Method claims claims
as one or more steps for performing/ treatment/ use with active components
Apparatus
Use
18 Oct, 2012
Claims types subject matter

Apparatus
with active components
Article
(of manf.)
without active components set of discrete elements (with active components and/or non active components)
System:
18 Oct, 2012
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
18 Oct, 2012
Claim types scope

Omnibus
India specific; not allowed in US
18 Oct, 2012
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
18 Oct, 2012
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 computerreadable instructions for.." reject anything but a physical form of energy
Claim types structure

Independent Dependent Multiple
claims
claims
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 according to claims 3 and 4
cumulative claiming not allowed
Claim Drafting
18 Oct, 2012
Preparation
Reasons Problem
for obtaining a patent 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?
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 .. where said greatly improved device comprises of:
Glorification
Appropriate

punctuation
A tool for manufacturing a machine comprising: .. A tool for manufacturing a machine, comprising:
18 Oct, 2012
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
18 Oct, 2012
Claim interpretation
18 Oct, 2012
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... based on embodiments
Dependency
Linear (chain) vs radial (circle)
18 Oct, 2012
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
18 Oct, 2012
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
18 Oct, 2012
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
18 Oct, 2012
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
18 Oct, 2012
at
least one or one or more
at least one of a X, a Y, and a Z: means minimum one category
18 Oct, 2012
More Questions?
18 Oct, 2012

Patent Specification Drafting Series: Claim Drafting Updated, by Arun

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Claims

by, Arun Narasani

Claim structure Claim types Preparation Drafting

Brain League IP Services Pvt. Ltd.

USC 112: specification

define the boundaries of an invention - metes and bounds

Claims must be fully enabled by the specification

Brain League IP Services Pvt. Ltd.

Brain League IP Services Pvt. Ltd.

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

the capital letters and the full stop

Brain League IP Services Pvt. Ltd.

logical ordering makes it easy to understand the structure of claims

Brain League IP Services Pvt. Ltd.

<transition phrase> <body of

A pencil having an eraser fastened to one end.

<having> <an eraser fastened to

Brain League IP Services Pvt. Ltd.

phrase to set the context of a claim

in preamble may or may not be given effect

preamble is better when possible

enough purpose or intended use may be necessary for categorization

Brain League IP Services Pvt. Ltd.

open means including but not limited to

closed useful in chemical arts

partially open useful in chemical arts

Transition phrase (contd..)

uncommon transition phrases

including, having, containing and wherein

Really not used anymore in the electronics/software domain

Brain League IP Services Pvt. Ltd.

material limitations of an invention

element introduced by an indefinite article (e.g. a or an)

element not introduced by an indefinite article is not allowed

may be claimed in function language

Brain League IP Services Pvt. Ltd.

Claim types subject matter

compound/ device/ machine/ artcile (of manf.)/ system

Method claims claims

Brain League IP Services Pvt. Ltd.

Claims types subject matter

with active components

Brain League IP Services Pvt. Ltd.

Claim types scope

(selected from group consisting of A, B, and C)

Brain League IP Services Pvt. Ltd.

Claim types scope

India specific; not allowed in US

Brain League IP Services Pvt. Ltd.

Claim types scope (to avoid)

(computer readable medium)

no more considered statutory

Brain League IP Services Pvt. Ltd.

Claim types scope (to avoid)

Claim types structure

dependent claims (avoid when possible)

cumulative claiming not allowed

Brain League IP Services Pvt. Ltd.

for obtaining a patent that led to the solution

helps in broadening the scope of claims

many times inventors may not know

art according to inventor

known products/services, and literature