Patent Drafting For Beginners

PATENT
DRAFTING
FOR
BEGINNERS
Prof. Feroze Ali

Humanities &
Social Sciences
Indian Institute of
Technology, Madras
INDEX
S.No Topic Page No.
Week 1
1 PDB-What are Inventions? 01
2 Background 08
3 Field of Invention 15
4 Prior Art 21
5 Patent Classification 28
6 Technical Advance 40
7 What are not inventions 46
8 Why People Invent 51
9 How Inventions Look 57
10 Where to Look for Inventions 61
11 How to Catch an Invention 64
12 Getting a working disclosure 72
13 Searching with the disclosure 76
14 Outcome of search 79
15 What is a Patentability Search 82
16 Reasons for Ordering a Patentability Search 87
17 When a Patentability Search is Not Required 92
18 How to Order a Patentability Search 94
19 Limits of Patentability Search 97
20 Patentability Search Report 99
21 How to pitch an invention 101
22 Identifying the inventive concept 110
Week 2
23 Problem Solution Statement 116
24 Problem-Solution to Claim 131
25 How to Search for a Granted Patent 144
26 Provisions relating to claim 151
27 Some Exceptions to patentability 155
28 Structure of Claims 157
29 Preamble 164
30 Transition 172
31 Body 175
32 Form and Punctuation of Claims 182
33 Omnibus Claims 184
34 Structural and Functional Definitions 186
35 Cooperation 192
Week 3
36 Types of Claims.mp4 196
37 Dependent claims 204
38 Apparatus Claims 213
39 Methods or Process Claims 222
40 Claim Drafting Best Practices 227
41 Claims Drafting What to Avoid 242
42 How to Download Copy of Patent Specification 245
43 Amendment to Claims 250
44 Claim Analysis Combo Pen with Marker 260
Week 4
45 Introduction to Specification Drafting 278
46 Enabling Disclosure 292
47 Best method 300
48 Parts of the specification 304
49 Background & Summary 309
50 Detailed description 316
51 Parts of the Application 321
52 Evolution of Patent Specifications 323
Patent Drafting for Beginners
Prof. Feroz Ali
Department of Humanities and Social Sciences
Indian Institute of Technology, Madras
Lecture - 01
What are Inventions?
What are inventions?
(Refer Slide Time: 00:18)
Inventions when we refer to invention, we refer to something that has never been made
before or a process of creating something that has never been made before. Inventions
are things that appear at some point in time for the first time. Now inventions as per this
definition could either manifest as a product or it could manifest as a process.
So, inventions are broadly used to refer to products and processes that have never been
made before in the sense that; they appear at a particular point for the first time in human
history.
1
Inventions have also been used synonymously with patents; in the sense that if you look
at a usage of the word invention in one of the popular dictionaries you will find that one
of the usages is if you do not patent your inventions other people may make all the profit
out of it.
Now, this is how Cambridge dictionary defines an invention. So, invention and patents
are used together to convey the message of what inventions are.
2
Let us look at some examples of inventions that have crossed human history. Structure of
the wheel covered by a patent in the United States, now you I have just presented the
diagram of the structure of the wheel, it’s an old patent 1906.
The compass again covered by a patent and this is again a patent which was filed in 1934
and granted in 1936.
The printing press covered by a very early US patent in the year 1847.
3
The telephone again covered by US patent, A.G. Bell you can find the inventors name on
top, again granted a patent in 1876.
Penicillin covered by a US patent, and this is how the first page of the patent looks.
4
Electric bulb again covered by a US patent and you can find Edison’s name on top.
Electric motor covered by a patent and this is the diagram of the electric motor and you
can find Tesla’s name on top, as the inventors name.
5
Internal combustion engine again covered by a patent and you will find the inventors
name as Rudolf diesel.
Airplane the first flying machine, was again covered by a US patent and the wright
brothers were the inventors.
6
Television again covered by US patent and this patent was filed in 1927.
Now the thing to note is that invention has to be in some technology. So, invention
should fall within some technology if there is no technology we do not regard that as an
invention under patent law. So, invention should be something that is related to a
technology and that is what we called a field of invention.
7
Prof. Feroz Ali
Lecture - 02
Background
Background of the invention.
Invention has to be in some field of technology, if the invention does not fall within the
field of technology, then it is not something what we call a patented invention.
Invention should fall within a broad area of technology. Now if you want to look at the
different kinds of areas of technology, you could find that there are as many streams of
technology as there are technologies themselves.
So, when you describe the background of an invention and background of an invention is
essential for us to understand to figure out where in the scheme of things will an
invention fall in.
So, the background of an invention will describe the field of the invention we will come
to a moment as to what the field is, and it would also have a description of the prior art.
8
Now, the broad areas of technologies could be mechanical it could be electrical, it could
be chemical, it could be biotechnology, it could be computer science or it could be any
other field of technology. Now, you will notice that this is similar to the departments in a
higher technical institute or an engineering college. This also reflects how the patent
office’s structure patent office has dedicated staff and officials who will be dealing with
different fields of technology.
So, if you file a pattern for a mechanical application or an application covering a

mechanical invention, then it would be examined by a group of examiner's who have
domain knowledge in that area. Once a patent is filed then it is assigned to an examiner
with the relevant technology background.
9
Now, how does this play out?
Now if you look at an invention covering the electric lamp and we had mentioned this in
our earlier lecture, this is the best copy that we have. Earlier they used to just mention the
field of invention and the background of invention in a very broad statement. In this case
it is mentioned that have invented an improvement in electric lamp and the method of
manufacturing the same.
10
Over time now this is the television system again a patent that we have covered earlier.
The invention here, the statements starts, the invention relates to television apparatus and
process that is it is directed to an apparatus and process for the instantaneous
transmission of a scene.
So, this is what the invention related to; in essence they are describing here the field of
the invention and then they move on to describe the prior art hereto fore attempts have
been made to transmit an image. So, that gives the background of what has happened in
that domain. Now this again is a 1927 pattern, this practice has evolved over the period
of time and this is a patent for the post-it, the adhesive in the post-it.
11
Now, you can see the background of the invention there is a caption calling it the
background of the invention and here it starts with the field of invention. The field of
invention as technology progresses would become very very specific. Now here the field
is the invention relates to inherently tacky elastomeric solvent dispersible, solvent,
insoluble, acrylate copolymer and a process of preparing the copolymer. The copolymer
is the glue in the posted.
Now, here they describe some amount of what is can be called as a description of the
relevant art or the prior art. Now this over a period of time the statement of background
of an invention has evolved. This is just to show that the modern patent applications have
a much more detailed depending on the topic description of the background.
The background will also describe some of the problems or the gaps in knowledge. For
instance here you will find that despite the disability of inherently tacky elastomeric
polymers, which are solvent dispersible solvent insoluble and of uniformly small size
such a product has never therefore, existed.
So, they are showing a gap in the field of technology, a gap in the description of the prior
art which makes the invention a much sought for invention. Now there are a couple of
12
things you need to bear in mind while describing the background of an invention. The
Indian law requires you to show technical advancement.
So, you have to mention what was the problem in the prior art or what was the deficiency
in the prior art, we just saw an example of how that was done in the pattern covering
post-it and then show what is the contribution of the invention. You should resist the
temptation to make a comparison with the prior art, because comparison with a prior art
is what the patent office would do to invalidate inventions.
So, a comparison with the prior art is done to see whether there is novelty or lack of it, it
is again done with the prior art to see whether there is inventive step or lack of it. Now
this if you present the prior art and make comparisons to the invention, your invention,
then it would be very close to invalidating it because you have kind of made a
comparison between the prior art and your invention and an examiner who examines
your application or a controller may find it to be obvious.
So, resist the temptation of making a comparison to the prior art. Now the background in
the US style as we have just seen has two parts that is the field of the invention and the
description of the prior art. In Indian applications, there could be some liberty in this
format, you could you could follow a separate field of invention can be a separate
heading we will show you some examples of that and background of invention can also
13
be a separate heading. There are no strict rules for that, but this is allowed as a freedom
in drafting.
14
Prof. Feroz Ali
Lecture - 03
Field of Invention
Field of the invention: we had already mentioned that the background of the invention
would cover two broad parts; one is the field of the invention, which is just an
introductory statement as to what the invention is which normally begins with the words
the invention relates to, and the second part is the description of the prior art.
15
Now, in the field of invention we would like to show you how you could search for the
patents in the patent office website and how the field of invention is important in doing
that search. Now if you come to that patent office website, you will find on the home
page on patents; there is a search where you can you can search for the published patent
applications.
Now, if you click on this link; it will take you to a page which looks like this.
16
Here I have already entered the term under title you could choose multiple titles here, I
have chosen the term computer and I enter the captcha that figures here and when I
search it takes me to the page which looks like this.
Now, here I am interested in the first application; a method an apparatus for transferring
digital content from a personal computer to a mobile handset; when I click on this
number it takes me to this page.
This page gives you some bibliographical data about the patent what is important here.
17
is that there is a classification called the field of invention. The field of invention it is
mentioned here as FI13; FI13 corresponds to the field of invention that is pertaining to
computer science. This is an internal classification which the patent office uses; in fact,
when you saw this page, there was no field by which you could search by the field of
invention; it is just an internal classification.
So, coming back to this the field of invention is a broad category which groups the
various inventions so, that it is easier for the patent office to allot the work to examiners
who will be examining the patent application. What is more important is the IPC
classification.
Now, the IPC classification for this invention comes under two categories; these are the
two categories. Now the IPC classification is held by the WIPO; the WIPO has the
description of all the various classifications and what those classifications are. You could
search for codes and you will find what are the relevant classifications and the sub
classifications in it.
So, a prior art search will be more effective; if the prior art search is done using the IPC
codes. So, the field of invention as I mentioned is something that is important for you to
mention at the beginning of the description of the background. And it is important for the
patent office because the patent office classifies every invention based on the field.
18
Now, an invention advances the technology. So, it is essential for an invention to

advance a technology and for that we have to look at the invention in a field of
technology. So, the field of technology is what is also referred to as the background of
the invention.
The background part refers to a field as well as to the technology. Now if you look at this
application again you will find that there is a field of invention here.
19
Which says what the invention relates to and there is a separate heading called the
background of invention. So, you could have them together as it is being done in the
United States or you could have them in separate classes as you can see it here. So, next
we will look at prior art.
20
Prof. Feroz Ali
Lecture - 04
Prior Art
Prior art, what we have seen so far is the fact that invention advances technology. An
invention results in a progress of a technology, technology advances by way of the
invention, how do we know this? we know this, when we compare the invention with
what has gone before in the field of technology. Now, the knowledge that has gone
before in the field of technology, is referred to as prior art. Alternatively, it is also
referred to as state of the art or background art.
21
Now, you will find that the word prior art figures in the Patents Act, this is a copy of the
Patents Act and we are in Section 2 where, the definition of new invention is mentioned
here. A new invention means, an invention or technology which has not been anticipated
by publication, in any document or used in the country or elsewhere in the world before
the date of filing the patent application, with complete specification that is this is the
critical part.
22
The subject matter of the patent, has not fallen in public domain or that it does not form
part of the state of the art. So, you find mention of the term state of the art, which we
have just mentioned, is nothing but prior art in the Patents Act, the Patents Act also
mentions prior art in the context of multiple priorities, we will come to that later, but
prior art or state of the art is, what has gone in that particular field before the invention
came into being and. In fact, the invention is constantly covered with the prior art.
Now, if you look at a definition for prior art, and one definition that is available for us is,
the definition in the European patent office website. Now, it defines prior art as any
evidence, that your invention is already known, now there is a link to the patent office
website European patent office website given below, you can read that in detail later
now. So, prior by prior art we meant we are referring to some kind of evidence.
Now, in law an evidence can either broadly fall, within the category of an oral evidence
which is what people say and it could be documentary evidence, evidence that is
documented. So, prior art in patent law, predominantly we are talking about documentary
evidence against your invention, or something which shows that your invention is
already known. Now, it does not need that the prior art should physically exist or it
should be commercially available in the form of a seal, it is enough that somebody has
described it or shown it or use the technology.
23
Now, you could say there are many things that could amount to prior art, a cave painting
can amount to a prior art, instruction manual can amount to a prior art, a thesis lying in a
library and unpublished theses can amount to a prior art. In fact, anything that has the
value of an evidence, can amount to prior art.
Now, this is the page, you can check the page and the links provided below, there is
more detail provided there. Now, we find that prior art, at least the documentary part is
something that you can search, and you can search for the prior art in various places.
24
Now, any evidence which means, published, unpublished, currently used, discontinued,
if it is in a searchable form, if it is not documented and if it is in a searchable form then
that qualifies for prior art.
Now, you will find that the internet is one of the best places where, you can search for
prior art and the which includes, if you are looking at patents you you can look at the
Google patents website, which is a repository of many of the patents that have been
published. You could also look at patent office websites, like the Indian patent office
website, you have a search page where which shows the Indian patent office a patent
application can be searched, the Espacenet patent search which is the European patent
office website search, or USPTO which is the United States patent and trademark office
search. These are and there are other national patent offices, where you could search for
patents.
You could also do a non-patent literature search, in Google scholar or any other non-
patent literature database. Now, the links are provided below. Now you can see that a
Google patents, this is how it looks the web link and and you could search it is a
common word search, you can search any of the terms that you want to look for and you
can find it here, it just operates like the normal Google search.
The intellectual property website of India looks like this. So, you could add any of the
you can search by title, by abstract, by complete specification and you can also search by
25
the date, you have an option of choosing published and granted patents, now that is also
there.
So, if you are looking at published pending applications, you could search that and you
can find. Now, the European patent office also has a search patent, search is called
Espacenet and you have more than 100 million patent documents here.
So, so this provides you the search for that, the US patent office, has it is own search and
this is the database the link from here and the US patent office is also important because,
26
they also provide some search strategies. The 7 steps search strategy, it is an interesting
piece of document, you should have a look at that in some detail and for everything else,
you have the Google scholar and anything that falls within the public domain.
Now, this summarizes the search before the various databases. Now, apart from this you
could generally do a patent or a non-patent literature search, in any library where these
documents are stored, or in any place where you can have access to the hard copies.
Now, but knowing the way in which technology has progressed, most of the patents that
have been granted dating back to some of the old records to, for instance the patent office
in the United States has searchable records since the since the 1970’s.
So, you can go back to the 1970’s for offer a free text search. Now, the things to note is
that prior art search, is important to determine whether the invention is entitled to a
patent. So, to know whether the invention is patentable you need to do a prior art search,
and the prior art search will tell you whether your invention is new, that is it satisfy the
requirement of novelty which is the requirement for granting a patent, it will also tell you
whether your invention involves an inventive step, that is the second requirement it is
also called the non-obviousness requirement.
27
Prof. Feroz Ali
Lecture - 05
Patent Classification
Patent classification.
Why should patents be classified? Now this is a question that you can ask. What is the
need to classify patents? The need to classify patents comes out of the humongous
amount of patents that we have today. US, the United States patent office has granted
more than 9 million patents, and patenting has been in vogue for quite many years.
So, we require a system by which it is easier to look for patents, and to search for
patents. So, the system by which we look for patents, we had already mentioned that
there is patents, we know that something is a patentable invention when you compare it
with the prior art. So, to understand the prior art, and because we have so many granted
patents, we need a system of classification.
Now, the classification is a system of codes that are used to identify inventions.
Inventions fall within as we have already mentioned broad streams of technology. But
invention in itself will fall under some category or some subcategory. So, the
28
classification is to place an invention in the context of broader technologies and fields of
technologies.
Now, the classification is indispensable for retrieving information on patents, when you
do a prior art search. So, in let us imagine a world without classification. Then the only
way we will be able to look at patent prior art is by looking for things using words, you
know, we find some key search terms, and we search for those terms that is not the best
way to look for prior art. Prior art because it is codified, and it is classified, we use
classification codes to search for prior art.
Now, there are multiple international classifications, it may sound a bit confusing to for
starters, but this is a place which you can easily navigate because today we have
technology which helps you to search for these things. We also have a cross reference
from one classification to another.
Now, the reason we have multiple classification is the fact that we had patent law
developed in US united states in a particular format. And you had patent law develop and
in Europe in a form that was different from what was in Europe. So, the us practice got
codified and the US patent office used certain codes for classifying inventions. The
codes that the European office used were different. So, at some point they came together
created common codes, started using common codes, and now we have broadly 2
29
classifications if you can put it that way, but all the other classifications have now kind
of been consolidated.
So, WIPO; WIPO that is the world intellectual property organization is the main
organization which deals with intellectual property rights. And WIPO has it is own
classification which we will soon see is called the IPC classification. IPC, now WIPO
not only has classification for patents, it also have classifications to facilitate search of
information concerning invention, trademark, industrial designs. So, so it the ambit of
WIPO is much bigger than patents itself.
Now, different types of classification; you have the ECLA which is a European
classification system. This has now been replaced by the co-operative patent
classification system. Now CPC in e-spacenet we already had a look at how the e-
spacenet looks now. So, the European classification system has now moved to the CPC.
Ok. We will come to what this is, what CPC is. I just to tell you that different patent
offices evolved different systems of classifications, and now they are all moving towards
a uniform system.
30
USPC, united states which has more than 100 years history in classification, started off
with something called the USPC, which was the united states patent classification
system. But they moved to the CPC again, the co-operative patent classification. So now,
this classification is jointly developed and run by the US patent office and the EPO.
And that brings us to the CPC, which is the classification system jointly developed and
run by the USPTO and the EPO.
31
Now, this is an outcome of an ambitious harmonization effort to bring the best practices
of each office. So, today US patent office, and the EPO follow the CPC system. And
finally, we have the IPC System.
Now we will start with the IPC system, because the IPC system divides type technology
into 8 sections with approximately 70,000 subdivisions.
So, you should understand the ambit of a classification regardless of what you can think
of, will form will fit into one of these 70,000 subdivisions. You name the invention there
is a category under which it will fall in. So, it has got 8 broad sections we look have a
look at that, and then you have 70,000 sub-division. Almost, anything and everything
imaginable falls into some sub-division or the other.
32
Now, let us have a look at the classification system itself. This you are now at the WIPO
homepage. Now the WIPO has an international classification page. And from there you
can go on to the international patent classification.
Now, this is how it looks. Now in the international patents classification, you can access
the international patent classification, that is the IPC.
33
This is how the IPC looks. Now these are the 8 codes or 8 sections. Human necessities,
performing operations, transporting, chemistry metallurgy, textiles paper, fixed
constructions mechanical, engineering, physics electricity. Very, very broad
classification, but the entire world is within these classifications. More than, as you just
saw, more than 70,000 sub-divisions are there.
Now, how do the sub-divisions look like? All you need to do is just click here or here.
Now it just expands. Now this will give you the codes, what is important here is to look
at the codes. Now B01D is a code B03B is another code. These are all codes for different
categories of invention. So, anything that you can think of will come under this code.
Now, the does that mean that this entire thing of classification is codified, right? Today
we have the IPC and broadly the CPC. Now recently the IPC this is the WIPO has also
introduced a CPC code. Can you see here? This is the CPC code onto the left-hand side
of your screen. So, you could also click on this when you search and it will give you
corresponding CPC codes.
So, there is some kind of measure by which there is harmonization and cross reference to
these codes. We will just look at a quick example where this is put into practice.
34
Now, the international patent classification, there is some write up on this you can get
some information from the links, that have been provided below.
And to make sense of how these classifications work together. You can go to the USPTO
dot gov website. There you have a nice write up on the classification standards and
development.
So, you have the CPC mentioned there. You have the USPC mentioned there. Now they
largely follow the CPC now. And you also have the IPC. So, this is a great source of
35
information as to how these things developed, and what is the implication. Now under
the US patent office USPC, you will find a link where it will give you a search strategy.
Now, this is a document which you can refer to and look at it in some detail.
It gives you strategies on search, brainstorm terms describing your invention access.
36
Access and review cooperation, cooperative patent classification, CPC schema using
USPTOs website. Then they give you the steps and how to do it.
So, this will be a great source for those who want to look at search in some great detail.
And the US you will find the 7-step strategy under the USPC section here. Now let us
just try our hands on some search. Now we can come back to this place, this is the WIPO
page. And let us just look for cricket bat. I am just going to search cricket bat here. And
when I search cricket bat, onto your left-hand side of your screen, I get all the codes
under which cricket bat could be mentioned.
So, I will just keep on the first code. So, that you get to see this, there it is. So, it says
A63B 102/20 is cricket. And 20 is a code which also has other code A62B also has
application of clubs that is a broader category.
Now, this comes under A63B the general code, which is apparatus for physical training,
gymnast swimming climbing, ball games. So, and this comes under A63 which is the
broad category of sports games and amusements. Which comes under a which is human
necessities.
So now, regardless of what invention you are looking at, you will now be able to find the
classification code for it. And when you search for inventions, you can either look for
related patents within that invention; like, what a Google patent search will throw, or you
37
could look for this code. Because now you know every cricket bat that is claimed ever
should have used for this game cricket, they should have used this code. Or they should
have at least used A62B. So, A62B you could search by the code and find all the relevant
prior art.
Now how these different classification systems compare. We just have a screenshot of
what you just saw in the US patent office website.
38
So, the things to note; patent classifications are the best way to look for the prior art.
Doing a keyword search, may help, but that is not the best way. You need to get to some
use, some classification code to traverse the prior art. And there are different patterns of
classification.
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Prof. Feroz Ali
Lecture - 06
Technical Advance
Technical advance, when we talk about an invention. The invention has to make a
technical advance to the art. Now, this is one of the requirements under the Indian Act.
An invention should be capable of showing some kind of a technical advancement over
the existing knowledge.
Now, it is not the entire invention that has to demonstrate this, but a feature of the
invention. Now, let us understand what technical means, technically generally the
definition of the dictionary meaning means having special or usually practical
knowledge, especially of a mechanical or scientific subject.
So, scientific is regarded as technical, you technological means, something that relates to
or is characterized by technology.
40
Now, now when we talk about a technical advance, we are talking about an advancement
that is technical in nature. Now, it could be a change, it could be a technical
development, it could be a technical achievement, or a technical process progress.
Now, this advance is in the overall process of invention, innovation and diffusion of
technology or processes. Now, in general we understand technical advance as
contributing to an invention, or an in innovation, or a diffusion of technology or
41
processes, but in the context of patent law, a technical advance pertains to an
advancement in the existing knowledge.
So, when your invention is compared with the prior art, there is some kind of an
advancement that is expected of your invention to show.
Now, in patent parlance that is in patent law, a technical advance refers to a technical
advance as compared to the existing knowledge now, we will come to the definition
soon, but this is a requirement under patent law now, the reason we are describing this in
some detail is for you to understand that, in a patent specification when you draft a
claim, you have to demonstrate there is a feature in the invention, which shows technical
advance as compared to the existing knowledge.
Now, there are certain best practices in doing that because, sometimes a comparison with
the prior art can be dangerous because, it would look obvious in hindsight. So, we will
look at the safe practices or the best practices to be employed at a later stage. So, an
invention is itself defined as something that comprises of a technical advance.
You may make an inventive step, if you make an inventive step then, you have to there
has to be either technical advance or economic significance. We will come to the
definitions in a moment.
42
Now, invention is defined to mean a new product or a process involving an inventive

step and capable of industrial application. So, it has to be new, it can pertain to a product
or a process, the second requirement apart from it being new is that, it should involve an
inventive step.
The inventive step in turn is defined as a feature of an invention, that involves technical
advance as compared to the existing knowledge, or having economic significance, or
43
both it could be the technical advance and economic significance, and that makes the
invention, this ‘and’ is important here, and that makes the invention not obvious to a
person skilled in the art.
The reason why we say, the ‘and’ here is important is because, the technical advance is
one requirement, and economic significance is another requirement, and they can be
either or both apart from these two requirements, there is the non-obviousness
requirement, in other words an invention should not be obvious to a person skilled in the
art.
Now, this part that you see used to be the part of what contained in the traditional
definition? That is before the Indian law was amended in 2005, that makes the invention
not obvious to a person skilled in the art used to be the traditional definition. This two
features, that is technical advancement and economic significance were added later on.
Now, that has some implications in how you now would draft your patent, but
nevertheless inventive step should demonstrate in one way or the other a technical
advancement, if it cannot show that there is some kind of an economic significance.
Now, the most important feature in this in this definition is the word feature itself.
Because, what you would be doing? When you demonstrate inventive step is to show
that, a feature of the invention has technical advance or economic significance and is not
obvious to a person skilled in the art.
So, it is not the entire invention, that has to be inventive it is a feature of an invention.
Now, this becomes very important in drafting because, if there is an inventive feature,
the way you draft that inventive feature is going to be important because, you are going
to claim protection for that inventive feature and not for the other non-inventive features,
in your in your patent.
So, identifying the inventive feature will be critical for you to understand where, that
inventive feature will figure in the scheme of things, when you draft your claim.
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Now, technical advancement of what? Now, it has to be a feature of an invention, that

feature should involve an inventive step, that feature should be claimed in an invention
as I said, it is a principle in drafting that the feature that involves an inventive step should
be claimed, and the claim of the patent should contain that feature.
Now, certain things to note here, are technical advance is demonstrated by showing
progress, and inventive step should relate to a feature of an invention.
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Prof. Feroz Ali
Lecture - 07
What are not Inventions
What are not inventions?
To be an invention, the invention should manifest in a product or a process. So, you can
only patent an invention which manifests as a product or a process. That product or
process should be new, it should involve an inventive step, and it should be capable of
industrial application.
Now these 3 steps, new, inventive step, industrial application are referred to as the tests
of patentability or the patentability criteria. For something to be patentable, it has to be
new or it has to be novel or it is a novelty requirement, it has to involve an inventive
step. In other words, it should it should not be obvious to a person skilled in the art.
We will come to the details, and it should have some kind of a use or utility, that it
should be capable of industrial application.
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However, the Act in Section 3 and 4 lists a host of things that are not considered as
inventions.
For instance, what is contrary to natural laws, cannot be an invention. A perpetual

motion a machine; that is capable of perpetual motion cannot be subject matter of an
invention because it is contrary to natural laws. Inventions that are contrary to public
order or morality. For instance, if somebody invents a guillotine a machine that is used
for executing people that goes against morality and public order. So, the state or a
country will not grant a patent over a it.
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A scientific principle or an abstract theory. Like E = MC square, cannot be patented.
New form or properties of known substances, what is called section 3(d) of the Patents
Act cannot be a subject matter of an invention. And section 3(d) covers a new form of a
known substance. A new property or a new use of a known substance, and also a mere
use of a known process.
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An admixture of a substance, a substance which just merely mixes other substances to

form a resultant compound or a substance cannot be patented. For instance, for
something to be patented, it has to show synergistic effect that for instance, 1 plus 1
should be more than 2 there should be some kind of a synergy between the substances. In
such cases it would be patentable, but mere admixtures without showing synergy will not
be granted a patent. A rearrangement of known devices. Say, you decide to fit in a gas
lighter within a watch, now that if it is not inventive it will not be granted a patent,
because it is a mere rearrangement of known devices. A method of agriculture cannot be
patented.
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A method of treatment cannot be patented. A plant or animal parts cannot be patented.

But micro organisms are excluded, they can be patented.
A business method or a computer program per se. Source code of a computer program
cannot be patented. Matters that are copyrightable in nature. For instance, literary and
dramatic works cannot be subject matter of a patent.
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A method of playing a game cannot be patented. Presentation of information, the way
you do it, cannot be subject matter of a patent. Topography of integrated circuits, we
have a different law to protect that, it will not come under patents.
Traditional knowledge, again will not be a subject matter of a patent, because they are
not regarded as inventions. Apart from section 3, all these are covered under section 3.
Section 4 deals with atomic energy, anything pertaining to autonomic energy will not
merit a patent.
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Prof. Feroz Ali
Lecture - 08
Why People Invent
Why people invent?
Inventions have their own reason. Inventions could pop up as a part of your job. It could
come because of an outcome of your hobby; that is, the pleasure part of it. Or it could
come as a result of removing somebody’s pain. There is a problem to be solved, and you
solve the problem. So, in an invention could come out of a problem that you solve.
Invention should could also come out of research, that is being done. And inventions can
also be a result of serendipity. Things that are discovered by accident.
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Patenting has it is own reasons too. Not all inventions are patentable. We know that there
are other forms of intellectual property rights which protect, which protect ideas and
expressions of ideas. And not all inventions need patents as well. Because they could be
inventions which could be protected by other means of rights, or they could be
inventions which need not be patented at all.
So, small improvements or small changes, which do not merit a patent grant need not be
patented. So, not all inventions are patentable, and not all inventions need patents. The
utility or what we call the usefulness of an invention is a requirement, which is referred
in the Indian patents act as capable of industrial application, that the invention should be
capable of industrial application. By which we mean that an invention should be capable
of masked protection. You should be able to make multiple copies of it.
So, before you patent, you would see whether there is a market for it; which means it
patenting is a business proposition. There are upfront costs in patenting, which are
sometimes substantial, and if you want to take the pattern to multiple jurisdictions; say,
you want to file patents all over the world, cover the major jurisdictions, then it will be a
expensive process to do.
So, you or the inventor would normally look at the upfront cost, and the upfront cost is
not just the filing cost, but it could also mean the cost that eventually pursue when a
patent is granted. And the cost also it would if the cost will also include the upfront cost.
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The cost of getting the patent granted; that is the prosecution cost. And also, the cost of
maintenance, because patterns need to be kept for a 20-year period, renewal fee which
falls every year needs to be paid too.
So, patenting is something which you would do based on a cost benefit analysis. So,
there is a cost benefit analysis you need to do before you decide whether something
should be patented.
Now, the earlier before we had a inventive step as a requirement. The inventive step
requirement is the you can say it is the second requirement of patentability for something
to be granted a patent.
Now, earlier before India introduced the inventive step requirement. Things used to be
much simpler. They used to call it the new and useful requirement. Now the new and
useful requirement, was centered the old definition was centered around a manner of
manufacture. Now there is a host of cases from United Kingdom which tells us about
what a manner of manufacturers, and they were able to accommodate the growth of
technology, and the complexities it bought through by interpreting this phrase the
manner of manufacture. And the codes also in England developed what is called the
vendibility test. Whether manufacturer results in a vendible or a saleable product.
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Now, this had a direct connect with the fact that what you are inventing should be
sellable. So, so just to show that patenting has it is own reasons. It should also be
factored whether the patenting efforts could actually result in revenue. Utility connects
the invention to the to business. Because once there is usefulness demonstrated, and it
can be made in multiple copies, you can replicate the invention, why would you replicate
an invention in multiple copies? Because there is a great demand in the market.
So, the utility part, or the capable of industrial application part of the patentability test is,
what tells us that an invention could have a demand, and it brings the connect between
patent law and business. So, it is a business call at the end of the day, whether invention
should be patented, and a cost benefit analysis is or or drawing a business plan to put it in
another way, will be very important before taking a call on patenting.
Acts of infringement. This is one way to know that the connect between the patenting
and business is that, the acts of infringement are manufacture as an act of infringement, if
somebody else manufactures a invention that is covered by a patent, you have a right to
stop that person. If somebody else sells a invention that is covered by a patent you have a
right to stop that person. If somebody else markets an invention that is covered by a
patent you have the right to stop that person.
So, your right to stop or is what we call an infringement. You can take action on an
infringement. And all the acts of infringement are actually business activities. They are
commercial activity. So, you will be able to see the connect between patenting as a
business activity. Because since it is so inherently tied to business, it is a business call, or
it is a call that an inventor has to take in investing money looking at whether there will
be possible returns for the money that he invests.
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Now, whether patenting results in a new invention industry or a market. And there has
been certain cases where, it has been inventions have been related to the creation of a
new industry or a market. It may not be true now, but initially patents were granted if
that invention would lead to the creation of a new industry or a market.
Now, inventions can create new markets, inventions can offer solutions to existing
problems. Inventions can redefine an existing problem and solve it. And inventions can
also identify and solve a brand new problem. Now this tells you that there is quite a lot of
possibility in patent drafting. Because if you draft an invention as a solution to an
existing problem, it would demonstrate technical advance what we had covered earlier,
and it would also qualify your invention as a patentable invention.
If you redefine an existing problem and solve it; that is yet another yet another way to
show that your invention involves an inventive step. Because and if you identify and
solve a brand-new problem, again that is yet another way to show that your invention
involves an inventive step.
Now, what is common in all these 3 things is that, there is an problem that is being
solved by the invention. So, the problem that the invention solves could be critical,
because that is one way you could get over a potential inventive step objection, that the
patent office could raise that the invention lacks an inventive step, because it is obvious
to a person skilled in the art.
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So, when you say that there was a problem and your invention solved that problem, you
could get over potential objections of inventive step, because the problem that you
solved existed in the industry and no one else solved. Because you solved something
which others couldn’t do, you could argue that your invention was not obvious.
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Prof. Feroz Ali
Lecture - 09
How Inventions Look
How inventions look? This may look like a simple question; an invention will look how
it is meant to look.
But the question is from a patenting perspective, when you patent an invention, the
object of patent drafting is not to simply describe the invention. The invention will exist
in time and space, and an invention can have physical embodiments.
So, in a pattern specification, when you draft a patent, you will not merely describe the
invention in words. You would not describe the physical embodiments; rather, what you
would do is you would describe the invention, and what we call you would textualise the
invention.
Now, there is a physical embodiment, and the physical embodiment is what you are able
to see and perceive of an invention. Say, an inventor walks into your room with this
gadget which he has newly invented. So, the way the invention looks to a layman or a
layperson is the physical embodiment. But in patent drafting, we are concerned about the
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physical embodiment, but we are more concerned about capturing the physical
embodiment inverts.
So, this is what we refer to as textualizing the invention. So, the invention is textualized
when you draft a patent. Now why is this important? This is important because, in
drafting you are representing the invention in a textual form. So, the physical
embodiment now gets converted into words and figures. Now to give you an overview of
how this looks.
The electric bulb we saw the patent, and there was a description of drawing in the patent.
But the way in which the electric bulb is described in a claim is as an electric lamp for
giving light by incandescent consisting of a filament of carbon of high resistance made
as described and secured by metallic wires as set forth.
So, you see that an invention in reality the physical embodiment may look like any
electric bulb. But in patent parlance when you draft a patent, you are not going to merely
describe it is appearance. You are going to textualize the invention and present it in a
determined manner.
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Printing press. Again, we had seen this invention. Now the printing press would for a
layperson, it will just look like a machine; which is capable of performing certain
functions, but when you draft a patent a claim for a printing press, and this is the printing
press that we had quoted the claim will read as we have described here. That the
elements of the claim have been captured here.
So, the descriptive part, when a patent is described would be in words and figures.
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Telephone again, and here is the claim of the telephone. A system of telegraphy in which
the receiver is set in vibration by the employment of undulatory currents of electricity
substantially as set forth. So, for a layperson a telephone is how it looks to him. But for
the purposes of patenting, you need to textualize the invention in a determined manner in
such a way that you can convey what has been invented and what has been protected.
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Prof. Feroz Ali
Lecture-10
Where to Look Inventions
Where to look for inventions?
Inventions may result out of research publications, or outcome of research. They may
result from a thesis of a research scholar. They may result from problem solving
exercises, where a group of people take up a problem and solve it. They may result from
brainstorming sessions. They may result from projects; people who do a project may find
that something in the process of doing the project, they would come across an invention.
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Now, invention manifest in different places. Now you could find inventions in schools,
science projects. Could be inventive, you could find them in university works done by
professors and students, could be subject matter of invention. You could find knowledge-
based startups coming out with inventions that are patentable, and research laboratories
where scientists work on various discoveries could also be the end products not the
discoveries themselves, but the products that manifest out of their discoveries could be
patentable. And companies which have an research and development department.
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Inventions could also come from there. Now what you do is to find an invention, you
have to look for disclosures. Now disclosure is a written description of the invention, the
disclosure may be in the form of a publication. But publication you have to be careful
because the publication can kill the novelty aspect of a patent. Patent law requires
disclosures to be made first to the patent office.
So, if you make any disclosure into the public domain, without first disclosing to the
patent office then it can kill the first aspect. The newness aspect, the fact that the
invention has to be novel, that may get killed. And if it gets killed then you cannot file a
patent for your invention. So, publications are places where you would find disclosures.
But publications are also capable of killing the novelty of your invention. You could find
disclosures written disclosures like lab notes or thesis or or any kind of written
description of work done.
You could find disclosures in prototypes which have been the initial versions of the
invention itself. You could find disclosures in demonstrations where an invention is
demonstrated or put to use. You could also find disclosures in beta versions especially
with something relating to the use of computer, computers you will find that computer
related inventions anything on the internet would have could have a beta version. So, you
could find you could look for potential disclosures in a variety of places. But because
you are looking to textualize the invention, you would want the disclosure to be given in
a form in which you can prepare the patent specification.
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Prof. Feroz Ali
Lecture-11
How to Catch an Invention
How to catch inventions?
To look for an invention, the first thing is to look for a disclosure. Inventions are nothing
but disclosures which are made in a way in which you can get a patent granted. So, if the
disclosure is patentable, that is what we call a patentable invention. So, where do you
look for a disclosure? A disclosure you have to bear in mind, is a written disclosure
which is different from the physical embodiment of the invention itself. The physical
embodiment is different from the written disclosure. For instance, this is how a remote-
control device looks like, there is an interface, there are some buttons and typically it is
in a standard form. This could be understood as a physical embodiment or how it will
look? If it is in its physical state.
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Whereas, when the same invention is described in a written form, it is described as a

disclosure, here you have an invention this patent describes an intelligent programmable
universal remote-control device, which can be used by a user to control any device, that
responds to commands and via infrared, Bluetooth or other wireless personal network
technology.
Now, the description as you just saw, the written description is much different from the
physical embodiment itself.
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Now, normally you would expect the disclosure to be made, in what is called an
invention disclosure form or IDF for short. The invention disclosure form will have
various columns which you would ask the inventor to fill. It could have something on
what is the field of knowledge, it could have something on the background art, it could
have something on similarities with existing inventions, it could have something on uses
advantages, the inventive features.
So, the invention disclosure form will have quite a lot of quite a lot of information, for
the to be filled by the inventor. Another way to get information from the inventor is, by
interviewing the inventor. This is the traditional way in which the patent attorney
interviews the inventor asks a series of questions, gets replies to the questions and
eventually will be able to get a good disclosure from the inventor through the interview.
How important is the disclosure? Now the disclosure can be used to search the prior art.
So, the how effective the disclosure is? Will result in how good the patentability search
report will eventually be. So, the disclosure can be used to search for the prior art, and it
can also be used to draft the patent specification itself, because it is the disclosure that
the inventor makes, that eventually gets into the patent specification.
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Requirements of a disclosure, now this is the language that is there in the Patents Act it
should fully and particularly describe the invention, particularly means it should describe
it in a in with the details , it should also describe the operation or use, it should describe
the method of performance and also the best method.
Now, the best method is something which would be claimed the best method of
performing the invention will be claimed, and the claims by itself should be clear and
succinct, and it should be fairly based on what was disclosed? The claim of a patent
specification is the concluding part of the patent specification, where a patent, an
invention is claimed and claim should itself be based on the matter disclosed.
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So, this the disclosure is important because the claims are drafted or carved out of the
disclosure. We had just mentioned that, invention disclosure form is one way in which
you can capture the disclosure from an inventor. Now, here in front of you there is a
typical invention disclosure form, you can just have a look at this now this form has to be
filled by the inventor.
So, there is part a which has the contact information, name of the invention, main
inventor, if there are multiple inventors they have to be mentioned nationality, because
your residents can determine certain rules of filing, official designation, contact
information and address.
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Now, information about the patent title of the invention, which technical field the
invention belongs to brief description, the novel feature the, inventive feature and part C,
public disclosure and part prior art, whether the invention knows some prior art and and
you will find that, whether there are scientific publications or patent databases whether
they there are granted patents on it.
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And part D, you could ask for this is entirely an additional information, which some
disclosure forms may request from the inventor market valuation and licensing. What
was the problem that the invention solved? What are the existing solutions? Have the
existing solutions been successful? What does the your invention seek to address? And to
what extent it seeks to address an existing problem? The general features that are
common to your invention.
Specific features, that distinguish your invention now the specific features is, where we
try to understand the inventive features and the ones that have to be patented, that has to
be claimed.
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So, understanding the general features and the specific features will be critical, because
based on that you will be using that input and drafting your claim. Working of a working
example of the invention, now is there a prototype of the invention, if it is not possible is
there a visual representation say, a drawing and whether the invention has been
commercially exploited and whether it has been exploited abroad.
And whether there are any dialogue or whether the inventor had made any disclosure to
prospective buyers and licenses.
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Prof. Feroz Ali
Lecture-12
Getting a Working Disclosure
Getting a working disclosure: Before drafting a patent, the objective of a person who
drafts a patent will be to get a working disclosure from the client or the inventor. The
working disclosure is important, because the working disclosure is what forms the
foundation of both a prior art search as well as the foundation for drafting a patent
application.
Now, we had seen one way you can do this is through an IDF. The IDF helps you to get
the disclosure of the invention. The IDF is a basic document for identifying and
capturing the IP pertaining to an invention. Useful for understanding the scope of the
invention and it is enablement.
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Now, we had seen that an IDF has different parts. It has a part A, it is it has a part where
the contact information is mentioned, the technical information is mentioned, a part
where the public disclosure and prior art is mentioned, and in some IDFs you will find
that, there is a market valuation and licensing also that is captured.
Now, if not through an IDF, then your option is to interview the inventor. Now this could
be in person or over phone. It could be through a series of questions, and based on the
answers that you get you could ask further questions, the object is to ensure that you
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have all the information which can qualify for a working disclosure. A disclosure that
will enable you to do a prior art search effectively, and to start the drafting of the patent
specification itself.
Now, the focus during the interview, as is the focus in asking questions in an IDF is to
identify the inventive step. The focus is on the inventive step, because the inventive step
is what will see the invention through at the end of the day. So, the focus has to be in
understanding and isolating the inventive features from the non-inventive features.
Now, apart from the inventive step which would be critical in drafting the claim, you will
also get information on description and background of the invention. You could ideally
ask the inventor for a document or a piece of information which discloses the knowledge
in the field. Say, you can call it a domain article so that you understand the field better.
You could also get your information through an online questionnaire, where a series of
questions are asked, based on the reply given by the client. The further questions are
asked. This could also be through exchange of emails, but our online questionnaire is
also possible.
Now, you ask certain broad questions, try to understand the field of invention the
probable classification into which it will fall. And then you have follow up questions
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based on the answer you received from the earlier questions. Now if you want to see a
sample of this, you could just log on to this website and and see how a sample works.
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Prof. Feroz Ali
Lecture-13
Searching with the Disclosure
Searching with the disclosure.
Once you have a working disclosure, you do a search to understand whether the
invention can be patented. The search result as we have already mentioned, will be
dependent on the quality of the disclosure. So, how hard you try? Or how rigorous the
disclosure process will be, will actually determine the quality of your search report.
Now, you have to identify keywords because an invention is searched through keywords.
You should also find out the synonyms for keywords, because if there are words which
can have which can be alternatively used, then you would also search the synonyms, and
then do a search of the alternative words as well. And you would also look at words used
by experts, as well as words used by laymen. You would normally avoid trademarks,
because trademarks are not used while doing a search. You would use a generic word
instead of a brand name.
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Now, during the search, you are looking for certain questions, or you are looking for
answers to certain questions. Like, what is the object of the invention, what is the best
method of working the invention and what is the impact of the invention. Once you
understand this, it is easier for you to do the search. Because most likely existing patent
would claim the best method of it is working would describe it is object and the impact
too.
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Now, there are some tips for search, but you would find enough amount of material in
the public domain on how search has to be done. Now you would avoid synonyms for
instant, current can also mean present or upto date. Current can also mean flow of water.
So, you would use Boolean operators to avoid certain words which you do not want to
figure in the search.
You would search databases depending on the scope of your search. Now this is
something which we have covered in the lesson on prior art. And you would look for
patents, you by looking for once you identify certain terms through the keyword search
you would look for related patents in that field. This can also be done by using the
classification code; which is something which we have covered in the lesson on patent
classification.
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Prof. Feroz Ali
Lecture-14
Outcome of Search
Outcome of search. Once a search is done, they could be 3 possible outcomes to that
search.
One it could be a favorable outcome, where you communicate to the client that the
invention is patentable. Or it could be a negative outcome, where you communicate to
the client, that the invention may not be patentable. You do not say that the invention is
never patentable or you do not say that the invention cannot be patented. You always
cautiously describe your report, because you as we said there is no such thing as a perfect
patentability search report.
So, you communicate that there is a possibility that the invention may not be granted, or
it could be a neutral report. The neutral report is where there is a fair chance that the
invention can be granted, they could also be some objections to it where it is a you could
say a 50-50 percent chance of the invention getting granted.
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Now, in the report, you would also you would you would give a patentability report if
the client insists on it. The patentability report will have a brief description on novelty
inventor step and industrial application. It would also have some information about
exceptions to patentability to the extent they are relevant.
Importance of search. A patentability search allows you to identify the white spaces
where you can patent. It helps you to avoid potential office objections which can come in
the future, and also it helps you to understand the field which helps you to prepare the
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patent specification. We have already covered that there are inputs that a patent agent
would get from the patentability report which could be used.
In the next lecture we will see what is a patentability search. And the following lectures
we will discuss the details about patentability search.
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Prof. Feroz Ali
Lecture-15
What is Patentability Search
What is a patentability search? Contrary to popular belief, a patentability search is an

effort, that is directed towards determining whether an invention is obvious or not.
Patentability searches are directed towards seeing whether an invention involves an
inventive step. It is not directed towards determining whether an invention involves
novelty.
Now, this is a distinction that is important to be understood and to be established at the

outset. There is a provision in the Indian Patents Act. Section 13, which calls for a search
for anticipation by previous publication or by prior claim. Now in other words, this is a
search that is done by an examiner when an application is filed.
The objective of this search is to ensure that the invention as it is covered in a patent
application has not been anticipated. So, in common parlance when you talk about a
search, it is easy for somebody to focus on a search for novelty. But patentability
searches throughout the world are directed in determining whether there is inventive
step, or whether the invention is obvious or not.
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Now, the reason an applicant may want to do a patentability search is to determine the
chances of obtaining a patent. Because once you are reasonably confident about the
inventive step, then the chances of the patent being granted other things being satisfied
are much better.
Now, in a patentability search, there are a series of events that normally happens which
culminates into a patentability search . By convention, especially in the advanced
jurisdictions like United States, a patentability search is not done by the patent attorney.
It is not the person who drafts the patent who does the search. It is done by a different set
of professionals called searchers.
So, let me just list the list of sequences that would normally happen when a patentability
search is requested for. Number one, a search request is made by the patent attorney to
the searcher. And this search request would indicate what is the time and cost that has to
be expended in the search. Because that is critical. It defines the invention, or the
disclosure of the invention which needs to be searched. And it also gives some broad
categories of areas where the patent has to be searched for.
Once this is done, the second step will be to actually do the search. And this search is
done by the searcher. Once the search is done, the third step would be to review the
references developed by the searcher. Because a searcher may use a free database like a
database provided by the various patent offices or by free patents online or by google,
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googles patent search. Now the what what the searcher would do is he will first collect a
set of references. Now the third step involves reviewing these references. And the fourth
step would be to report the results to the client, which could be the inventor himself, if
the searcher is directly dealing with the inventor or the patent attorney.
How this report is communicated can have certain implications in patent law. Now one
thing that needs to be understood well is that a patentability search is not a search of
validity. When you do a patentability search, when you do a search, it does not guarantee
or it does not warrant the validity of an invention.
Now, this is clear from the language of section 13(4), now we have section 13 here.
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And section 13(4) tells us that the examination and investigations required under section
12, which is done by the patent office and this section which is section 13 shall not be
deemed in any way to warrant the validity of any patent.
This tells us that the search does not warrant the validity of a patent. This also tells us a
patentability search is much different from a inquiry into the validity of a patent. Now
section 12 and 13 deals with aspects of search aspects of validity are dealt in section 64,
which lists the grounds on which a validity can be questioned.
So, these 2 things are completely different. So, you need to bear in mind that a
patentability search is not a report on the validity of a patent. The validity of a patent
requires a much more in depth analysis, and the validity report will actually give make a
statement on whether the patent is valid, what are the conflicting reasons, or the give that
give out the reasons why the patent should not be granted, or why it can be invalidated,
in case of a granted patent.
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Now, a validity report or what we call a patentability study would be used in at least 3
different situations. One, it could be generated by a defendant in a patent infringement
suit; where the defendant wants to raise a counterclaim to invalidate the patent.
So, a counterclaim or the defense of invalidity can be raised in a patent infringement suit
by the defendant. So, for the defendant to know whether the patent is valid or not, the
defendant could initiate a validity study. Now the second instance could be where the
patentee could ask for a validity study to ensure that he has a good chance of surviving
on patent infringement suit; where invalidity has been questioned. The third scenario
where a validity study will be relevant is to ensure that licensee or a person who is trying
to buy out patent can have an understanding on how much the patent is worth. So, the it
is an equivalent for or it could be used as a measure for understanding the value of a
patent.
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Prof. Feroz Ali
Lecture – 16
Reasons for ordering a Patentability Search
Reasons for ordering a patentability search. Since a patentability search is undertaken to

determine whether to file a patent or not, there could be at least 5 reasons why you
should order a patentability search. The first one is the cost. The cost of generating a
patentability search is much less than the cost of filing a patent application. The
patentability search gives you an indication as to the chances of getting a grant. So, it is
kind of a wrist risk mitigating effort. By generating a patentability search, you would
know the chances of a patent being granted.
So, if you are operating in a heavily crowded field, where there are other patents, or if
your invention is an invention that would not be granted a patent due to certain
objections or exceptions in the patent law, then you would save much more in costs if
you get a patentability search done rather than filing a patent, and then realizing through
office objections that your invention cannot be patented. So, there is a cost factor
involved. The first reason why you would engage or order a patentability search is to
save costs.
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The second reason is that a patentability search which generates a report can help you to
prepare a better application. The drafting can be improved, because once you generate a
patentability search you would know what are the features of the invention the inventive
features we had already discussed that in one of our earlier lessons, what are the
inventive features that can be patentable. Because the prior art search or the search report
will tell you the earlier inventions of a similar nature. And what were the features of
those inventions that were patentable.
Now, this report will help you to determine the patentable features from the non-
patentable or the trivial features. Now this is important in drafting. So, in cases where the
patent attorney does not have a fair understanding of the field, then this will be critical in
helping the patent agent to determine what should be the inventive features that are
claimed, and what are the non-inventive or non-patentable features that should not figure
in the claim. Now there is also another advantage in generating a patentability search
report.
Now, in preparing an application, if there are portions of the prior art which could be
reproduced into your patent application while drafting your patent specification, you
could kind of copy and paste those prior art references with proper by giving the proper
reference, and that could save quite a lot of time and effort in drafting. So, if there are
prior art disclosures which forms a background for your invention, you could just use
them from other patent applications, provided you give the references to it.
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Now, the third reason could be reasons pertaining to commerce. Now the reason why
people file patents are to get a exclusivity in the field. Now a prior art report or a
patentability search report will tell you whether you can achieve exclusivity by filing a
patent. It can also tell you what are the alternates or or what are the possible ways in
which a invention can be overcome through alternatives. Now this will give a fair chance
of getting a patent or what are the chances of others imitating your invention, because if
it is a crowded field then it is quite possible that a competitor could license another
invention from and from another granted patent, and still be in the market with the
product.
So, the chances of obtaining a patent as well as the chances of getting an exclusive
marketplace for your invention will be the commercial reasons that will come out of a
patentability search. Now because filing patents involves a substantial investment in
terms of money a patentability report can tell you whether you have to make that
invention, a substantial investment is involved in patenting and if the value of the
invention is critical for the inventor, then the inventor may choose to go beyond a
patentability search and ask for a validity search or a validity study.
We had already brought out the distinction between these 2 reports. The 4th reason could
be a patentability report can help in avoiding what is called prosecution history estoppel.
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Now, prosecution history estoppel is during the course of prosecution, you may give up
or you may narrow down a claim in order to avoid a prior art. Now when you narrow
down a claim, there are some principles like the doctrine of equivalence, which will not
have an application when you narrow down a claim in the course of prosecution.
The principle that is the doctrine of equivalence will have a limited application. Now by
performing a prior art search, and by generating a patentability search report, you would
understand as to how to draft a claim in such a manner that you can protect yourself, or
safeguard yourself from a future amendment. Now how is this done? This is done by
understanding the field through the patentability search. So, this principle was
established in the festo case in the United States.
So, a patentability report can help you to avoid a future amendment, and a future
amendment as I just mentioned could be hit by the prosecution history estoppel, whereby
if you give up something during the course of prosecution, the benefit of a broader
interpretation which is what was referred to as the doctrine of equivalence will not be
extended to the patent applicant. The fifth reason could be that the patentability search
report can help you to be determine whether to file foreign applications. Usually, the cost
of filing international applications is very high. So, a patentability report would let you
know what are the chances of an objection that could come. Because, the patentability
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search report depending on the mandate you give to the searcher can also search for
jurisdictions where you want to enter eventually.
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Prof. Feroz Ali
Lecture – 17
When a patentability search is not needed
When a patentability search is not needed there are at least three cases, where you will
not need a patentability search or rather doing a patentability search would be
counterproductive. The first instance is when the client cannot afford both a patentability
search, and the filing cost for filing and drafting a patent application. So, that is
something which will depend on the amount or the budget the client has for filing
patents.
So, if the client operates on a tight budget, then it would not be advisable to go in for
patentability search report followed by the filing and drafting of a patent itself. And
especially, in a market like India, where the cost of search can be substantial, it would
put the client in a precarious position, because a client would end up expending a huge
amount of money for the search and then later on could eventually realize that there was
nothing to patent at all. So, the first thing to consider is the affordability or whether the
client can afford a search report to be followed by the filing of a patent application itself;
you would rather prepare and file the patent application itself, this could be a result of
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either the client wanting to publish a paper like say if the client is a professor in a
university he could be in a hurry to publish his paper.
So, you would not then get into a patentability search report you would rather file a
provisional. If that is the best course to follow or the client would want to release a
product or they could be some interest in filing abroad. In all these cases you would not
go in for a patentability search report, because timing could be critical. In cases where,
there is a constraint of time, one approach you could follow us to prepare a search report
and simultaneously also draft the patent application now this could be done
simultaneously.
So, that time is saved and the objective of the patentability report improving the drafting
process is also achieved by doing this. Which means as you draft the patent application,
the patentability search report will inform you how to claim? How to make changes?
How to fine tune the application? How to get our prior art and various other things;
which we have seen could be the benefit that comes out of a patentability search reports?
So, one approach even, if there is insufficient time is to do both the search and the
drafting simultaneously.
The third reason why you would not go in for a patentability search report is, when there
is nothing that will be achieved by generating a patentability search report. This is, if the
technology is very new that there is no not much literature to be searched or
traditionally; the technology has been kept as a secret as it is in some fields or there are
very few players in the field. So, in in all these cases you would not go in for a
patentability search report, because there is nothing much to be achieved by getting one.
You would also not go in for a report, when the client has enough knowledge which is
not found in the field, if you would do a search. For instance, some university professors
may have cutting edge knowledge about their field which would be much better than
what you would normally get by doing a search report. So these are the conditions in
which you would not go in for a search report, but the search report as we have already
ah shown in our earlier lessons could bring substantial value into the drafting process.
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Prof. Feroz Ali
Lecture – 18
How to order a Patentability search
How to order a patentability search? There are certain factors you will consider before
ordering a patentability search. The first thing will be in selecting a searcher. Now you
would normally select a searcher who is competent in a particular technology. Now
searchers specialize in different areas, they could be searchers who are specialized in
electrical chemical, metallurgical or electronical and biotechnology. Or they could be
specialized in computer related inventions or in mechanical inventions.
So, you would identify your searcher. So, that because the searches task is to be aware of
the domain knowledge. And if a person has a background, then you could expect a better
search from that person. You could also have different searchers doing different parts of
the job. For instance, you could have one searcher to look at all the patent office files.
that is the prior art from the patent office. You could have another searcher who is who
has the competence to look at non-patent literature searches. And you could also have a
another part searcher looking at a foreign patents for the same invention.
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So, the results of a search could be a product that comes out of the work of different
searchers who have searched different categories. Secondly, you will stipulate the
information that needs to be included in the search request. Now the search or the quality
of the search will depend on the information that you have supplied. If you have
drawings of the invention, then it becomes much easier for the person to understand the
invention and to generate a report based on that. So, you would normally discuss with the
searcher as to what are the things that the searcher should look for, and what is the time
and resources that you will be putting into the search.
So, there is a budget for the search, and you will describe within that budget what needs
to be done. Now you would also say to the searcher whether the search should confine to
only materials that are patents; that is, the patent literature, or whether it could also go
beyond the files of the patent office, and which is what we call a non-patent literature
search. And there are different databases both free and paid, which could be used for a
searching. The third thing is to describe the scope of the search.
Now, if you are filing an Indian patent, then you would normally want the search to
cover the Indian patents. And also, prior art which could be relevant. So, or if your
search is particularly to enter a particular jurisdiction; say, a foreign filing then you
would stipulate that you need to understand what is the patenting on this invention in a
particular jurisdiction. So, or you could also you could also stipulate whether the search
should contain patent literature and on patent literature.
So, in all these cases, you would be describing the scope of the search based on which
the search report will be generated. Now the fourth thing you would consider is the cost
normally the cost of a search is fixed. But in some cases where they could be the field or
the complexity of the field or the technology involves more time to be expended by the
searcher, then you would have a variable component where depending on the number of
hours, extra hours that is being spent the the remuneration or the fees would change.
The fifth thing is to stipulate the mandate of the search through a request letter. Now this
is done by writing to the searcher stating what needs to be searched, if it is the Indian
patent office you would say that this invention is to be filed in the Indian patent office,
and you would want to search all the patents in the Indian patent office. If there are some
further information like a description or drawing that needs that can add further clarity.
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Then you would disclose that to the searcher, if there are classification that you know
which needs to be searched, you would stipulate that to the searcher.
And if there are novel features of your invention, the features which you consider to be
inventive, you would also tell the searcher that these are the inventive features. So, that
the search is done comparing the inventive features and leaving out the non-patentable or
the trivial features. Now you would in your request letter, you would also stipulate a
deadline. So, that the search is done within a timeframe, and you would also stipulate in
your search letter, if the work involves further additional work so that the terms are
flexible. So, you would give further authorization for the person to do additional work in
case it is required.
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Prof. Feroz Ali
Lecture – 19
Limits of patentability search
Limits of a patentability search. The patentability search has it is own limitations. The
very nature of search involves looking for prior art documents which are codified, or
which are recorded in some form of a database. So, in practice when a search is being
done we are referring to searching online databases. So, anything that is codified and
searchable, and available to the searcher may catch the attention of the searcher. There
could be n number of prior art material which are not codified or recorded or available
on an online database for search.
All those prior art material will still be relevant can easily knock off the invention, but
will not be available when a search is being done. For this reason, we say that no search
is perfect. And there is no search thing as a perfect search, and a perfect search is not
something which anybody should even endeavor to do. The reasons being, in a search
you would be trying to prove the negative. You would be looking for prior art to destroy
the invention, or which can kill the novelty. Unless you find it, you will only return by
saying that such a thing could not be found.
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Secondly, the quality of a search depends on the quality of the input in the form of a
disclosure that has been given. If the disclosure is not up to the mark, there are chances
that the search will not yield the best results. Thirdly, there could be some key references
that are missed out in certain databases or which do not throw up in certain databases,
and and it could be a reason for missing out something which was already there. Fourthly
the keywords that you use may not cover all or capture all the variants in that particular
field. And that could be a reason why you miss out a critical reference.
Fifthly, you could be searching in the wrong classes. Now for this and for many more
reasons we do not consider a search to be a perfect reflection of patentability of our
invention. If you require a more detailed analysis of the invention, then what is needed is
what we called a validity search or a validity study. A validity study is much different
from a patentability search, and it involves determining whether an invention is valid or
not. So, these are the limitations of a patentability search, you would normally advise the
client about the patentability search, because of these limitations so that there are no
unreasonable expectations from the client.
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Prof. Feroz Ali
Lecture – 20
Patentability Search Report
The patentability search report; Once the patentability searches are done, the searcher
would generate a report. The report will usually cover the following things; one it would
detail the subject matter of the search, it would detail the references that the searcher
came across during the search, it would have a discussion on the references that are more
relevant. And it would also contain a brief discussion on the patentability criteria what is
novelty, what is inventive step and what is industrial application?
The report will have a conclusion whether the conclusion is a favorable one, favorable
we mean that the invention can be patented. The conclusion could be a negative one
stating that the invention cannot be patented or may not be patentable. And the
conclusion could also be neutral saying that there is a fair chance it can be patented, but
they could also be objections to it and the report will end after the conclusion with the
rider saying that there are this report has certain limitations.
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Now, there are reasons why some professionals do not communicate patentability search
report; when the search turns out to be negative; in the sense that the results of the search
states that you cannot patent this invention.
Now, the reason why they do not communicate it is—one they could have been wrong
the professionals while doing the search they could have been wrong and they do not
want to give the client something in writing to say that this particular invention cannot be
patented.
Additionally this information if it pops out could be used in litigation against the client at
a later stage to state that; this client actually got a report saying that it is not patentable
and still went ahead and patented it and got the patent granted by some means. And we
had already mentioned that there is no such thing as a perfect patentability search. So, the
report; a negative report is normally not given in writing, some professionals just
communicate over the phone for this reason.
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Prof. Feroz Ali
Lecture – 21
How to Pitch an Invention
How to pitch an invention? Inventions should be ideally pitched as concepts. When we

say pitch, we refer to the way in which an invention is presented to the patent office. And
that will be critical when you draft a patent specification because patent specifications
are essentially presenting the invention to the patent office. So, how you pitch the
invention or how you present the invention to the patent office can be critical for it to get
granted; and more importantly how the patent will be enforced in the future.
So, one of the approaches for presenting inventions is to present inventions as concepts.
Let me explain that you in greater detail. Let me ask you this question can you foretell
the future? Or at least the developments that are going to take place in your field in the
next 5 years, it is very hard for us to predict the future or even to make a reasonable
assumption as to what would happen; for this reason, patents are documents which are
written in the present and read in the future.
If you draft a patent application today the chances of it being examined will be a few
years down the line. And in case the patent is granted and it ends up in the court in an
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infringement proceeding then the court will be looking at your patent and trying to
interpret the terms in the patent, probably 5 or 10 years down the line. Which means or
which tells us that patents are documents which are written for the future in other words
patents have to be future ready.
So, one way you make them future ready or capable or these documents to withstand a
scrutiny in the future is to word the invention as a concept. Now there are limitations to
this approach, but understand that rather than merely describing the physical
embodiments in an invention it pays to craft an invention and present it as a concept.
So, we start with the fundamental principle that concepts are not description of the
physical embodiments. So, when you elevate the pattern to the level of a concept, you
are simply not describing the physical embodiments. Description of the physical
embodiments is what you would do in a normal technical explanation of the invention. If
you have to do some technical writing about the invention then you would normally
describe the physical embodiments and how they work.
The need to elevate an invention as a concept comes because you are essentially carving
out property rights when you draft a claim for a patent. You are trying to carve out or
make an intellectual property right, which can be used for people to know where the
limits of your property are. So, that they do not encroach upon it, what is called infringe.
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So, you demarcate the limits of your property very clearly, and you also describe the way
in which your invention is made and the way in which it works. So, there is a descriptive
part that comes out in the patent specification where you in detail disclose the working of
the invention. And there is also a claiming part where you demarcate the boundaries of
the invention. So, that it becomes private property.
So, the question you should ask is whenever you see an invention either the physical
invention itself or when you read an invention disclosure form, are you able to envisage
the concept behind the invention? Because this is critical for the purposes of drafting.
Now conceiving the invention not just as a physical embodiment, but as a concept is
critical because when an invention is elevated and described as a concept it stands a
much better chance for the invention to be granted one in the first place. And secondly, it
also can withstand a challenge that can come in the future.
Now, this process of elevating invention to a concept is what we call textualisation of the
invention. The invention is actually the physical embodiment. If you describe the
physical embodiments in technical language it is still a description of the physical
embodiments, but when you textualise the invention you are not you are the purpose of
the textualisation is not just to describe it. You do describe it in the patent specification,
but because there is an additional objective of claiming something as a private property,
claiming something as a private right you would create or you would draft the claim as a
concept or you will attempt or you will endeavour to draft a claim as a concept.
So, elevation of the invention to the level of a concept helps to create a principle or a
concept of an invention. This is very similar to taking a specific thing and trying to
generalize it. Again, there are limitations to the way in which this can be done, but this
should give you an idea about claim drafting; that claim drafting is not simply the
description of the physical embodiments.
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Now, to do that you need to look at the inventive concept, what is the inventive concept
in the invention? What is the concept that runs through, and the concept that is
inventive? There could be concepts that are not inventive in the sense that elements and
features that are common to other inventions as well, but you should be able to identify
the inventive concept when you look at an IDF or when you interview an inventor.
Now, there is some amount of abstraction involved in this exercise because you will take
the invention to a level of abstraction and that is not a level of abstraction where you do
not know what the invention is. But this is different from looking at the invention as an
abstract idea because abstract ideas per se are not patentable, section 3 of the Patents Act
prohibits claiming or even patenting abstract ideas. What we mean by taking it to a level
of abstraction is we try to create a specific event into a broader general statement which
is applicable in multiple cases.
So, the abstraction that we are talking about is the inventive concept, it is not the
inventive feature because the inventive feature will be there in the claim, but you try to
create the feature in or you try to elevate the feature to the level of a concept. Now the
inventive concept itself is mentioned in section 10(5) of the Patents Act. It reads the
claim of a complete specification this is just the abstract of it of a complete specification
shall relate to a group of inventions linked so as to form a single inventive concept.
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So, inventive concepts can be claimed, and there is some direction in the Patents Act as
to how that can be done.
Now, the drafting exercise is essentially a exercise of moving from the tangible to the
intangible, tangible because there is a physical embodiment, the invention exists in time
and space and it can be physically felt or what can be touched. Tangible. The claim in
most cases will have some abstraction in it which would make it intangible.
Now, the danger of defining the physical embodiment is you will just be describing the
tangible parts of the invention, and you will not be covering the invention as a concept.
And the danger of that is that others will be able to imitate your invention and get away
with by infringing the invention and you will not be able to stop them, because if you
literally claim the descriptive part of your invention it will be very hard for you to
withstand the onslaught of an infringement case tomorrow because you will not be able
to demonstrate that your claim was broad enough to cover that variant or that minor
improvement to your invention.
Now, and this is the reason why we refer to intellectual property rights as intangible
rights, and they are intangible in the sense that the rights manifest in a creative work that
went into the invention. Now by defining the physical embodiments you will be limiting
your rights. So, we look at the inventive concept in the embodiment, and capture the
inventive concept in the claim. A claim defining the inventive concept which is an
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abstraction of the invention. So, the claim does the job of de marketing the rights in the
invention whereas, the the descriptive part of the patent specification describes the
invention.
So, there are two functions that the patent specification would do. One part of the patent
specification will describe in detail how the invention works, how it performs, various
examples illustrations drawings and the other part the concluding part which is called the
claim; captures the inventive concept in a language that can be applied to multiple
scenarios. So, the claim defines the scope of the invention for which protection is
claimed. This is again mentioned in section 10(4)(c) of the Patents Act.
Now, to put this into practice let us look at the example of a paper clip the. Paper clip is
defined as a piece of bent wire or plastic used for holding several sheets of paper
together. This is a common definition as we understand. Now let me also show you a
claim for a paper clip there are multiple patterns on the paper clip I have just chosen one
so that, you can understand the difference between a mere description of the physical
embodiments, which is what a dictionary definition of paper clip does. And the
difference between a claim.
Now, this is how the claim looks, a paper clip made of a single piece of metal wire
comprising now I have highlighted certain words and certain colors I will soon explain
that we will be we will be having a more detailed discussion in the in the coming lessons
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on this. An isosceles triangle base portion having a base arm and 2 isosceles arms
extending from 2 ends of the said base arm respectively and contacting each other at a
first connecting point, then it is one single sentence because by convention patent claims
are drafted in a single sentence. And then there is a second part to the sentence, the first
clipping portion having 2 clamping jaws extending apart outwardly from the said first
connecting point of the said isosceles arms and bending upwardly and reversely
approaching to contact each other at the second connecting point, whereby to permit a
relative number of documents to be clipped there between and there is a third part.
A second clipping portion including 2 horizontal arms contact closely and parallel to the
said 2 isosceles arms respectively so as to clip less sheets of documents. Now this if you
see the first part of the claim which begins a paper clip made of a single piece of metal
wire comprising. This is traditionally called the preamble. The other parts whatever
follows are what we call the operative portion or what is what includes the invention
concept.
Now, the words highlighted in red are called transition terms comprising, extending,
contacting, extending, bending, approaching, including what this does it it it allows a
transition to happen. So, it allows more information to come about a particular a
particular element. Now I have highlighted in green the 3 parts of the inventive concept;
there is a base portion there is a first clipping portion and a second clipping portion and I
have also highlighted in purple at there are 2 connecting points, the first connecting point
in the first in the second paragraph and the second connecting point.
Now, what I have highlighted in brown way by to permit and in the last line so as to clip
are the purpose for which the clip is being made, to hold a relative number of documents
or to clip less sheets of paper. Now this tells us and I have also given the patent number
this tells us how to claim a patent for a paper clip as a concept. So, anything that comes
within this, where there is a base portion which has a base arm and 2 isosceles arms and
has a first clipping portion and a second clipping portion as described here will be
covered by this patent. So, if there are improvements minor variations made to this
concept this concept should be able to stop those minor variations or infringement as we
would call it in legal parlance in the future.
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So, because claims are drafted for the future it needs to be written in this language. Now
you should be wondering how this particular pattern looks like.
Now, this is how it looks like now these are drawings taken from the patent itself. So,
figure one describes the prior art and figure 2 describes the invention.
Now, the lesson that we take from here is that inventions should be equated as concepts,
there are certain things which you would do to achieve that. You identify what is needed
to solve a problem in the art that is the problem solution approach which will be discuss
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in greater detail in the coming lessons. You elevate the invention to the level of a concept
and draft the claim covering the concept. What you will avoid is explaining the physical
embodiment in the claim, specificity in the main claim and implementation details. This
can narrow down the scope of your invention. So, you will try to avoid it.
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Prof. Feroz Ali
Lecture – 22
Identifying the Inventive Concept
Identifying the inventive concept. How do you identify the inventive concept? When you
are presented with an invention, either the physical invention by the inventor or the
description of the invention in an invention disclosure form, how will you identify the
inventive concept? Now there are ways to do this.
One is the problem solution approach, and we will be basing our lectures based on the
problem solution approach. By the problem solution approach, we focus first on the
problem that the invention solved. Because you would expect that if you have something
that can be termed as an invention, which is new, which involves an inventive step, and
which is capable of it industrial application
Then you could expect that the invention did solve some problem. And in fact, one of the
determinants of inventive step in various jurisdictions including India is to see the
problem that was solved by the invention, and if it solved a problem which was not
solved before or not solved effectively before, then the patent office will presume that
there is inventive step.
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So, what do you focus on? Do you focus first on the problem? Or do you focus on the
solution? Focusing on the solution because the invention itself is the solution to the
problem will could lead you to describing the invention as its physical embodiments are.
If you focus on the solution, which is the invention itself, you may end up describing the
invention as its physical embodiments, its a physical parts. Whereas, if you focus on the
problem, the chances of you elevating the invention to a concept are much better, and
there are reasons for that.
So, to conceive the invention as a concept, you need to focus on the problem. Because if
there are small variations, or improvements to your invention which can which other
competitors can come up with, then if you had focused on the problem, then you may say
or you could argue that the variant or the improvement solves the same problem which
your invention is directed towards, and since you have claimed the invention as a
concept, you could say that you had already envisaged that little improvement or variant
into your invention. And the chances of you or your chances of able to stop that person
could be on the higher side.
So, we focus on the problem first approach. So, the problem first approach makes you or
helps you to focus on the problem that the invention solved and not on the embodiment.
Because the embodiment is what would have been described in the IDF or would have
been shown to a patent attorney.
So, the good invention solves a problem that others did not. It differs from the prior art
and corrects earlier mistakes. So, what you need to ask is, ask not what the invention is,
but ask what the problem, what is the problem that the invention solved. Now this will
help you to look at a concept before drafting your claim.
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Now, there are different approaches to drafting. One approach is to draft the claim first
so the you look at the invention, describe it. So, you first draft the claim, and then you
fill in the descriptive part. The other approach is to draft the description first. The
description is first drafted, and then from the description the claim is done. The claim is
kind of crafted out of the description.
Now, the advantages of drafting the claim first is that the claim would be for a specific
embodiment. So, if you draft the claim first, then you could broaden the claim, for
instance if there is mention of glue in the invention you can you could broaden it to
different types of glues you can ask you can use a broader word; like, adhesive, and you
can the limitations remove to the claim as broad as the prior art allows. So, you can look
it to the prior art and see what are the limitations. And you could remove those limitation
as far as the prior art will allow you to do that. And the limitations should aid in
distinguishing it from the prior art.
So, all the limitations that you add in the claim would be for the purpose of
distinguishing the prior art. So, the advantage of drafting the claim first is it allows you
to elevate the invention to the level of a concept. So, you first draft the claim and then
move towards the description.
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So, the problem solution statement is what will be your step. First step to elevate the
invention to the level of a concept. So, you ask what problem did the invention solve. So,
envisage the invention as a solution to a problem. And the problem solution approach
will be to craft the first statement of the invention as a solution to a particular problem.
The problem of dash was solved by the invention dash, you can fill those blanks.
So, let us just see, what problem did the paperclip solved. Now the paperclip solved the
problem of managing papers without damaging them. Whereas, if a pin or a stapler
would have damaged the paper. So, it solved the problem of managing papers. What
problem did the pencil solve? it solved the problem of being able to write on hard
surfaces or rough surfaces. What problem did the ballpoint pen solved? To the ballpoint
pen solved, the problem of your ability to write with a container where which could store
ink.
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Now, let us look at the ballpoint example in some detail. Now there is a patent for the
ballpoint pen, one of the early patents. And the patent which is described here, you can
see the figure, it is an 1888 patent, this for the ballpoint pen. Now there are certain
features in a ballpoint pen. For instance, there is a cavity where the ink is stored, and the
cavity regulates the ink flow.
There is an aperture for holding the ink, which is much different from the prior art if the
ink if you look at pencil to be or crayon to be a prior art for the ballpoint pen. Then there
is no aperture for holding ink. And there is a spheroidal marking point. There is a
spheroidal marking point, what is described as l in the drawing is another feature of the
invention.
Now, how do you decide which would be the inventive feature for this invention? Is at
the capacity to regulate inflow, ink flow? Is at the aperture for holding ink or the
spheroidal marking point? Now it is easy for you to identify the inventive concept if you
ask yourself the question what problem did the ball pen solved.
The ballpoint pen solved the problem of writing on rough surfaces. Because you could
not write on rough surfaces with a fountain pen, let us assume fountain pen was the
earlier prior art for this invention. The fountain pen could only write on smooth surfaces
paper. But the ballpoint pen you could use it on rough surfaces like cardboard and on
other surfaces as well.
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So, this problem was solved by the ball pen. Now you ask yourself, what is the most
critical part feature for solving the problem of writing on smooth surfaces. Now you will
conclude that it is not regulating the ink flow, it is not the aperture for holding ink, rather
it could be the spheroidal marking point.
So, expectedly the claim for this pen was simply append having a spheroidal marking
point. Now the focus of this spheroidal marking point comes out of the problem the
invention solved. So, the focus should always be on what was the problem that the
invention solved and what feature of the invention went to solving that problem. And
you claim that feature as an inventive feature in the claim.
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Prof. Feroz Ali
Lecture – 23
Problem Solution Statement
Problem-Solution Statement; once you have the disclosure which can come into your
hands by way of an invention disclosure form or by interviewing the client, your focus
will be to come up with a problem solution statement as soon as possible.
Now, the problem solution statement becomes the first step towards drafting because till
then your focus was on getting disclosure from the client and we had already spoken
about how to get a working disclosure, a disclosure that can not only take care of doing a
prior art search, but which can also facilitate in the drafting process.
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So, the statement, the problem solution statement should be a one sentence statement, it
should be in one straight sentence, it should capture the invention broadly without
reading into the prior art. Now, these are very basic requirements before you draft the
problem solution statement, we say that it has to be in one sentence because claims are
traditionally drafted in one sentence by convention.
They are a single sentence, they are written in a single sentence and they have to capture
the invention broadly because we are not going to get into specifics in this effort because
this will be the first effort in capturing the invention in the form of a claim and all the
dependent and other claims that you would eventually draft would come out of this.
So, the problem solution statement is your attempt to come up with the main claim or the
independent claim if there is only one independent claimant for the invention. So, it
should be stated broadly and it should be done without reading into the prior art because
once you have the disclosure, you would have seen the prior art to see, whether there is
any overlap of the disclosure into the prior art. If there is overlap, then that is something
which you cannot claim or if you claim you may run into an invalidity, rejection, later on
either at the patent office or by a challenge by a competitor.
So, there are two things, the problem solution statement should focus on. One is the
problem; what was the problem solved by the invention. So, you define or give a
definition to that problem. You in the first part, you try to define the problem and the
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solution the invention that was made by the inventor. So, you in two parts, you try to
describe the problem solved by the invention or the problem to which the invention is the
answer and you also try to present the invention as a solution to the problem. Now, this is
being done. So, that you can create a narrative on the invention because if you look at
any patent specification, they read like a story it is the story of the invention to put it in
other way.
One of the benefits of having a problem solution statement or having the problem
solution approach dictating your patent drafting is that you can be consistent throughout
your patent specification; when it comes to the background art, when it comes to
describing the invention, when it comes to detailing the embodiments and while
claiming, if the problem solution approach is taken, then that can be the underlying
theme that holds your patent specification together.
So, creating a story or a narrative on the invention; this helps you to do that. Now, let us
look at how a statement looks like. Now broadly this is the template of the generic
statement in itself the problem of dash is solved by dash. Now, this two blanks can be
filled by for any invention whatever you come across to because we would assume that a
new invention solves a particular problem which has not been solved before it addresses
an unsolved problem. So, if the problem is something which you can define, then you
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would define it in the first blank and you will define on describe your invention in the
second blank. Now, let us look at a few examples of how this can be done.
So, this is the generic statement. The generic part in the problem solution statement ‘the
problem of’ ‘is solved by’ everything else, which you would eventually fill in the blanks
can vary. Now, let us take a look at a few examples the problem of holding a stack of
paper without damaging them is solved by a bent wire clip. Now, this is crude
manifestation of claim for a paper clip.
So, what problem did the paper clip solved, it solves the problem of holding a stack of
paper without damaging them and how was it solved, it was solved by a bending a wire
clip; let us look at another example.
The problem of non uniform heating of food is solved by moving the food while it is
being heated now if you look at a microwave oven you will find that there is a base plate
which is capable of rotating. Now this actually addresses the problem of non uniform
heating of food. If the food is kept static in a microwave oven it will not heat, get heated
uniformly. So, this was simply solved by just keeping a rotary motor at the bottom. So,
the problem is defined and the solution is the invention in this case.
So, now, you know when you write a problem solution statement you know how to
present the problem and look at how to pitch the invention as a solution to the problem..
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The problem of writing on rough surfaces was solved by a spheroidal marking point.
Again this is the ball pen pattern that we had seen earlier. So, writing on rough surfaces
was the problem that the ball pen addressed. So, this is the in which a problem solution
statement would capture the essence of the invention.
We had already seen the other alternatives in our earlier lecture as to what could have
been the different kinds of claims that could have come out of a ball pen and the reason
for choosing the particular problem is that it expands the scope of the invention and it is
what the inventor eventually claimed.
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The problem of holding seams together was solved by a mechanism for serially engaging
clasps on opposing seams, now this is how a zipper works.
Now, in drafting the problem solution statement what we call the P-S statement, you
need to bear certain things in mind, keep in mind that it is a draft. So, try to keep it
simple and keep it broad because this is the first statement from which we are going to
create a claim.
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Now, when you get the clients input most likely if it is in writing, it is in the form of the
invention disclosure form, or the IDF or some bit of technical writing which the client
has done. Now, when you read the disclosure you need to keep the problem solution
statement in your mind because your first attempt in drafting will be by looking at the
disclosure and looking for the problem which the invention solved so many times, this
may not be apparent or you may even ask the client in your invention disclosure form,
what is the problem that the invention solve, the client may not be even able to identify it
in some cases.
So, the first approach while reading the invention disclosure form or the disclosure from
the client will be to have the problem solution statement working in your mind. So, that
you can identify things and pose questions to the client and clarify the thought process.
So, you would ideally generate the problem solution statement as soon as you hear from
the client. So, the process by which we move is that there is an IDF which the client
generates and you create the attorney or the agent will create the problem solution
statement.
Now, what happens here is that the client usually presents the invention as a tangible
manifestation of the invention; he just presents the tangible aspects of the invention
which is what a technical writing does. Now, it is for the attorney or the agent to look at
the tangible parts of the invention or the tangible presentation of the invention and to
evolve a conceptual statement of the invention.
So, understand the problem solution statement should read like a concept or it should at
least in the sense that it is broad; it should be able to capture all the features of the
invention, it should be able to cover all the embodiments that the invention potentially
covers.
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So, in drafting the problem solution statement sometimes familiarity with the technology
may be an issue you may not be, the patent agent may not be familiar with the
technology. In those cases, it is preferable to draft the statement in a broad manner and
then narrow it down later, once you get more inputs from the client. Care should be taken
while drafting the problem solution statement to avoid prior art which means in the
process that we had already described once you get the IDF or the complete disclosure or
what we call a working disclosure.
You should engage in some kind of a prior art search to understand where the disclosure
can merit an invention because if you do not understand the prior art or if you are not
clear about the prior art, there is a possibility that while drafting the patent you could
cover aspects of the prior art which could eventually affect the validity of the invention
itself.
So, again in drafting the patent, or problem solution statement the focus should be on the
concept and not on the embodiment.
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Now, one of the things that you would do while creating the problem solution statement
is to question the invention because till this time if you had received an idea from the
client, it is quite possible that you did not have an opportunity to question the client or to
raise certain questions with regard to the invention itself and assuming that you had done
some amount of prior art search, you would also know that terrain much better now. So,
you have a working disclosure with you and you have done a prior art search based on
the disclosure.
Now, you have an idea about the terrain. By the terrain I mean the patents in the same
field owned by other patentees and you would also know apart from the patents you
would also know what the general prior art is for this field.
Now, one of the things a patent agent or an attorney would try to avoid is to see to it that
the problem solution statement does not fall foul of the inventive step requirement or
what we call the obviousness requirement. So, the inventive step requirement states that
the invention should not be obvious to a person skilled in the art.
So, whether it is obvious to a person skilled in the art is a concern that you will
constantly have while creating the problem solution statement and because you would
have some idea about the prior art, you would now be able to see where the invention
can actually overlap or fall into the public domain or which aspect of the invention is
covered in the prior art.
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So, the problem solution statement an ideal problem solution statement will be one
which maneuvers and avoids the prior art, another concern you would have is to see
whether there is unity of invention which means whether there is just one invention in
the problem solution statement, in case there are more than one invention, separate
inventions, then you would create different problem solution statements for them.
If there are inventive concepts in the invention which together form a single inventive
concept, there are different inventive concepts, which can be presented together as a
single inventive concept then you would still stick to a single problem solution
statement. So, the disclosure may have multiple inventions. So, it is at this point that you
decide whether all the aspects of the invention should be covered by a single problem
solution statement or whether you should have multiple problem solution statements.
Now, in defining the invention you could either take an approach of crafting a broad
problem solution statement depending on your knowledge about the prior art or you
could create a narrow statement because in some cases the narrow approach is mandated.
It is something which you will have to do or in some cases you may just come with the
right statement because the you will come with the statement the problem solution
statement which would just look, right now this as we said should be done by comparing
with the prior art.
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Now, a problem solution statement can either be a very broad one, but if it is not, then
your endeavor will be to expand the breadth of the problem solution statement. In
expanding the breadth, the advantage that you would have is if you expand the breadth of
the problem solution statement it becomes easy for you to enforce the patent when the
patent has draft. So, in terms of enforcement in terms of your ability to stop others from
doing; what is covered in your patent becomes much stronger or even better when you
expand the breadth of the problem solution statement because it eventually expands the
breadth of the claim.
Now how do you do this now? When you draft the problem solution statement you
should think about the possibility of a pre-grant opposition because any application that
is filed in the Indian patent office can be challenged in the application stage by a pre-
grant opponent, it could be any person the law allows a third party to oppose patents in
India, before they are granted.
So, while drafting you need to worry about this you will not draft your patent in a very
broad fashion though, it is it gives you certain benefits in enforcement, you will also
ensure that there could be a potential challenge if it is drafted very broadly to cover some
aspects of the prior art that they could be a challenge from a pre-grant opponent.
So, always bear this in mind when you are drafting, if there is a pre-grant opponent who
wants to challenge your patent what would he do if he looks at your draft. So, while
drafting the statement, this is a concern you need to bear in mind that there is a potential
challenge that can come onto your application when it is being prosecuted.
So, once you have this mind set, you would try to avoid the prior art and you would only
claim as much as what the prior art will allow you to do and you would also kind of
question the invention rigorously. So, that the there is no embarrassment at the patent
office when a pre-grant opposition is filed because you have already done the homework
and you have already claimed only what can be validly claimed.
Now, to expand the breadth you can look at different types of embodiments from the
problem solution statement. You can look at different types of embodiments, the
different types of applications, which you can consult your client and come up with.
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Now, to understand what solves the problem you can look at the embodiments that are
essential to solve the problem, now mind you the problem solution statement is the
precursor of a claim and in a claim you want to have the essential features that are really
important for you to protect, they could be non essential features or non inventive
features which may be optional which is not something, which for which you are going
to claim protection form. So, this exercise of what solves the problem, the question of
what solves the problem will help you to focus on the essential features for which you
want to draft a claim.
Now, identifying the core of the solution is something which when you do will
eventually get into the problem solution statement because what you have identified as
the core is the solution that you want to offer and what you want to claim. Now one way
to identify the core of the solution is to ask yourself this question can the problem be
solved without embodiment X.
Now, let us assume that your invention has three or four embodiments w, x, y and z.
Now you ask yourself whether the problem that you are stated, you have stated in your
problem solution statement can be solved without embodiment X if the answer is yes,
then understand that the focus is on the embodiment and not on the concept. So, you
need to create a concept in such a way that it becomes integral to the solution that your
invention offers.
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Expanding the breadth the focus should be on what solves the problem and that should
be stated as a concept and not on how the problem is solved because how the problem is
solved are the embodiments that can be later on figure out when you draft dependent
claims and other claims. So, the focus should be on what solved the problem and not
how the problem was solved. How the problem was solved was would detail the different
workings and the details. So, at this level of drafting the problem solution statement your
focus should be on the concept and how the problem is solved.
We will answer enablement, which is requirement in patent law and best method which
is again a requirement in patent law. Now, if to determine whether it enables a person
skilled in the art whether the disclosure enables a person skilled in the end what we call
an enabling disclosure or whether the inventor has disclosed, the best method of
performing the invention these pertain to the how part of the problem solved, how is the
problem solved.
So, that describes the details whereas, what solves the problem is pertains to the concept.
Now you to expand the breadth you can also foresee different alternatives and in other
way to expand the breadth of the problem solution statement is to broaden the problem
itself.
Now, yet another way to expand the breadth of the problem solution statement would be
to eliminate limitations; now if the problem solution statement has, say an embodiment
called glue or gum, then you could use a broader term adhesive to cover much more than
a glue an a you could combine elements for in instance you could take concepts like
engage and lock and cover it by a single concept like secure if the context allows you to
do that.
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Now, we just spoke about how to broaden the problem solution statement, if it is not
broad enough, but also to worry about certain issues that you may face while broadening
it. Now, there may be instances, we may, you may have to narrow down the problem
solution statement. Now, narrowing down will largely come by way of redefining the
problem because the problem has already been solved the way in which you have framed
it and you find that there are solutions which are very similar to your invention.
So, one way to do is to redefine the problem. The other way to narrow the focus will be
to distinguish it from the prior art, now the prior art may read upon the invention and you
may have to narrow down the problem solution statement now while narrowing down
you do it for the sake of validity. Now, we had mentioned earlier if you broaden a
problem solution statement then you get a potentially broader claim and a broader claim
would allow you to enforce it much better because a broader claim can catch much more
potential infringement when the patent is granted. Then a narrower claim, but the flipside
as a broader claim may also read into the prior art.
Now, the focus on narrowing down the problem solution statement is to ensure that your
patent is valid because when you narrow it down the possibility of it reading into the
prior art is lesser than it would be in the case of a broader claim, but the counterpoint in
this case will be if you narrow it down, then the enforcement part your ability to stop
others by way of an infringement suit will be affected.
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So, these two things enforcement and validity are the two things that will always play in
the mind of a person who drafts a patent if he broadens the scope of the claim, it will be
good in terms of enforcement, but there is a possibility that it could read into the prior art
and a validity challenge could come on it at a later point in time. Now, this is why we
said you should always think of a potential pre-grant opponent, while you are drafting
because it could be possible for a pre-grant opponent to oppose a patent before it is
granted, the law allows that to happen in India.
At the same time, if you focus on narrowing down the problem solution statement you
would eventually end up with a very narrow claim. The very narrow claim will get
granted for sure because it simply does not read into the prior art, but the flipside again is
that because you have not claimed that is too narrow, you will not be able to enforce it
against others the competitors will be able to work around it and because your claim is
too narrow you will not be able to enforce it against others.
So, this balance has to be maintained of ensuring the claim is broad enough. So, that it is
enforced effectively and it is narrow. So, that it does not fall of the prior art. So, that
there is no validity challenge that is posed on the invention.
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Prof. Feroz Ali
Lecture – 24
Problem Solution to Claim
Problem solution to the claim. Now in this lecture we will see how we can make the
transition from the problem solution statement, which we have created to the claim. In
the earlier lecture we had seen how to craft a problem solution statement from the
disclosure that we get from the client. The disclosure as we had seen may come in
phases, the client may have to be engaged with in more detailed fashion to get the
disclosure or the disclosure may come in one shot say you send an invention disclosure
form and the client fills it satisfactorily for you to proceed with the drafting of the
problem solution statement.
Now, once the problem solution statement is created, there has to be a transition or you
should try to convert the problem solution statement to a claim capturing all the features
in the problem solution statement.
Now, this can be done in five steps; the first step is to identify the claim setting, what
kind of claim setting is the claim going to have because all claims have a setting. If you
read a claim you will understand what the claim pertains to. Whether it is a composition,
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a mixture, a mechanical device, an electronic gadget you will understand that whether
with what is the setting of the claim.
So, the first step will be to identify the claim setting, the second step will be to identify a
claim type, which means the problem solution statement should be framed as leading to a
claim a type of a claim. The third step will be to remove the generic phrases from the
problem solution statement. The problem solution statement as we have seen is a blanket
statement, which could be used for any situation the problem of dash is solved by the
solution dash.
So, the broad phrases, the generic phrases needs to be removed. Once you remove them
with what remains you need to make sense of what remains. Many a times when you
remove the generic phrases, it may not be sufficient to make complete sense. So, you
may have to juggle sentences phrases, you may have to add certain transition terms, all
this is done in step 4 where we make sense of what remains. And step 5 is to compare the
problem solution statement for accuracy. Now whatever remains is what we call the
preliminary claim or the first draft of the claim. The first draft of the claim should be
accurate because it should be, it should contain all the terms or the embodiments or the
elements that you had covered in the problem solution statement.
So, you check for accuracy. So, this is the step where you look back at the problem
solution statement, and see whether all the things that you had covered in the problem
solution statement has actually got into your preliminary claim.
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Now, let us go about this by using an example. Now the example that we want to use
here is the Bajaj Patent number 195904, this was the patent which was in litigation in a
case between Bajaj and TVS. The invention pertained to an arrangement of a pair of
spark plugs in an internal combustion engine that is the broad idea of the invention.
Now, you need a disclosure before you can create the problem solution statement. In this
case information about this patent is already there in the public domain, because of the
dispute between Bajaj and TVS and once you have the patent number it is easy for you to
find out what the claim or the description in the patent is. So, because we are using this
as an illustration, we have already seen the claim and, but we are just taking you and read
the patent specification, but we are taking you through this process. So, you understand
this process and you can also compare with all the documents that are available in the
public domain to see how to move from a problem solution statement and create a claim
or a preliminary claim.
Now so, we have created this fictitious problem solution statement, based on are reading
of the Bajaj patent. The problem of inefficient burning of lean air fuel mixture in an
improved internal combustion engine working on four stroke principle, with two valves
per cylinder having diameter of cylinder bore ranges between 45 mm to 70 mm is solved
by the use of appropriately placed pair of spark plugs. Now this is a summary based on
the reading of the patent specification, but nevertheless this tells us as to how a problem
solution statement can be drafted. We had already seen in our earlier lecture different
types of problem solution statements.
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Now, this is a problem solution statement, where there is a particular problem pertaining
to inefficient burning of lean, air fuel mixture in an internal combustion engine and the
combustion engine has certain details it is a four stroke combustion engine, and it has
two valves per cylinder and there is also a range for the cylinder bore. The bore of the
cylinder has a range, the range of the bore is between 45 mm to 70 mm, which is largely
what we call a small bore a cylinder.
Now, in this problem, the problem statement the problem statement not only gives you
the inefficient burning of lean air fuel mixture, it also gives you the setting where is this
burning happening? It is happening in an internal combustion engine. What principle
does the internal combustion engine work on? It works on the four stroke principle, not
on the two stroke principle and how many valves does it have per cylinder that is given,
and what is the diameter of the cylinder? Diameter is not given as a specific diameter
rather it is given as a range.
Now, this entire thing is the problem and the setting of the problem it is just not just the
problem, it is the problem. Yes, inefficient burning of lean, air fuel mixture in an internal
combustion engine is the problem, that is being addressed by the invention, but it also
gives you the setting where is this problem happening, what are the details of the setting.
So, so when you draft a problem solution statement, the problem could be a simple
problem like what we had seen the problem of writing on rough surfaces that is a simple
problem. But in certain cases you may have to include the setting as well as the case in
front of us a solved by the use of an use of appropriately placed pair of spark plugs.
So, there are two spark plugs to begin with, and there is an placement of the spark plug
where it appears. So, so this is the solution. The solution is having two spark plugs in a
small bore engine and placing it appropriately. Now taking this problem solution
statement as an example, we will now go through the five steps of converting this
problem solution statement into a claim or something that looks like a claim. Now one of
the advantages we have is we are already using a claim that is been already drafted filed
and granted, and we will not get into the merits of the invention because we will not this
will lecture will not allow us to do that, but rather we will use something which is there
in the public domain, which is been debated. So, that in case you need to know more
about this invention, there is much that has been written about this.
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So, that is the reason we chose this example for demonstrating the problem solution
statement. So, we use this problem solution, the problem of dash is solved by dash. Now
the problem of the problem is highlighted in blue, underlined in blue is solved by the
solution, which is the invention is highlighted in or underlined in green.
Now, let us go through the steps; step 1 as we said is to determine the claim setting what
will be the claim setting for the invention?
Now, from this statement you will understand that, the problem comes with a particular
setting. The setting is very clear there. The setting tells us that, the inefficient burning of
the air fuel mixture happens within an internal combustion engine. So, the internal
combustion engine is the setting, but the internal combustions engine also tells you that it
works on the principle of a four stroke technology and it has got two valves per cylinder.
more importantly. If you are interested in reading more about this case, you will
understand in this case what was in issue in the case before the Madras high court, was
the fact that the invention pertained to a small bore engine. The statement on the fourth
line cylinder bore ranges between 45 mm to 70 mm became the contentious point,
because otherwise had they note this is what we call a restriction by a range, you restrict
the scope of the invention by introducing a range .
Now, because there was a restriction by a range the case proceeded say, but the patentee
proceeded with the case stating that, this invention the placement of two spark plugs in
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an internal combustion engine is confined to small bore engines. Because the use of two
spark plugs was known in other engines. So, one way you can create or you can you can
come up with an inventive feature is by restricting the scope. So, that it does not fall foul
of the prior art. So, the prior art in this case as it was pointed out during the case, had
placement of two spark plugs in an internal combustion engine, but there was no
restriction on placing it in a small bore.
Now, as I said we cannot get into too much of the merits, but for you to understand the
problem and the solution is solved by the use of two spark plugs. Now the claim setting
in this case will be the improved internal combustion engine on four stroke. Now this is
the claim setting where is the problem happening that is what you understand by the
claim setting because you need to incorporate the problem, as it happens in a part of a
machine or in this case it is a part of a two wheeler motorcycle.
So, here we identify that to say that the issue of inefficient burning happens in the
internal combustion engine. So, the combustion internal combustion engine working on
four stroke becomes are claim setting. So, we first identify and choose the claim setting.
Step 2 we choose a claim type. Claim type again will be what kind of claim you want? In
this case what will is being claimed is an improved internal combustion engine of a
particular type. So, not all internal combustion engines can be claimed, this the
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improvement to the internal combustion engine is as Bajaj as described that you will see
when you look at the main claim towards the end.
So, this is what we call the claim type, in this case you can call it as an product claim or
more specifically it is an apparatus claim. The claim is for an apparatus largely you have
two types of two types of claims under the Indian patent acts. Section 48 tells us that you
can have a claim broadly either for a product or for a process. Process includes all
different types of methods of doing things and of manufacture. So, this comes broadly
under the product claim and this is what we called an apparatus claim.
So, first step we identify the claim setting, step 2 we identified and chose a claim type.
Step 3 remove the generic words its easy in this case the generic words are just what we
had created a template out of the problem of and is solved by. Now once you remove the
generic words what remains may not really make sense. In efficient burning of lean air
fuel mixture and so on between 45 mm and 70 mm the use of appropriately placed pair
of spark plugs, this does not make sense.
So, you need to move to step 4; step 4 make sense of what remains.
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Now, let us once we remove the generic words, we find that these are the things that
remain, I have just captured in a bullet point an improved internal combustion engine
working on four stroke principle with 2 valves per cylinder having diameter of cylinder
bore ranges between 45 mm and 70 mm that remains, inefficient burning of lean air fuel
mixture. Now in my claim, we do not want this phrase to come. So, we want rather to
focus on efficient burning, because inefficient burning was the problem that was solved
and the result is efficient burning. So, we just strike off in and we retain efficient burning
of air fuel mixture, and we also strike off in the use of appropriately placed pair of spark
plugs.
So, rather than using the phrase in the use of appropriately placed, we actually have
details on how the appropriately placed takes place we detail it. So, in the from the
problem solution statement, we cut this off, but we also expand this. So, the use of
appropriately placed will now be given in great detail, because we are talking about two
spark plugs. So, we will first identify the first spark plug how it is placed, then we will
where it is placed and we will identify the second spark plug and see how it is placed and
where it is placed. So, this is going to be the main work that will be involved in making
sense of what remains. Because here we have not in the problem solution statement, we
have not discussed the anything about the placement of the spark plugs. How they are
placed, where they are placed nothing is there all we have captured is appropriately
placed.
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But when you expand this appropriately placed, then a lot of details will come through
which we will soon see.
So, making sense of what remains; so, if we are still in step 4. So, just combining from
what you saw in the earlier step, now we have just deleted in the we have stuck off
certain things in with a blue line, what remains is what looks like this and improved
internal combustion engine working on four stroke principle having now we have just
included certain words having two valves per cylinder for efficient burning, we have
added that word for efficient burning of a lean air fuel mixture used in engines, wherein
the diameter of the cylinder bore ranges between 45 mm and 70 mm characterized in
now that is an addition, this was not there, now this is a phrase that is used for a
transition.
So, we will learn more about this in the subsequent lectures. So, this was an addition that
came by characterized in that said internal combustion engine comprises a pair of spark
plugs. So, what you had seen what we got from the problem solution statement now we
find two more elements two more terms being added to it, apart from having and words
that would be added for this part of the sentence to make sense. Now this does not cover
the full we have an ellipsis at the end, this does not cover the full impact of the claim
because one critical part is still missing. The appropriately placed the placement of the
spark plugs which we had struck off in the earlier step needs to be introduced.
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Now, we introduce that, because we have knowledge of the claim and we have seen the
claim and read the complete specification we introduce it in this manner.
Namely, the first spark plug now we are getting into the details, how the appropriately
placed takes place namely the first spark plug and the second spark plug. So, there are
two spark plugs. a cylinder head, a sleeve, a pair of sealing means, fixing means, and a
sleeve cap; the said first and second spark plug being fitted to a cylinder to the said
cylinder head. So, the placement of the first and the second spark plug is on the cylinder
head, and capable of igniting air fuel mixture at predetermined instant at a time at a
predetermined time. Said seconds spark plug being housed within said sleeve, its within
a sleeve located within timing chain cavity that is a part of the engine. Said sleeve being
detachably push fitted push fitted it could have been screw fit push fitted to said cylinder
head, and held in position by said fixing means. Said sealing means the means by which
it is sealed being adapted between the said cylinder head and the outer periphery of the
said sleeve, and the said sleeve cap being fitted on the said cylinder head.
Now, this is just the assembly, how each part and it goes from the bottom to the top, it
goes from the more specific detail to the general. The general being the cylinder head.
So, it just describes what in what manner the spark plug is fitted to the cylinder head. So,
there is a sleeve, there is a pair of sealing means, a fixing means and a sleeve cap, these
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are all components. Now to get a bigger picture, you have to read the complete
specification as to how this is done.
Now all the phrases in the bracket 21, 22, 25 they all identify things that have been
claimed. Second spark plug is 22, first plug spark plug is 21, sleeve is 23, sleeve cap is
27. Now in the patent specification if you have a chance to look at it you will find that
there are drawings. And description of the drawings and in the drawings these are the
numbers that are being used to identify the parts of the drawing. And in the brief
description of the drawing which is the description of the drawing in writing, you will
find that all the parts that have been claimed for further clarity the number as it is
mentioned in the drawing is also mentioned as a part of the written description .
Now, the Indian law there is a particular provision which requires the claims to have the
numbers the corresponding numbers as described in the drawings. So, that is this is the
requirement and this is been done in this fashion, because of a statutory requirement
now. So, this part of the claim it continues from the first part what we saw, we had
already seen the first part here, it ends with comprises of a pair of spark plugs and this
part starts. Now in this part what is being done is a detail explanation of the phrase
appropriately placed.
So, many a times when you write a problem solution statement you may just have a
broad statement of something that is critical for your invention. Later on you can expand
that statement because this statement has multiple details which you will get become a
part of your claim.
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Now, the step 5 the last step is to compare the preliminary claim that you have now
drafted with the problem solution statement. Now largely what went into the claim was
there has been taken from the problem solution statement. The burning of air fuel
mixture, internal combustion engine which is a setting, the diameter of the cylinder bore,
and the pair of spark plugs.
So,. So, the initial statement whatever was there in the statement has got into the claim
the preliminary claim, and the preliminary claim does have more details because how the
pair of spark plug is placed appropriately placed has also been expanded. Now let us
look at how the claim looks. So, that you get a final idea about how this entire process.
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Now, this is the claim, and this is how the entire claim is actually mapped on what could
have been generated from a problem solution statement. So, you can see an improved
internal combustion engine working on four stroke principle, two valves per cylinder
efficient burning of lean air fuel mixture, which was the problem it was inefficient
burning, we converted into positive language cylinder bore restricted by a particular
range 45 mm to 70 mm, the engine comprising of a pair of spark plugs, the first spark
plug and the second spark plug in detail telling us how it is arranged on or fitted onto the
cylinder head.
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Prof. Feroz Ali
Lecture – 25
How to Search for a Granted Patent
How to search for a granted patent? Now if you are interested in searching for a granted
patent, the first thing you will need is the patent number. Now, for this illustration we
have chosen the Bajaj Patent number 195904, which was the patent that was contested in
the dispute between Bajaj and TVS. Now, this was a patent infringements case, which
was filed before the Madras High Court which pertained to an sparkplug arrangement,
twin sparkplug arrangement for an internal combustion engine.
Now, what is in front of you is the claim? But how did we get this claim? Or where did
we get this claim from? For that we need to go through the exercise of first finding the
patent number.
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You could get the patent information see the patent number from a public source, like the
spicy IP, which is one of the sites that reports news and happenings about patent cases.
Now, here I get the patent number bajaj patent number from this from this post. And
what I do?
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I search for it in the patent office website, now you know; this is the patent office
website. I just go to the search page, and I type the patent number, and I get I come to
this page, where it gives me the application number and the details about the patent
search.
Now, if you need to know how this understands, you can just go to patent search here
and you will come to a generic page we have already covered that.
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Now, when I click on further, it takes me to the details or the bibliographical details of
the patent. Now, this is for an internal combustion engine the filing details, the
application number which later on became a grant, the name of the inventor, the name of
the owner of the patentee and here you have the complete specification.
This is the complete specification and with their claims; and it also gives the status that it
has been granted with this number.
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Now, one of the things that you will find interesting is there is an IPC classification for
this and this is the F02P 15/02.
Now, if you search in the IPC website. This is help this is a website that is managed by
the world intellectual property organization. Now, the search page looks like this.
Now, you could search for the IPC code in this column on the left-hand side, and press
the search button here, and it will take you to something like this.
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Now, here is the search term, and here is the search button. Now the particular code is
here. What you can see here. F02P 15/02, Arrangement having two or more sparkplugs.
Now, you can see that you know this patent which we are just discussing comes under a
particular classification in the IPC code, and this number pertains to arrangement of two
or more spark plugs.
Now, if you know to need to know what kind of claim this is, or if you need to
understand what are the other claims pertaining to similar inventions, you are going to do
a search based on this field. The field that is the IPC classification code; So, most likely
if you do a search, you will get all the claims where there has been arrangement of a
spark plug two or more spark plugs have been claimed.
So, this is a way in which we understand you can go back to the patent detail page where
other things about the patterns are there; the complete specification which ends with the
claim.
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Now, we have already discussed the claim in our earlier lecture. Here is the claim that is
the main claim for you. The main claim now we have already discussed the earlier
details in our lecture.
The earlier lecture you can see how we use this claim to understand the problems
solution statement, and the transition from the problem solution statement to the drafting
of the preliminary claim.
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Prof. Feroz Ali
Lecture – 26
Provisions Relating to Claim
Before we draft the claims, let us look at the provisions relating to the claims. There are
certain legal provisions under the patents act and the rules, which are specifically meant
for claim drafting. They tell us what the claims are for. What the function of the claim is,
and how the claims should be drafted in special situation.
Now, the claim does the function of defining the invention. In section 10(4)(c), we know
that the contents of the specification should end with a claim or claims defining the scope
of the invention for which protection is claimed. So, if you look at the structure of a
specification, the specification would end with the claims.
Now, there are various other parts there is a title to the invention there is a background of
the art. You could have a brief description, a detailed description drawing. If you look at
the written part, the claims come at the end of the specification.
So, the claims are the last portion or what we call the specification ends with the claim.
Now, the claims have to define the scope now that is the function of the claim, the claims
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have to define the scope of the invention for which protection is claimed. Defining the
scope is done by the language of the claim itself. And you will see why the structure of
the claim is important in defining the scope. In defining the scope, there are two things
that would be important.
One to look at the prior art so, that the claims do not read into what has gone before; and
two to keep the claims clear in such a way that a person who reads it is not in doubt with
regard to the scope of the claim. In in other words, the claims have to be definite. They
have to be clear and succinct.
Now, the claims should relate to a single invention. We get that from section 10(5) again,
which states that the claim or claims of a complete specification shall relate to a single
invention or a group of inventions linked so, as to form a single inventive concept. Now,
we will just stop there.
Now, the claims should either cover a single invention. So, if there are multiple
inventions, we had already discussed this you should have multiple problem solution
statements, which would lead to multiple independent claims.
Now, multiple inventions would normally be covered by different patent applications. In

case you file an application with multiple inventions in it, there is a procedure by which
you can later on divide the inventions into separate applications by filing a divisional
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application. A divisional application could also arise from an objection that is raised by
the patent office. If the point of your application having more than one invention is
pointed out by the patent office, then the patent office would direct the applicant to file a
divisional application.
So, in summary you can have only one invention covered in an application. This is called
the unity of invention. Even if the inventions are covered by a single inventive concept,
there are different aspects to the invention. They are all covered by a single inventive
concept. You could still claim that in a single application.
So, either you have a single invention, or a group of inventions which are linked to form
a single inventive concept. Still it can be the subject matter of a single application. So,
the claims should relate to a single invention or a single inventive concept.
The claims have to be clear and succinct. Now, being clear is to be without ambiguity
and to be succinct is to be precise. The claims also have to be fairly based on the
disclosure. Now, this is the part where the claims have to be related back to what was
disclosed in the specification.
Though the claims come at the end, it is not possible to claim something which you have
not disclosed and it is also not possible to claim something for which the disclosure does
not enable a person. Now, that is another requirement, but whatever is claimed in a claim
has to be fairly based on what you have disclosed in the application.
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Now, claims should also contain certain reference signs. Now, this we get from the rules.
Rule 13(4) reads that where the invention requires explanation to through drawings; such
drawings shall be prepared in accordance with the provisions of rule 15, and shall be
supplied with and refer to in detail, in the specification including the claims where the
features illustrated in the drawings shall be followed by their respective reference signs
in parentheses. Now, this is important because wherever you mention a element of your
claim, which you have marked in your drawing with a number, then the claims where the
features are the illustrated features in the drawing shall be followed by their respective
reference number. So, if your invention is for a pen, and there is a nib in the pen which
has been marked as 7. So, when you mention nib in the claim you it has to be followed
by 7 in parentheses. The; you would we will be showing you examples. You would have
already seen the Bajaj TVS the patent that was involved in the Bajaj TVs, case where
this point was shown.
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Prof. Feroz Ali
Lecture – 27
Some Exceptions to Patentability
We have just seen the provisions that relate to patent claim drafting. Patent claim
drafting can also be limited by the subject matter of what you are claiming. In other
words, if the subject matter is something which you cannot claim, then that is something
that you need to bear in mind, because you cannot have an invention; that is, that can be
patented.
Now, there are some subject matter that is excluded from the scope of an invention under
the Act. So, needless to say you cannot be drafting a claim on those subject matters.
Now, let us just look at some of the exceptions to patentability; Types of claim that are
not allowed.
Now, claims contrary to well established natural laws will not be allowed. This comes
under section 3. There are a host of exceptions in section 3. Claims pertaining to
scientific principle or abstract theory; again will not be allowed. Method of agriculture is
something that will not be allowed. And claims covering plants and animals will not be
allowed.
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Claims for business method, a mathematical method or an algorithm will not be allowed.
Claims for a method of performing a mental task, method of playing a game will
likewise not be allowed. And claim for presenting of information, for representation of
information like a ppt, or what you are seeing right now cannot be a subject matter of a
claim.
Atomic energy is also excluded from the definition of an invention by way of section 4
of the Patents Act. Inventions relating to atomic energy will not be granted a patent. So,
you have to be wary of claims covering atomic energy.
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Prof. Feroz Ali
Lecture – 28
Structure of Claims
Structure of claims; the placement of the claims is usually after the specification, there is
a written description in the specification and it as we have already seen the complete
specification will end with the claims, and they define the scope of the invention. Claims
are normally written in a single sentence.
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Now, this is either in the form of I/We claim, it begins with that statement or it is
claimed as or the invention claimed is there are various combinations of using this is how
a usual claim will begin it will begin with a I claim or it is claimed or the invention
claimed is.
Now by convention, it is written as a single sentence. Claim regardless of how long it is,
it is written as a single sentence. So, you may find some claims unusually long and it
may even you may even find the difficult to follow it follow what is being claimed in a
first in the first reading , but it is a convention that is being followed. One of the idea
behind having the claim being written in the form of a single sentence is to make it clear
and succinct. Now that is a requirement under the law. So, the understanding is that if the
claim is in the form of a sentence and that to a single sentence, it should be clear and it
should convey the information that is covered clearly.
Now, in English a sentence refers to a set of words that make complete sense. So, claims
also need to follow because they are written in a single sentence, they need to follow all
the rules and grammar of a normal sentence, which means it has to begin with a
capitalized word and end with a period or a full stop. The capitalized words are usually
not allowed in the sentence of the claim, apart from using certain capital letters like C
and F for denoting centigrade and Fahrenheit apart from that words within the claim are
not capitalized.
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Now it is important to get the verb form right in the claim. Now let us take the example
which we had already seen. A pen having a spheroidal marking point and a cap. Now
you could write this as a pen comprises a spheroidal marking point and a cap or you
could have it in a more direct language like a pen comprising a spheroidal marking point
and a cap.
Now comprises there is enough of case laws on this to say that comprising the ‘ing’
form is the one to be used, because that verb form allows you to present the claim in the
present tense. Now you could use different verb forms for different claims, but it is if
needed you could use the present tense there will be some instances where you may have
to use the past tense or even the future tense, but normally it is a preferable practice to
keep it in the present tense and in the ‘ing’ form, which is the working form.
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Ordering of claims; now we are already is mentioned that they can be one or more claims
the axis that the specification shall end with one or more claims. So, what do you do if
there are more than one claim, if it is a single claim it is not numbered, but if there are
more than one claims the claims have to be numbered sequentially.
Now, you normally begin with the broadest claim and proceed to the narrowest. So, you
would have a broad claim of claim number one is the independent claim, it would be a
broad one claim 2 if it is dependent on claim 1 will be a narrower claim and claim 3 if it
is dependent on claim 2, it will be the narrowest claim in case you have 3 claims in your
for your invention.
Now claims have to be grouped together, assume that your invention has is for an
apparatus it is a product and you also have a method of making the product that comes
out of the apparatus. Assume that your claim is for a device you have a device claim. All
the device claims and all the combinations of the device claims should be grouped
together you also have a method of using the device, in that case all the method claims
with all their combinations will be grouped together.
Claim numbers are unique the number which you a lot for a claim is not reused. So, you
have three claims in your application, claim 1 2 and 3. During prosecution if you cancel
claim number 2 in the process of prosecution, there is an objection of whatever reason
you want to cancel that you just continue with 1 and 3 throughout the prosecution. The
number that you cancel is not reused because it leaves a track of the cancellation and it
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keeps a track of what was given up. But before the grant the claims are renumber by the
patent office and granted. So, most of the cases when you see a granted patent you will
see a sequential numbering, but it is quite possible that during the course of prosecution
some claims were deleted or omitted and during the course of prosecution the numbering
is not changed.
Now, let us look at the parts of a claim. Claims normally have a structure and most of the
claims what we call combination claims. Combination claims are claims which combine
things. So, this is the structure of a normal claim. There is a preamble an introductory
statement there is a transition, transition is most likely a verb and there is a body.
Let us take this claimed invention lubricated catheter balloon. A dilation balloon which
is the preamble, comprising the transition an inner surface and an outer surface said inner
surface having a lubricious hydrophilic material disposed thereon. Now what is
highlighted in green is the body, and the body you can see that the body is connected to
the preamble through the transition. The transition is a word verb and it is a verb of
action comprising.
Now, what the transition does? It gives further information about the preamble the
preamble is a dilatation balloon, now which is a lubricated catheter balloon. The
description of the dilatation balloon is that it has an inner surface and an outer surface
and the inner surface has a lubricious hydrophilic material disposed thereon. So, what
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has been claimed is not the dilatation balloon or the catheter balloon per say. A variant
which has a lubricious hydrophilic material is being claimed.
Now, so, the preamble introduces the broad field of invention, the comprising or the
transition tells you where the claim or the claimed part of the invention begins because
after the transition you can what is being highlighted in the green, it is what is unique for
this invention. And again they could you could have dilatation with inner and outer
surface that is perfectly fine, but in this case the inner surface has a lubricious
hydrophilic material. So, the lubricious hydrophilic material in the inner surface which
forms a part of a dilatation balloon makes this invention unique.
So, you need to understand I mean the more patent specifications you read, you will get
comfortable with the structure of the claim. So, claims normally is there for a
combination normally have these three parts a preamble, a transition and a body.
Let us look at another example; rocket apparatus; a rocket apparatus which is the
preamble having the transition in combination a combustion chamber a case in
containing a supply of combustible material and a means for successively feeding
portions of said material to the said combustion chamber.
Now you can clearly see the preamble and the body connected by the transition. So, the
transition tells us that it is not that all rocket apparatus is being claimed here, only the
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rocket apparatus that has what has been described in the body. So, the body is actually
what is being claimed, preamble introduces you to the field of invention the rocket
apparent is. It could be rocket apparatus, but what is being claimed here is where there is
a combination of a combustion chamber a casing containing fuel and a means of
successively feeding portions of the said material into the combustion chamber let us
look at one more example.
Packaging frozen food; the method of packaging and preserving food which is the
preamble it could be any method, which consists in the use of consist is different from
the use of comprising we will be looking at that in the forthcoming lectures. First
packing the food in a container and freezing the same under pressure applied to
substantial surface areas of packed container. So, you can clearly see the preamble the
transition, transition need not be just one word it could also be a group of words and then
the body.
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Prof. Feroz Ali
Department of Humanities and Social Science
Lecture – 29
Preamble
Preamble.
We are already covered that the claim would comprise of 3 parts.
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Preamble, the transition, and the body. The preamble usually covers the field of the
invention. Because it is what introduces the claim, that is the first part of the claim that
you get to read. So, it should ideally define the field of the invention. It could also get
into the statutory class of the claim; see, what we are already seen in the IPC code. The
IPC code can determine the class. So, it could also if the preamble has to given more
details about the invention, it could also cover a particular class or a subclass.
Usually what is stated in the preamble is not treated as a claim limitation. By that, we
mean it does not restrict the scope of the claim. Whatever you find in the preamble
usually is not used to restrict the scope. But there are some cases where words used in
the preamble could be used for restricting the scope of the claim. We are already
mentioned that what is covered in the body part is what is being claimed. The preamble
only gives an introduction to the field or to the field of the invention.
So, any limitation in the preamble will not be treated as a claim limitation. But an
element in the body can derive antecedent basis, a concept which will be explaining soon
from the preamble. May be an essential component of the claim. It is advisable not to
rely on the preamble for antecedent basis. Now you may recite a element in the body and
choose to mention it in the preamble. Now that can have certain consequences, but if you
do not want something to be a claim limitation, you will ideally not mention it in the
preamble. A shorter preamble for that reason is preferred.
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The preamble could also be related to the title in some way. The preamble and the body
should be consistent with each other, together to form the whole claim, the body should
be a continuation of what comes after the preamble. The title can be modified to create a
preamble, if you see the title it is normally less than 15 words. So, the title could form in
some cases, the starting point for creating a preamble. Too broad a preamble may not be
advisable; for instance, a pen comprising will be too broad preamble, because pens have
been in use, and have been patented for quite some time.
So, it may be you know a ballpoint pen or a fountain pen, it could be more specific. The
breadth of the preamble can also cover a larger group of inventions. If you see, if a pen
includes a cap to cover a writing tip, or if it is a pencil which includes a cap to cover the
writing tip. Instead of using a pen or a pencil, you could cover a writing device. So, a
writing device comprising a cap to cover the writing tip would be much broader than a
pen comprising a writing tip or a pencil comprising a cap to cover the writing tip. So, in
a sense, when you use the word writing device, in the preamble, instead of the word pen
or pencil, you expand the breadth of the preamble.
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Limitations in the preamble, it is advisable to avoid limitations in the preamble the

limitations should come if at all in the body. There is no need to include the object of the
invention in the preamble though in some cases, you will find examples of including the
object of the invention. The reason for that is that the invention may have multiple
objects. It may solve many problems, and the object of the invention would be it would
not be possible to mention all the objects in the preamble. If we just mentioned that you
could use the title as the starting point of the preamble, but title serves a distinct purpose.
The title shall disclose the specific features of the invention that is a requirement under
the Act. Whereas, the preamble has to define the field of invention.
So, in cases where that disclosing the specific features, and defining the field of the
invention do not match title may not be the right place to start as a draft for a preamble.
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Claim limitation, a claim limitation may appear in the preamble. Now for instance in this
case, Karsten Manufacturing Corporation versus Cleveland Golf, the word correlated set
appeared in the preamble. Now because it appeared in the preamble it was treated as a
claim limitation. Now, all the claims in this case began with the words an improved
correlated set of iron type golf clubs. So, the word correlated set, because it came within
the preamble it was used as a for limiting the claim, the claims were read narrowly.
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Now there are 2 rules when it comes to preamble there are 2 rules on limitation that you
need to bear in mind. One, if a limitation in the preamble is for limiting the scope of the
claim, it should be repeated in the body. So, what you mentioned in the preamble? To
limit the scope of this claim, it has to be reiterated or repeated in the body as well. So,
that it is very clear, that the limitation that you have incorporated is not something which
you mentioned inadvertently in the preamble, it has to come in the body.
So, what you say in the preamble should come should be repeated in the body. Rule
number 2. If a limitation in the preamble is not for limiting the scope of the claim. Now
you do not want to limit the scope of the claim by mentioning something in the
preamble. Then, that limitation should be omitted from the preamble. You should not
mention anything like in the earlier example a correlated set. You should not be
mentioning it if you do not want that to limit the scope of the claim. Rather, it is say for
to mention correlated set in the body part of the claim.
Types of preamble. As we said preamble is nothing but an introductory statement; which

introduces the invention. Now it could be as simple as a process, explaining the process,
an apparatus; detailing the apparatus, a process for purifying honey; which is a process
with a function in the process accompanied by the function of what the process is for a
device for cutting paper again a device with an accompanying function. A biodegradable
pesticide delivery system. Again, it is something which tells you more about what the
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pesticide delivery system is about it is the, it is a pesticide delivery system, which is also
biodegradable. Or it could be something like a composition for detecting detection of a
specific chemical substance in a testing fluid.
Now, this tells us it is a composition, but it also tells what the composition is for. It is for
detection of a specific chemical substance in a different environment; which is a testing
fluid. So, this is a much more detailed preamble, it could have been perfectly fine if the
applicant had mentioned it as composition, but we will understand that as there are more
patterns in a particular field, the need for a more detailed preamble would arise.
Now preamble with a function. Now, in such cases, where the preamble also describes a
function, it describes the context of the invention, the context can be integrated in the
preamble for instance, an apparatus for mention the purpose for which it is used for
farming for cutting the apparatus comprising.
So, you said in the preamble, and you also said you repeat that it is the apparatus. So,
that it is not mistaken for the purpose. So, an apparatus for farming the apparatus
comprising and it proceeds; so, it it describes the function. But when you describe the
function it is better to repeat the class of the claim in this case it is an apparatus again.
Dependent claims should have the same preamble as their parent. If there are a series or
one dependent or a series or a group of dependent claims, which take it is origin from a
particular parent an independent claim, then the preamble has to be the same. You cannot
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have a dependent claim which has a preamble which is different from it is parent. That
could lead to ambiguity.
Now, let us look at an example of a long preamble. A dispensing top for passing only
several kernels of a popped popcorn at a time from an open-ended container filled with
popped popcorn, having then the thing proceeds what is highlighted in red is the
preamble. So, you will understand that the preamble gets longer, if it describes the
function and it also sets the field of it is operation.
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Prof. Feroz Ali
Lecture – 30
Transition
Transition; the transition is what connects the preamble to the body, now the preamble
names the things to be claimed.
The transition connects the preamble to the body and the body defines the parts and how
they work. Now there are different types of transitions, but for now we will just look at
the two predominantly used transitions.
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Comprising is a word which is used as a transition, comprising or its various different
forms like which comprises is also alternatively used.
Now, this kind of a transition is what we call an open ended transition term, comprising
when you use comprising it is meant that whatever follows in the body is open ended it is
not closed, in the sense that they could be other things that could be a part of the
invention. Now instead of using comprising, you could also use alternative words like
including having containing, characterized by, characterized in, that wherein, providing.
Now, most of these words takes the meaning like comprising, but there are implications
for using words other than comprising, because comprising by convention has been the
most preferred word because of decisions of the courts which have come defining and
interpreting this particular word. So, if you use having instead of comprising, they could
be certain implications that may come on the context, but it is much safer to use
comprising though there are equivalent words. So, you would always given a choice of
using a word containing and comprising, you it is safer to use comprising because of the
way in which the patenting convention has evolved.
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Now, other than comprising you could use consisting. Now consisting or its other words
like consists of are regarded as closed ended transition terms. Meaning which when you
use consists or consisting or consists of, then you are essentially closing all the elements
in that claim. So, the body part which has different elements, if you use consisting it
means that it only has those elements, they cannot be anything further. So, the claim is a
closed ended claim.
Now, this is usually used for chemical inventions where the limitations are essential,
chemicals are very specific. So, you need to bring in those limitations. So, the word
consisting or consists of or consisting of is usually used for chemical inventions. Now
there are also other words consisting having being you will note that having also figures
in comprising and in consisting. So, it is based on the context in a context of chemicals,
if you use having then it is understood as a closed ended closed ended transition term.
Now, they could also be another usage of consisting like, you could say consisting
essentially of instead of saying consisting of, you say consisting essentially of. Now this
term consisting essentially of has been interpreted to be in some place between
consisting which is a closed interpretation, and comprising which is open. So, you would
use consisting essentially of when you do not want it to be either fully open or closed,
you can; when you see examples you will understand this concept better.
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Prof. Feroz Ali
Lecture – 31
Body
Body.
What follows the transitional phase is what we call the body.
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The body of a claim can comprise of different elements. And how they interact with each
other so, the main constituent of this part of the claim the body are the elements. The
body of a combination claim, usually comprises of 2 things. Now we refer to a
combination claim, because most inventions fall within this category. Most inventions
are invention which combine things. So, most of the claims that we study will be
combination claims.
Now one, the body has the listing of elements. It details the elements like the structure
part step ingredient. And it also describes how the elements work with each other. How
they cooperate and work with each other, cooperation among elements makes it a
combination otherwise it would be an aggregation. You know, if they if you do not have
the cooperation step in your claim, it is a mere list; a list of things. So, the cooperation
part of the claim where the elements cooperate and work with each other, that is what
makes it a combination. So, if it was only a listing of the things, it would be a
aggregation.
So, the body part of the claim would have the listing of the elements, and it would also
have described how the elements work with each other. So, 2 things to bear in mind the
body part of the claim will have the elements, and how they cooperate or work with each
other.
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Since the claim forms the concluding part of the patent specification. There is already a
narrative in place. The descriptive part of the specification narrates what the invention is
about. Now in the claim, you try to avoid laudatory phrases. Like, novel, inventive, more
efficacious, enhanced efficacy, these words are laudatory and so, they have to be
avoided.
Now, the relationship between the preamble and the body can be seen as the preamble
describing the mission process or a composition, and the body having the parts steps and
substances. So, a machine has parts, a process has steps, a composition has substances.
So, the preamble if it mentions a machine, then the body will have parts and so on.
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Defining the elements, the body follows the preamble and the transition, we had seen
that. The body lists the elements and how they cooperate. The cooperation can be
structural, physical or functional. So, when you see an element being referred to in the
body part of the claim, you can see that the cooperation between the elements could be
structural, they form a part of a particular structure. It could be physical, the way in
which they act with each other, or it could be functional, as to what one element does,
and how it is related to the function of another element.
We had mentioned that the body part would normally have different elements, but they
could also be a single element claim. Literally, it is a single element, because claimed for
the US patent 3161462 is element 96, the element 96 of the periodic table was patented
by this patent. And so, so it is literally a single element claim.
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Defining the elements.
Now, if the preamble defines an apparatus or an article or a machine or a device, then the
body will define the structural components.
Now, if the invention is of any of these categories; which means we are talking about a
product patent largely, then the structural components will be defined in the elements. If
the patent is for a process, then the body will define the steps. If the patent is for a
composition, again it is a product the body will define the ingredients. So now, you can
understand how the elements are related to the invention or the preamble part of the
invention.
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Now there are 4 things that you have to cover about each element, regardless of what the
invention is; you have to mention these 4 things about the element.
One, you identify and name the element, if it is a holder, if it is a heater, if it is an

ingredient a chemical compound, if it is a part of a machine, you name it and you
identify it, you name it. Two, you if there are many parts of the same kind, then you list
the distinguishing feature, the distinctive feature, which distinguishes it from the from
others in the same class. Now we had seen that the catheter had 2 layers. The outer layer
and the inner layer. So, whenever you have 2 or more things belonging to the same class,
in this case layer, then you will have to add that distinguishing feature say outer qualify it
as an outer layer or an inner layer, or if there is a top part and a bottom part, say in the
case of a drinking straw, you can say the open part the top part which is open or the
bottom part.
So, depending on the number of members in the same class, you would describe the
distinguishing feature. Three, cooperation from other elements. You would also list how
the element cooperates with other elements in the claim. So, this is critical, because the
claim has to describe how the elements cooperate with each other. If it does not, as we
mentioned before then it would only be an aggregation of elements it will not be a
combination of elements. So, the how it interacts with each other has to be described.
Functions, the function of the element should also be described.
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So, to reiterate, there are 4 things that you will cover about the elements. One, you will
identify and name the element, if the element belongs to a class where there are more
than one member, you would identify the distinctive feature of that element; like, the
inner layer and the outer layer. Three, you will list out the how it cooperates with other
elements, and four, you will list out the functions.
Now how do you introduce the elements? The first time you introduce the element, you
use an indefinite article like a or an. Now if the first time you introduce the element the
elements are in the plural. For example, layers or 2 layers, in which case there is no need
to use the indefinite article.
You could also introduce elements through means clauses, like; instead of saying a light
you say a means for lighting. So, again, there is no need to use the indefinite article, if
you use this format. You will find means for doing a particular act in some claims. So,
that follows a particular style. So, you need not use the indefinite article in that case. For
all second and subsequent uses, you rely on a definite article. Because you have already
mentioned it, you have already mentioned the layer, then you will say the layer or such
layer a layer such as. Now you would avoid using the word said say saying the said layer
because it could have a certain implications.
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Prof. Feroz Ali
Lecture – 32
Forms and Punctuation of Claims
Form and punctuation; by now, you would have seen that claims because they are written
in the English language and they have to be in the form of a complete sentence, it
follows the same rules of punctuations as a normal sentence. But because of the
limitation by convention of having to write a claim in a single sentence, it is sometime
required to use punctuation in a more emphatic way than you would normally use
punctuation in your normal sentences. Now, since it is written in a single sentence, there
is a need to separate the different parts of the claim. So, that a person who sees it is able
to easily understand the invention.
Now, this is largely done by punctuation, separating the different parts of the claim is
done by punctuation, we use commas, semicolon and colon, we also use a break, a
sentence is broken to start off as a part of a same sentence. So, you also do that through
breaks, now let us just show you how comma semicolon colon and break can be used to
create different parts or to distinguish the different parts of a same claim.
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Now, let us take the claim for a car. A car which is the preamble comprising which is the
transition, transition is followed by a punctuation mark, a colon. A, chassis followed by a
punctuation mark a semicolon; B, an engine mounted on the chassis again followed by a
punctuation mark a semicolon, a drivetrain powered by the engine followed by a
semicolon and notice there is no punctuation after and D, wheels connected to the
drivetrain, it ends with the period.
Now, if you look at this a car is in red, which we understand as the preamble comprising
in blue which we understand to be the transition term and the remaining is the body. So,
the body tells us how the parts are and how they interact with each other. The engine is
connected to the chassis it is mounted, the drive train is powered by the engine. So, there
is a connection there and the wheels are connected to the drive train again it shows how
the various elements cooperate with each other.
Now let us look, take a closer look at the punctuation. Now the use of the colon follows
the transition, it may be there you could also do it without a transition, just the break can
convey the idea that this is a separate a separate part of the claim. Now the semicolon
appears in three places does the role of defining or distinguishing each element. So, each
element ends with a semicolon and you have a full stop which completes a sentence.
Now notice this after the drive train powered by the engine there is an and now the and
creates after the and you make a break, and that is that that will denote a separate
element.
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Prof. Feroz Ali
Lecture – 33
Omnibus Claims
Omnibus claims; omnibus claims are not allowed. Every standard textbook on patent
drafting you will find that in almost begins by telling you that an omnibus claim is not
allowed, and in practice applicants do not find an file an omnibus claim. So, we need to
introduce what an omnibus claim is. So, that you do not fall into drafting one. Now, a
machine substantially as shown and described; substantially as shown and described is
not clear from the claim. So, you have to read the entire specification to know what a
machine substantially as shown and describe means.
So, claims have to be clear and succinct, this does not fulfill that requirement or another
example. A device shown and described in figures 2 to 5 again, this is not clear because
you have to cross refer or you have to go beyond the claim to understand there what it
was meant. So, wherever you have a reference to substantially as shown or described or
the words just shown or described and whether it has a cross reference to something else
or not, you would regard this as an omnibus claim.
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Now, why are these claims not allowed? They violate the mandate of section ten now the
ten requires that the claim should be definite if that the claims define the scope of the
invention, and that the claims are clear and succinct. So, it does not satisfy these
conditions and that is the reason why omnibus claims are not allowed.
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Prof. Feroz Ali
Lecture – 34
Structural and Functional Definitions
Structural and functional definitions; we will look at a set of definitions that can be used
which could either be of a structural in nature or which could perform a particular
function.
Now, whenever you name an element, you are naming it as a part of a structure because
a device which is a combination of many elements would have different parts in it. So,
whenever you name a device, you are attributing a name to a particular device, to a
particular element in the device.
Now each element that you describe should have a descriptive name. So, there should
not be any element in your claim, without a descriptive name. And you normally use
words in their common meaning, you do not attribute any special meaning unless there is
a cause for it. So, the use of the word if there is an ambiguity the dictionary meaning or
the common meaning will be attributed to it. So, you always use words for instance if
you use a heater, the heater is understood in its normal meaning. In cases where you
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want to give a special meaning the special meaning has to be defined in the specification
and the claims.
Now, one way to do that as you mention in the specification, that there is a special
meaning and the special meaning is also attributed to the claims appended or you use
similar language to say that the special meaning is not just for the specification, but also
for the claims. Now the special meaning once it is defined, then every time you use that
word it gets the special meaning. Now there is no need to capitalize a particular word
because you have given a special meaning you just use it in the normal form.
Now, you have to be careful in choosing the descriptive name for the element because
the descriptive name will decide the breadth of your claim. So, if you are using a tape
recorder for instance as a descriptive device as a descriptive name for a for a recorder
alternatively, you could use a means for recording which could be a functional way to
define it or a recorder simply which means it could also in include a digital recorder. So,
how you choose the elements if you give a narrow definition or a broad definition will
depend or will decide the breadth of your claims.
If you do not define something using the structure like if you do not use or define a
element through as a part of a particular structure, the other alternative is for you to
define it as a function. What we call a means for definition, a means for dash, a means
for recording, a means for floating or a means for a supporting. So, which means it’s a
means for connecting, but all these functional definitions tell you that this can be a way
an alternative way to define a structural element.
So, a structural element rather than calling it a connector, you could call it a means for
connecting which would be become functional, and it will become a broader definition in
itself it could be any means for connecting.
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Now, you have to use appropriate adjectives when you are naming the elements, for
instance if your elements comprises of multiple layers, then you would use the correct
adjective to state the outer layer and the inner layer. If the elements are identical then you
can use the first and the second depending on how you are mentioning them for instance
many a times they will be support members.
So, multiple support members; so, you can name them as the first support member, the
second support member, the third support member and so on. So, when there are
identical elements, you have to qualify them to distinguish them from other members.
Now you can also distinguish the elements by association by how they are connected to
or how they are associated to, you can say a particular upper floating member or an a
lower floating member. Because floating member there could be multiple floating
members by association where they are or the left floating member or the right floating
member by you can you can distinguish them by association.
So, once you assign a name to an element, you have to use that name consistently the
name that has been assigned has to be used consistently. So, that there is no ambiguity.
You cannot refer to something as a layer in one place and then later on call it an outer
layer or the left layer. So, the names have to be used consistently to avoid ambiguity and
if there is ambiguity, it can be a reason for invalidating your claim. Now the best help is
in using dictionary and the thesaurus. The thesaurus gives you alternative terms for any
given word. So, you could use that to broaden the language or to capture a much a
broader word for an element which you are using.
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Now, you can define the elements structurally by giving them it a descriptive name as we
had seen. For instance connector would be a descriptive name you could also define
them functionally. Now you when you define an element functionally, you define that
element through its function rather than describing it as a part of a structure, you describe
the function that it does. For instance the common way to define elements functionally is
by using the phrase means for dash, now or a step for doing something a means for doing
something. Now for instance a device for floating rather than calling it a floating device
you can call it a device for floating.
So, you are essentially using a function to define the term or an apparatus for removing
seeds. Now an apparatus for removing seeds is much better than apparatus which remove
seeds. So, you should try to avoid phrases like which from the function. The means for
dash is used as a form of claim limitation. Once you use a element or you define
something as a means for doing a particular function it limits the claim for that particular
function. You could also instead of using a means for definition, you could also use the
you could use the structural definition. So, instead of using means for heating you could
also say call it a heater.
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Now, use a functional language; now there are alternatives for a means for definition
which is what we call a functional language instead of using a means for, you use a
function. Some examples providing can be used to describe some operation, creating can
be used for describing what has been created in some physical property such that, the
functional relationship is achieved such that followed by what is the functional
relationship that is achieved, whereby to describe the effect that happens so that to
describe the desired end result.
Now, use a functional language when you use functional language, you it covers a
structure. When we say a means for recording what is being covered is the function of
recording. So, the recording can be by a device that is that is through a magnetic tape, it
could be recording by a digital recorder or it could be recording by say a computer. So,
when you use a functional language, it covers a structure without describing what that
particular structure it. So, it gives you more room to accommodate different types of that
function. Now you should recite the function immediately after describing the element.
Once the element is named you have to describe the function. So, that there is no doubt
with regard to what function which function relates to which element.
Now, use of the word whereby to describe a result that follows from a previously recited
structure, now this again follows the earlier part which we explained that you cover a
function and which the function should immediately follow the element that you have
described.
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Now, the elements have to be ordered either structurally or functionally. Now functional
ordering is it is ordered in the degree of closeness to the element on which it operates.
An engine mounted on the chassis now this is called a functional arrangement because it
is ordered based on the closeness to the element on which it operates. Now in a structural
ordering you first recite the base or the foundation especially in mechanical devices or
the source of power in electrical device, and then you construct all the other elements on
that. So, the there are two predominant ways in which you can order the elements, you
can either order them structurally, which is how it is constructed or functionally based on
how it operates.
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Prof. Feroz Ali
Lecture – 35
Cooperation
Cooperation: In a claim you need to specify how the elements interact. For instance a
machine is understood as an operative combination of elements; so, you need to explain
how the elements in the machine interact with each other. You have to avoid a catalog of
elements which is a mere listing of elements without denoting how they operate with
each other.
The words describing relationships here is a list of words, you could use Proximate to
show something is next to each other or Adjacent to, Connected to, Adjoining,
Overlapping. Now these are the words which would specify how one element is
connected to another through a relationship.
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Now, there are three forms of cooperation largely; the first one is structural which by
which we mean physical and mechanical connection between the elements. Now they
could be a static linkage like by using the words fixed to, screwed to, or connected to.
Now, relative positions they could you could describe structure, you could describe
elements which are structurally linked by their relative positions. For instance joined
above or adjacent to we will show that the cooperation is structural between the two
elements or you could also show something through a connection screw connecting the
hinge to the door.
Now, this describes connection and this is a form of connecting which connects two
things; the hinge end to the door tells us that the kind of cooperation here is structural.
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The other form of cooperation is functional; now how each element functions with the
operative frame within the operative framework of the invention. Now legs mounted to
support the seat; we had earlier seen an engine mounted on the chassis now all these are
instances which show how the function between two elements is described.
Now, functional statement you could also use a functional statement like for instance so,
that describing the function or for again followed by the description of the function or in
order to. Now these phrases or words are used to describe a function that follows a
particular element.
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The third type of cooperation is cooperation described by the order of steps. Now when
you recite the order of steps it automatically tells a person that, that is the order in which
the things are related. For instance, if your process involves mixing followed by rinsing
and then by drying the sequence in which you present them will tell them that is the
order in which cooperation happens between the elements.
Now, for this you have to recite things in sequence; you also have to ensure that each
element is set apart separately. So, that it is distinct each element is distinct; now for this
you can use a colon at the end of a transition or a semicolon at the end of each element.
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Prof. Feroz Ali
Lecture - 36
Types of Claims
Types of claims: There are broadly two types of claims, first is the independent claim
and second we have the dependent claims. Now, the dependent claims may also be
multiple dependent claims in which you have reference to more than one claim, so that is
a subset of the dependent claims. So, the dependent claim could also be multiple
dependent claims where you have more than one reference to a claim.
Now, we will show you more examples then things will be much clearer.
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Now, let us look at a patent granted for a foldable iPhone, this is a patent that has been
granted to Apple that is the patent number for you and this is what the phone is about, its
a flexible iPhone.
Now, if we analyze the claims you can see the independent claims beginning with a
preamble and a transition. The preamble being an electronic device and the transition
being comprising and then you have the body, a housing structure, a flexible support
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structure, mounted to the housing structure. Now, notice something that is happening
here which we have which we have covered.
The first time you mention a housing structure you are mentioning something for the first
time you are introducing that into the claim language for the first time. So, you use the
indefinite article A.
In the second class when housing structure is mentioned again you change it to a definite
article the housing structure. Now, this is what we call antecedent basis. Because you
have already mentioned housing structure you can call it the housing structure or set
housing structure it is another thing other way to look at it or you can even say such
housing structure.
So, antecedent basis is to ensure that wherever you mention an element you ensure that
that element as see in an earlier reference. And the first time you mentioned an element it
has to be indefinite. So, this is a style that is followed the first time you mention an
element in this case, the first class you will see the housing structure the housing
structure is an element which has been mentioned and that will be that will be mentioned
using an indefinite article A.
The second place where you mention it you will be using the now, you can see that.
Now, and notice how the punctuation operates. You have the semicolon followed by, and
a flexible display mounted to the flexible support structure. So, you have already
introduced the flex a flexible support structure in this clause, here you can use the
flexible support structure because it is already introduced. Because you are introducing a
flexible display for the first time you use a whereas, this flexible support structure its
already been introduced in the earlier clause you can now, call it the.
So, in patent drafting especially when you are drafting the claims the first time you
introduce an element you use an indefinite article a or an and every other time you refer
it you call it the, said, such or whatever appropriate language that you can use. Now,
again there is another transition. Now, we saw the first transition that was comprising.
Now, comprising these three things wherein which means it is a further detail to what
has already been described wherein whenever you use wherein you would usually
explain things that are already preceded.
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So, wherein the flexible display notice that it is the flexible display, because flexible
displays already been introduced has first and second portions, wherein the flexible
display is movable between planar position in which we have not we have abbreviated
that sentence, wherein the flexible support structure is configured to hold the flexible
display. So, now, you will get a gist of how the claim is written by analyzing this
independent claim. So, an electronic device is what we call the preamble, comprising is
the transition, and following the transition you have the body.
The body comprises of 3 parts a housing structure, a flexible support structure and a
flexible display. Now, what is the flexible support structure? What is the display about?
All those thing can be flushed out the details can be flushed out by using the wherein
language. Wherein can be in different clauses, wherein the flexible display you can
explain has two portions, wherein the flexible display is movable that can be a separate
clause, wherein the flexible support structure you can explain it. If you want to you can
even say wherein the housing structure if you want to explain the housing structure. So,
this is what we call an independent claim.
An independent claim has to be the first claim of your claims when you draft it, because
an independent claim can stand on its own. An independent claim does not has any cross
reference to another claim. So, though we have abbreviated this we have not shown
certain clauses here you can understand that this claim stands on its own.
So, what the function of an independent claim is to have a broad very broad claim and an
independent claim which figures first is usually the broadest claim over the invention.
All limitations would normally be introduced into or variants or improvements would be
introduced independent claim.
Now, we will see that. Now, keep this bear this in mind. An electronic device comprising
a housing structure, a flexible support structure and a flexible display wherein various
things are explained is the independent claim, wherein the support flexible support
structure comprises now. Here you find another level of a transition. So, probably the
third level of transition first level of transition was comprising, the second level was
wherein and now, wherein the support the flexible support structure comprises you are
going to say certain things. So, you can see the third level of transition coming in.
Comprises you are going to explain the support flexible support structure in detail.
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Now, let us look at the corresponding dependent claim for this. The electronic device
defined in claim 1. Now, that is a preamble, wherein the transition the flexible support
structure comprises a sheet of flexible metal. So, what did this independent claim do?
This independent claim brought in a limitation of the flexible support structure comprises
a sheet of flexible material.
Now, this brings a limitation to the claim. So, the independent claim did not have a
restriction on what kind of flexible support structure that it has to be a metal whereas, the
dependent claim because it is based on claim 1 the independent claim can introduce a
limitation as to what the flexible support structure should comprise off. It comprises a
sheet of flexible material.
So, now, you can see that. The dependent claim cannot be read without looking into the
independent claim because it cross refers to what you can see here claim 1. It cross refers
claim 1 and because claim 1 is introduced by cross reference you have to read claim 1 to
understand the full impact of claim 2. So, this is a way in which dependent claims are
written. Dependent claims need not recite the entire elements described in the
independent claim it just can import everything by a cross reference.
So, now, we understand the limitation that claim 2 introduces as a limitation to this
element that is element number 2, the element number 1 is housing structure, 2 is the
flexible support structure and the flexible displays the third element. So, the second
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element now has a limitation that it is a sheet of flexible material. So, this is a limitation
that is introduced. The third dependent claim reads the electronic device defined and
claim 2 where in the sheet of flexible metal comprises nitinol.
Claim 3 is a dependent claim which is dependent on claim 2 because it has a cross

reference to claim 2 you can see that defined in claim 2 and the limitation is on the
flexible sheet material which was introduced in claim 2. Now, we introduced this flexible
sheet material here and the flexible sheet metal is now, added a further limitation that it
comprises of nitinol.
So, this is a dependent claim which incorporates a reference to claim 2. So, you can see
how the structure flows. So, you have an independent claim which describes the broad
invention, you have dependent claim which is claim number 2 which introduces a
limitation to the flexible support structure saying that the flexible support structure
comprises a sheet of flexible metal, and the third claim which is a further limitation on
that sheet of flexible metal which says that the flexible metal shall comprise of nitinol.
So, you can see this is more like a tapering or a reverse pyramid. You have the broadest
claim on top a dependent claim that is narrower than that underneath and further another
dependent claim at the bottom which is narrower than the earlier dependent claim. So,
you can see how the limitations are brought in.
In claim 1, there is a support flexible support structure that is introduced. In claim 2, the
flexible support structure is now, referred to or confined to a sheet of flexible metal. And
in claim 3, the flexible metal is comprises nitinol.
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Now, let us analyze the independent claim. We are already seen this independent claim
let us see; what are these features of an independent claim. One, it stands alone there is
no cross reference to any other part of the claim. It includes only the limitations
contained in it which means the limitations are with regard to housing structure, a
flexible support structure where the flexible display has two portions. So, wherever you
saw the wherein the wherein here, the wherein in these clauses it introduces a limitation.
So, it only is confined to the limitations that are introduced here.
Nowhere does it say that the flexible display should have nitinol in the main claim. So,
there is no limitation that is there in the dependent claim. So, it includes only the
limitations contained in it. It is not dependent on any other claim because you do not find
in the preamble you do not find any cross reference to any other claim and for the same
reason we say that there is no cross reference in a independent claim.
So, one quick way for you to understand whether a claim as a dependent claim was an
independent claim, is to look for cross references is any other claim cited across. So, if it
is not there by number you can presume that it is an independent claim.
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The dependent claim as we have seen adds limitation to some other claims. So, there was
an earlier claim it adds in limitation by bringing in by explaining what the flexible
support structure is, by explaining or detailing what the sheet of flexible metal is. It
incorporates limitations, it can cut across classes for instance you can have an apparatus
claim the dependent claim can be a method. So, it can cut across classes.
You can have an apparatus claim and you can have a dependent claim based on the
apparatus claim, but it mean it is not necessary that an apparent claim and its dependent
should belong to the same class. It can cut across class classes and they will be cross
references. As you can see here this cross refers to claim 1 and here it cross refers to
claim 2.
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Prof. Feroz Ali
Lecture – 37
Dependent Claims
Dependent claims: in this lecture we will look at 3 things about dependent claims, one
form of dependent claims, the contents in a dependent claim and the use of a dependent
claim.
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Form: The preamble of a dependent claim should be similar to the preamble of a parent
claim. Now, we use the word dependent and parent. When we refer to the parent we refer
to the main or the independent claim upon which the dependent claim is based. We had
seen in the case of the flexible iPhone claim 1 was the parent claim, and claim 2 and 3
where dependent claims.
So, the preamble portion would look the same. The preamble recites the main portion of
its parent. For instance if the parent claim is a brush for removing dust particles the
dependent claim would be a brush for removing dust particles of claim 1 and it goes
further to recite any limitation or any detail that it needs to provide.
The if the parent has a long preamble the dependent can shorten the preamble, like a
brush off claim one instead of saying a brush for removing this particles of claim on it
could be a brush of claim 1.
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The dependent claim has to indicate the kind of dependence on the parent claim. It
should denote that it is depending on another claim. Now, this can be done by using the
language as recited in claim 1, you can see a brush as recited in claim 1 or you could say
a brush off claim 1 again these words indicate dependency or you can say a brush as
defined or as specified in claim 1 or as defined in claim 1.
Now, these are the kind of language that you will use to indicate that the dependent claim
is dependent on another claim the idea of a dependent claim is to limit the scope of the
parent claim.
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Now, let us look at the transitions that are used. Now, if you use the transition
comprising, the comprising transition is used in a normal case like a brush comprising in
addition a blower. Now, further comprising could also be used or comprising in addition
it shows that it the transition form can be in addition to what you have already said or
further including a brush including a blower.
Now, you use wherein or in which to further qualify the element and it is introduced to
signify the relationship between two claims. We had seen the use of wherein in the
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foldable iPhone. The first transition was comprising, the second transition which we saw
was wherein which brought out further details of the three structures in that example. A
brush where in the body is made of wood. So, the brush is already recited, wherein
brings in the detail about the body of both of the brush.
The dependent claims have to be numbered and arranged. Now, if there is only one
dependent claim based on a honor independent claim it could figure anywhere it could be
any in any place provided it gives the correct cross reference, but if you have a series of
dependent claims then you would arrange them close to each other.
Content: now, you have to define cooperation between each element recited as well as
cooperation between the two claims. Now, the two claims we are referring to the parent
and the dependent claim.
Now, newly added elements should cooperate. For instance we saw that in the iPhone
foldable iPhone case we saw that the metal was referred. So, there has to be reference to
the metal and the fact that the metal forms a part of the display. So, the relation or the
cooperation has to be clear. It should contain all limitations of the parent if the parent has
three limitations in the foldable IPhone we saw that there was housing, there was a
structure and there was a display, the same limitations will carry on to the dependent
claims.
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The dependent claim also cannot limit any element of the parent. If there are 3 elements
in independent claim a, b and c. The dependent claim cannot just recite a and b or a and c
it has to recite all the elements in the parent. It can add new element or modify existing
element. It can add a new element it can say what kind of metal is used for c or it can
modify an existing element it can see or bring a limitation to b or to a. So, this is
permitted. As we already mentioned it cannot subtract. So, it cannot remove anything
from the parent claim, but it can always add and modify.
Now, let us look at this example the motor of the apparatus of claim one used in a
vacuum cleaner, where the apparatus of claim 1 includes elements in addition to the
motor.
Now, you could use this to add further detail in claim 1. Now, you cannot say an
apparatus of claim 1 without the motor. Now, that cannot be done. There wherein the
first example the motor of apparatus of claim 1 used in a vacuum cleaner is permissible,
you cannot say in apparatus of claim 1 without the motor that would amount to
subtracting what is there in the parent line this is not allowed. Limitations by adding
elements or by providing detailed description of existing elements. So, the limitation can
be brought in by adding a new element or by providing detailed description to what is
already there.
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Now, let us look at the use of a dependent claim a dependent claim that adds a blower.
An apparatus as recited in claim one further comprising means for circulating air. Now,
that is one of the use uses for which you can put a blower to use. So, it is a function
defined by the means language a dependent claim for a composition. A composition of
claim one wherein chlorine is added in the concentration of 10 percent, so you can see
that; further comprising in the first example wherein in the second example or transition
that is used to denote a dependent claim. And the fact that it is preceded by a cross
reference which is claim 1 tells us that it is a dependent claim.
If the dependent claim 3 adds a new element claim 4 can recite for instance the cleaning
apparatus of claim 3 further including a time sensing device a timer or a time sensing
device. So, so you will see that dependent claims can be used either to have detail to
what is already there or to introduce a new element.
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An example of how we add details and apparatus as recites as recited in claim 2 in which
the circulation mean comprises a motor and set of blades. So, the circulation was not
described in the earlier claim here the in which transition described the circulation.
Multiple dependent claims: A multiple dependent claim is a claim in which there is

reference to one of the several alternate claims. There are many claims on which it is
dependent on it recites all of them or more than one of them. It is a shortcut for writing a
set of multiple dependent claims. So, if you want to write a set or a series of multiple
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dependent claims it is easier for you to give cross reference. So, there or all linked
together.
For instance, a device as claimed as in claim 2 or 3 further comprising. So, so you have
brought cross reference to two claims here claim 2 now or claim 3. So, it could be either
of the combination. So, the device as in claim 2 or 3 further compressing. So, this is a
multiple dependent claim because this claim is dependent on 2 and on 3 depending on
how you read it.
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Prof. Feroz Ali
Lecture – 38
Apparatus Claims
Apparatus claim.
We had already mentioned that the classes of claims could be apparatus, it could be
method, it could be a composition, it could be a system claim, there are different classes.
But broadly in India we have 2 classes. What we call a product or a process; if you look
at the language of section 2(1)(j), an invention is defined as a new product or a process.
Or if you look at the language of section 48, we tells us what are the rights that a
patentee has; there are 2 broad sets of rights a patentee has, one right as with regard to a
product patent and the other right (Refer Time: 00:52) in a product a process patent, a
patent over a product or a patent over a process.
Now, apparatus claim is the thing that belongs to the first category what we called
product claims.
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Now let us look at apparatus claims in detail, the general use of apparatus claim. An
apparatus denotes it covers a wide variety of things, it includes machines, it includes
devices, instruments, appliances and gadgets. It includes electrical circuits, computer
related inventions, hydraulic devices, mechanical and electrical devices, whole lot of
things can come under an apparatus claim. You could call the machine, a machine for
doing certain thing a device, and instrument, but the bigger genus is the apparatus. So, so
the apparatus could include any of these different categories of inventions.
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Now, a ceiling fan can be described in this language; apparatus for circulating air which
comprises motor, a means for suspending the said motor from a ceiling a motor housing,
a switch for controlling operation and a plurality of blades. Now this is a claim for a
ceiling fan. Now you will notice here that what is being recited, you can identify from
here the preamble, the transition, the preamble is here and apparatus for circulating here.
A transition comprises, and from here on you will find the body.
That is the preamble the transition and the body.
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‘Apparatus for’; It whenever you refer to apparatus for it describes the function of the
apparatus, and apparatus for heating an apparatus for boiling.
So, you can bring in a function by introducing the function along with the apparatus. But
over a period of time, if there are large number of patterns filed for that particular
apparatus. That particular apparatus may take a more specific name. So, in which case, it
is better to refer to that specific name. Rather than referring to an apparatus for
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circulating air, you could say a ceiling fan comprising. So, whenever a particular
apparatus or a gadget or a machine gets a specific name, it is better to use the shorter
preamble.
Find the main elements to be claimed, this is what you would do in making an apparatus
claim, and make each element the subject of one clause, we had seen that every element
is recited in a separate clause, we had seen that in the case of at the foldable iPhone, we
had seen that in this example to the ceiling fan example. It has to be a separate clause.
You have to find the main elements to be claimed, in an apart as claimed; you will find
the main element to be claimed. Then you will make each element the subject of one
clause. We had seen it, in the context of the foldable iPhone, each element the housing
the structure the display they shown as different clauses.
You can write them together, but you should to understand that each element is shown
as a separate clause. Name the elements and show the cooperation. You will name the
elements housing give it a name structure foldable structure, the display, you would have
to name it with an appropriate name, and show how they cooperate.
Now, you could have some negative limitations in an apparatus claim, but they are
allowed only in few cases where they are justified. You could call nonmagnetic, because
that is a negative limitation, or non-identical colorless, there have been instances where
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such words have been used. And because you are claiming an apparatus which is a
mechanical device, you should support your claim with drawings.
Now in a mechanical invention for an apparatus, you would use clear names for each
element. Many a times there will be similar elements grouped together. So, you have to
qualify and use the right name for each element. If you want a broader scope for your
invention, then you would use functional names, rather than calling a particular device
which is used for heating, you would use means for heating; which can in incorporate
multiple different types of heating devices.
Now in interpreting the claim, what we call claim interpretation, they can be intrinsic
extrinsic or tertiary tools that you use. When it comes to an apparatus claim. The intrinsic
or internal tools that you will use are the claims and the specification itself. So, if you if
there is some doubt or ambiguity with regard to a claim, and when the claim needs to be
interpreted, the first thing that you will rely on are the intrinsic tools; the claims, what do
the claims say about that word, or what does the specification say about that word. You
can also get into something what we call the prosecution history, what was the idea, or
what was the intent of the applicant during the course of prosecution history. What did
the applicant submit, or what is the applicant do while the patent was being prosecuted in
the patent office.
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So, all these are what we call intrinsic tools. So, there is doubt ambiguity with regard to a
word or a passage, you first use the intrinsic tools. Then if the ambiguity persists or of
the doubt continues, then you go for the extrinsic tools; like a dictionary or a thesaurus or
an encyclopedia whatever is required to further explain those terms.
The last thing which you would use to explain a term or a phrase in a patent or to claim
or to interpret the claim will be the tertiary tool which is expert evidence. Normally
happens in proceedings before the code.
Meaning of elements, you have to show the preferred embodiment in the specification
and that has to be claimed. The abstract is a part of the specification.
So, it has to be defined, and you have to state the minimum number of similar elements
when more than one is required. In terms of number of things, you have to show the
minimum number if you if there is a possibility to use more than one. So, if you are
using a heater, you can say at least one heater or at least a heater. So, which is which is at
that the minimum of one could be more and when you are using more than one, you use
the word plurality, then you will see this word appearing in various claims that you read
a plurality of fans or a plurality of blades. So, this is something which is particular for
patent drafting, the language rather than using many we use plurality. And the reference
to the drawing has to be made in the claims using parentheses. We have already covered
this is a requirement in the law.
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Antecedents, now the element in the first claim if it mentions for the first-time ceiling
fan. You would refer to it as a ceiling fan or a ceiling fan. The subsequent references you
can call it the ceiling fan, the said ceiling fan or even search ceiling fan. So, we have
already mentioned this, the claims should have antecedent basis. If you mentioned
something for the first time, you will refer to it using the indefinite article. And if you
mention it subsequently you are going to use the definite article the or said or such.
Now the claim must be consistent with the specification, now this is what antecedent or
antecedent basis means. A claim must be consistent with the specification and with itself;
elements recited in the claim must find antecedent basis in the description and within the
claim, if earlier recited. So, the elements should find some basis in the description, which
is a requirement what we refer to as fair basis. So, what is mentioned if you mention
rotor or a blade in the claim, you should have mentioned it in the specification and even
within the claim within the claim is every second reference to a ceiling fan should
mention it as the ceiling fan, because it has already been mentioned before.
Now you try to avoid alternate expressions to avoid confusion, you cannot be using the
ceiling fan in 1 place, and in apparatus for circulating here. That is not permissible unless
there are specific reasons for broadening the scope. Described elements in logical order,
because it is an apparatus you need to describe the logical order or the structure or the
operational details. If it was an assembly of things, then you can just list out how it is
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assembled, but because these are different parts which cooperate and work with each
other, you have to describe the elements in a logical order.
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Prof. Feroz Ali
Lecture - 39
Methods or Process Claims
Method or process claims: We had seen the details about an apparatus claim. Now the
apparatus claim is what we had already mentioned; falls within the ambit of a product
claim in India. And the method or process claim falls within the ambit of process claims.
So, we had already mentioned that there are 2 broad classes of claims which are allowed
in India. So, the product and the process map over apparatus claims which is a
terminology predominantly used in the united states, and a method or process claim is
the other category which is commonly used all over the world. It is either called a
method claim or a process claim.
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Now the structure of a method or a process claim is easier than an apparatus claim. So,
you should all the lessons that we learnt in drafting an apparatus claim will hold good
here. Because claims at the end of the day form follow certain principles which are
common regardless of the class. The structure is easier because there is no need for you
to demonstrate structural cooperation. In a apparatus claim, if there are elements a b and
c, you have to show how a b and c cooperate with each other; functionally, structurally.
That is not needed because in a method claim or a process claim the elements are the
steps in the process. Because the elements are not devices or parts moving parts as it
would be in a apparatus claim. It is much easier to describe it, because you are just going
to describe the process. If it is a machine how the machine works. So, the focus here is
on the steps or on the processes. So, that is why we say that the elements in a process
claim are the steps or the sequences that the process has to go through to complete it.
So, the process also has another inherent advantage that you need not worry about
ordering it finding a logical order which we were trying to do for the apparatus claim.
The logical order is their inbuilt, because the processes simply will not function is that
particular order is not followed. And the scope is also not an issue you need not worry
about having a broader claim and narrower claim, whether you should use a broader
term. Because the process is what it is so, you just by following the process you can
claim the process.
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So, the general rules as we have discussed which apply for apparatus will apply for
method or process claims as well. Now the method of process claims can also be under
different categories; fields of invention, chemical, mechanical, electrical.
Now, let us look at the structure the steps of the method do not need drawing. This is
inherent for a method or a process claims. They do not need drawings, but an apparatus
claims would require drawings if it has moving parts. But you may include a flow
diagram if it is required. But drawings are not required the way it is required for a
apparatus claim.
Now, most of the time a process is a combination of steps, what we call a combination
process patent. For a combination of steps, you need to describe the combination and the
steps in detail, and also disclose the best method. That is a statutory requirement you
need to disclose the best method. There are exceptions to what the kind of method of
method claims that you can have, you cannot claim a method of agriculture there is a bar
under the act, the method of treatment, a method of playing a game. Barring these
exceptions, you could claim a method claim for any thing for which you could claim in
apparatus.
But though method claims are bared, and an equipment in agriculture can be patented,
because it is in apparatus and apparatus that is used for a treatment or a surgical process
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can be patented apparatus for playing a game, what we call a toy can also be patented.
So, the restriction on method patents are only to a few fields under the patents act.
Now we had mentioned the elements of a claim covering a process are the steps. Now
usually you use the verb form ending with ‘ing’, to show that there are the steps to to
show the steps you use the verb form heating the solution, separating the mixture,
covering the metal with a layer of something.
Now, these will tell you that they are steps that have to be done. Now the sequences must
be described.
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Now, there are different types of claims, chemical processes, they can be dependent
claims; like, in a chemical process if an acid is described in claim 1. Claim 2 can be a
process as recited in claim 1, wherein the acid is hydrochloric acid.
So, you describe the genus which you explained in claim 1, and make it more specific in
claim 2. So, dependent claims in covering chemical processes could have further details
about the invention. In electrical claims, you would use commonly used words for
describing a process will be detecting, charging, connecting and other such words which
you would come across amongst electrical inventions.
In computer related inventions and business methods, in India, as far as they achieve
something other than merely appropriating the algorithm the claims can be granted. But
we have a specific exception on business methods, because business methods are not
patentable under the act. And we have a case which is called the Yahoo case, which
describes the prohibition of a business method patent.
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Prof. Feroz Ali
Lecture – 40
Claim Drafting Best Practices
Claim Drafting Best Practices. Let us look at some of the best practices that you need to
follow while drafting the claim.
Aim for the broad coverage, now this is something which you will do because once you
have an invention you will have to look at all the embodiments that the invention is
capable of and your description should encompass all the embodiments, you will ensure
that you can only claim an invention or the scope of the claim can only be as far as the
prior art will permit it to be. So, you should avoid the prior art and at the same time have
a claim as broad as what the prior art will allow you to have, understand that if you do
not claim something, then that is regarded as disclaimed you have given up a claim over
it. So, what is not claimed is disclaimed, there are cases decided by the courts which
essentially tell you that if you have left out something, or if you have not claimed
something, then it is as you do not have a right over it.
Now, try to direct the claim towards multiple classes or categories like you could have an
apparatus claim you could have a method claim, and you could have different types of
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method claims as well. Now a claim for an article you can have an article claim what is
called an apparatus claim, you could have a process of manufacturing the article that
could be a method claim, you can have a process claim or a method claim for use of the
article.
Now, include claims of varying scope this is one thing which normally people would do
because, once you have an independent claim which is really broad, then you can have
dependent claims of varying scope because, most of the time you would not know what
would be the objections that will come either from the patent office or by a competitor
who wants to challenge your patent.
So, having claims of varying scope allows you to give up some claims, if there is an
objection saying that the claim is over clay broad and at the same time salvage something
if, you have a narrow claim which can be enforced in an infringement suit. So, you could
you could have claims with varying scope and this could be done using dependent
claims.
Now, claims should not be brought to cover non enabled matter. Now enablement or
enabling disclosure as they call it, which is something which you will see in the future
lectures which will cover how to write a specification the specification part. Now we are
concentrating on the claims. Now you have to enable a person skilled in the art to do the
invention or to come up with the invention. So, what you have not enabled you will not
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be able to claim because, there could be an objection on your claim. So, you can only
claim the things which are enabled. So, you have to ensure that the claims are not too
broad to claim things that you have not enabled in your specification
Now, there could be a subject matter, objection or a subject matter which could be a
ground for invalidation. Now we know that certain subject matters cannot be patented
under the Indian Patents Act. For instance, inventions pertaining to atomic energy, if
they come under section 20 of the Atomic Energy Act, then you cannot have a patent
over it. So, always be careful about while trying to claim a broad coverage for your
claim, be cautious about the subject matter.
Now, in preparing the broadest claim you would claim the essential elements, the
elements that have to be in your independent claim, you would use dictionary and the
thesaurus to expand the meaning of the elements to get words to expand the scope of the
elements, you should include sub elements of the invention as well we had seen that you
know you they could be an element and the element could have sub elements. So, you
get you can introduce the sub elements in detail in the dependent claims.
Now, complex machines normally have multiple claims covering the sub elements. So,
you should whenever you are patenting a complex machine, you should factor that they
could be multiple claims directed towards the patentable sub elements and substances.
Avoid unnecessary limitations and elements now the limitations can come in the
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preamble, it can come in the transition or in the body. So, you should need to ensure that
because, having a limitation in the preamble and this is a point we have covered earlier
having a limitation in the preamble could mean that the claim will be read in a restrictive
manner, a narrow interpretation would be given to that claim.
Now define the novel and non obvious elements, you can do this by comparing it with
the prior art and, you could ensure that what your invention is not obvious to a person
skilled in the art, define the elements by their invention because, the elements will define
the invention. If it is an apparatus claim you are going to define the elements in the parts
in it and, if it is a process claim you are going to define the steps. You could have means
clauses by which you know which you could have a broader claim, a means for heating
rather than identifying a particular heating element, or a means for holding rather than
high identifying a holding element.
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Now, use functional language we have already covered this aspect to describe a function
of result that necessary flows from the element described. Now whenever you describe
element, you describe the function which flows from that element as well. Now you
could broaden this by saying and these are words which have been allowed in some
jurisdictions having sufficient flexibility, now what that flexibility is you can describe it
later, but having sufficient flexibility or an effective amount of X.
Now, these are these gives you a broader scope because, the effective amount you
necessarily have to explain what that amount it is in the specification nor in a dependent
claim, but this allows you to have a broader scope. Now compare broadest claim with the
prior art because, prior art will you have to ensure that there are no prior art objections at
the time of prosecution, and also when the patent if you want to enforce your patent
reading, if your invention reads into the prior art, then it is a possible objection a
competitor can raise against due to invalidate your patent after it is granted.
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Have claims of different classes different types of method claims, you can have having
you the breath of a claim could be associated with the language you use, and the process
patents or method patents allow you to have claims without structural limitations
because, the elements are not the parts. So, the elements are the steps so, you are not
bound by structural limitations.
You could also protect by in certain cases you could also protect replacement parts of
your invention, though they may not be in patentable by covering the method of
replacement, there are some issues with a form of claim which covers a method of
replacing say a method of replacing an ink cartridge.
Now this has been disputed in some jurisdictions, which essentially allows the user to
replace the ink cartridge, but without getting into the merits of such claiming, but this is
a practice that has been done to protect the replacement of a part which is not patentable
through by means of a method claim. Covering the performance achieved by the
invention what is the output; what is the performance you could also cover that.
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Now, there is an easy way to convert a process claim into an apparatus claim. So, if you
draft the process claim first to convert it into an apparatus claim, there is an it is its quite
easy to convert a process claim into an apparatus claim. Now you also try to cover
through a process claim you can also try to cover the manufacturers of your of the
gadgets that are required to come up with the invention, sometimes the invention may
not be manufactured by the person whose putting it out in the market, it could be
manufactured by a different person. So, by covering the process you could also have
some influence in covering, the aspects of infringement where a manufacturer
contributes to the infringement.
Now, you can take a process claim and add means for language to make it into an
apparatus claim. So, the process claim can now be made into a product claim just by
adding the means for language, we will look at an example.
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Now, let us look at this example there is a process claim, and let us see how it can be
converted into an apparatus claim. The method for manufacturing pen comprising this is
a process claim becomes a machine for manufacturing pen comprising, holding a lower
casing in a selected position becomes, means for holding a lower casing in a selected
position, inserting a refill into the lower casing becomes, ins means for inserting a refill
and lower casing, placing an upper casing over the lower casing, becomes means for
placing an upper casing and sealing the upper casing and the lower casing with the refill
inside becomes means for sealing.
So, you can see the transition the holding an ‘ing’ form word can be converted into a
means for holding, which means it is a functional language which allows you to have a
apparatus claim flowing out of a process claim, this is a quick way to convert to draft to
begin with the process claim, and to convert it into an apparatus claim.
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Add limitations to the claim language without narrowing by reciting the purpose. Now
you can add a limitation without narrowing the scope of the claim, by reciting the
purpose. We had seen this in the Bajaj patent, Bajaj patent recites efficient burning of air
fuel mixture which is essentially a limitation, but it does not narrow the claim because,
that is what all internal combustion engines do. You can also claim the environment in
the sense that we had seen in the Bajaj case, there was an arrangement of the invention
pertain to sparkplug arrangement. So, rather than claiming a spark plug for an engine,
which is the way they could have claimed it, they are claimed in engine that includes a
patentable spark plug or a patentable arrangement for a spark plug.
So, what was claimed was an engine with the patentable arrangement as a part of it. So,
this is a way to claim the environment; environment, in this case being the engine.
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You should have some ratio between the independent and the dependent claims. Now we
say this because the more the number of dependent claims try to one independent claim,
it could make your invention look complex and, the examiner or the controller who is
going to look at your claim, will spend more time on it and he may feel that there is that
there are reasons he may feel that your invention has not come out clearly, the fact that
you had to use so many dependent claims.
Now, some people say that the ratio between the independent and the dependent claim
has to be 1:5. Now that is left to personal choice, but understand that for claims beyond
then, you will be charged separately. So, you need to bear that in mind. Now dependent
claims can define the scope of the independent claim. So, we saw in the claim
arrangement chart definition of element X.
So, you saw that there was a broad claim and the first dependent claim would explain an
element or define an element. So, you could use dependent claims to define the scope of
independent claim, they can be used to show the order of steps is not relevant, for
instance you have a + b + c to achieve a particular result that can be dependent claim 2.
Now, dependent claim 3 can be a + c + b in a different sequence to achieve the same

result. So, what you do here is to convey through 2 dependent claims that the order in
which you have done things is not relevant, it could also be done through an alternative
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order. So, that is one way you try to tell the world that you cannot do it in another way
because, I have already covered that way as well.
To protect matter when the parent is not patentable, now you could use dependent claims
which we had already mentioned in the in the context of refilling ink cartridges, you
could though there are some controversies as to whether such an claim can be allowed
without getting into the subject matter of them or the merit of it, you could use a way of
doing a particular thing, when the thing itself cannot be patented. You could clarify
indefinite claim language through the dependent claims. So, the dependent claims can
clarify bring in more detail to the claim language, where the independent claim is broad
and is not very definite.
Now, for instance if the independent claim has narrates or recites an effective amount of
X; now there could be some issue with regard to what the effective amount is, in a
dependent claim you can say, wherein the effective amount is 1 to 5 grams of X you
could explain that.
Now, you could use dependent claims to show additions and alternatives to the main
invention, you should focus on the commercial embodiment, you should the dependent
claim can be used to claim what is actually sold in the market the market embodiment,
because in an infringement suit if a competitor raises an objection, challenging your
patent, or seeking for a revocation of your patent that is a difference which any infringer
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can take, or the infringer looks at your patent application and files for an opposition
against your patent application.
Then a ground that the infringer would raise is to say that your claims are too broad, and
it does not match the commercial embodiment this is one way they can either challenge
the claim, or they can say they are not infringing. So, what you could do is to claim the
commercial embodiment that thing that you are selling by means of an dependent claim.
So, you could have a broad claim as we have already discussed the broad independent
claims could be at the a concept, but the dependent claim you could have few claims
covering your market embodiment.
This is important when you already have a product in the market which is being sold and
your application is still pending in the patent office. So, when your patents gets granted
you have an independent claim which covers the broad invention at the level of a
concept, you also have dependent claims which actually covers what you are selling in
the market. So, dependent claims can be used to cover what is sold.
Foreign filings. Foreign filings can also be important, in the sense that in some countries
they restrict the filing of independent claims to one, you can only file one independent
claim there are some countries which have that restriction. So, in such countries you
would have multiple dependent claims to cover the broader scope and you would do that
by having dependent claims. And dependent claims are also important in prosecution
because, if you have features of the invention covered through dependent claims of
varying scope some are broad some are narrow, then during prosecution, if there are
objections you can give up some and retain the others.
Now, if your invention has embodiment say it has 10 embodiments, you have to cover all
the 10 embodiments in your claim and dependent claims are a great way to do that.
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You could also have kit claims apart from apparatus claims and method claims. And the
kit claims are used where products can be combined to achieve a particular result. an oft
cited example is pregnancy detection kits because, they have multiple things which you
will have to work together to get the desired result.
Now, kit claims for instance a kit for detecting blood sugar level comprising the patch of
claim 1, and the measurement device of claim 20. Now this is a claim for detecting sugar
level, where there is a patch already claimed in claim 1 and a measurement device which
is already claimed in claim 20. So, you could it is a combination of a patch and a
measurement device which makes it a kit now, you could also have a method claim on
how the kit works or how the test is conducted. Now that would if it is a diagnostic kit,
then there is some argument that it will not come under a method of treatment because it
is a diagnostic kit.
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Now, number of claims and ranges, how do you claim numerical ranges; now you could
have multiple dependent claims, but anything beyond 10 claims you will be charged,
separately for that and the patent office you normally charges its fee based on the time it
spends. So, if it has to read more than thirty pages you are charged for that, if it has to
analyze more than 10 claims then again you are charged extra for that.
Now, for numerical ranges it is advisable to use about because you are not in some cases
you are not exactly sure about, what is the precise numerical or number at which a
particular thing happens for instance, temperature of about 100 degree centigrade to
about 120 degree centigrade because, the reaction may happen before 100 or even before
120 or soon after 100. So, if you are not sure about where the reaction is happening, then
you could use an approximation.
Now, try to avoid strict numerical boundary because, if you use a very strict numerical
boundary then you are claiming only that, if you say that 7 for some number or some for
a range which could be between 5 and 10. If you are precisely claiming 7, then your limit
is that number. So, you can only use that numerical boundary, you cannot claim anything
below 7 or above 7. So, it is preferable to avoid strict numerical boundary.
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You should also avoid precise numbers in numerical limitation for instance, if
temperature is defined using a decimal, as is in this case from 100.00 to 120.00 it should
be there will be some significance attributed to what follows the decimal rather it is
better to claim it this way, 100 degree to 120 degree.
Now, you could use functional language like which describes the function heating the
elements sufficiently long and, you can describe what sufficiently long in is in dependent
claims, they are sufficiently long can be a range of a temperature. So, the functional
language allows you to capture a broader group broader part of your invention.
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Prof. Feroz Ali
Lecture – 41
Claims Drafting What to Avoid
Claim drafting, what to avoid.
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Now these are things that you will avoid while drafting a claim. Avoid inconsistent terms
if you use a particular term consistently use the same term, do not give an alternative
term to it because that will cause confusion, name elements and use them consistently.
Avoid wrong verb form. Now a pen comprises is not a good form to start with. A pen
comprising is rather a better form to start. So, other ing form gives you a much broader
scope.
Lack of antecedent basis we have already covered what antecedent basis is. So,
whenever you use an element introduce an element for the first time use the indefinite
article a or an and whenever you use it subsequently you use the, said or such.
Now, antecedent support is also important not just in the claim because the claim within
the claim anything that is introduced should have an antecedent basis it is also important
from the viewpoint of what is claimed should also be have antecedent basis, what is
called antecedent support in the specification. In India we call that fair basis what is
claim should be fairly placed on what is described in the specification.
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Now, trademarks are normally not mentioned and it is a good practice to avoid reciting
the names of the trademarks in your claims and it is also a good practice not to have over
broad ranges, where the ranges are without an outer limit. And you should also ensure
that the ranges are such that they are supported by the embodiments, when you work
when you have illustrations and examples in your description they should support the
ranges that you are claiming.
So, if your description does not support a very broad range then that range could come
under question, that range could be questioned.
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Prof. Feroz Ali
Lecture – 42
How to Download Copy of Patent Specification
How to download copy of a patent specification?
Normally, it will not be necessary for us to tell you how to download a copy of a patent
specification, but in this case taking things out of the patent office could be tricky. So, I
will just explain you through this short lesson on how to look for things in the Indian
patent office website.
Now, once you come to the patent office website there is this place where you can see
the public search of granted patents.
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Once you click on it you will go to a page that looks like this you can enter the patent
number here, we know this patent number you would have seen this before and this is the
patent number which we used for discussing the Bajaj case, the Bajaj is patented for the
twin spark plug in an internal combustion engine employing 4-stroke technology.
Now, so, you we search on it, we add the captcha and when we press search we go to a
page that looks like this.
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It gives you an application number and it gives you the title of the invention. Now, once
you click here on the application number you are taken to a further page which opens the
details of the application.
You have the invention title, the publication number, application filing date, then the
category field of invention and abstract complete specification.
Now, this is where you can find the complete specification and the claims it ends with
the claims. Now, but this is not where you can download stuff now for that you need to
move further. Now, you need to come to this part the patent E-register and fill in the
patent number and enter the code and this thing opens up.
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For the particular patent that you have searched for, you get details on next due date for
after renewal which is in July and you have details about the patent, you will find the
renewal fee that has been paid all this is public record and you will find this button called
view documents, ok.
When you press on this button you will find it will take you to this page a host of pdf
documents are loaded, right from the initial application that was filed all the forms you
have to closely read them.
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This is the title page and the provisional which was filed in 2002. Now, this is the title
page of the granted now there are description drawings. Now, we are interested in the
claims this one claims as granted and also in the claims as filed there will be the normal
complete this one. So, I have already downloaded these two documents I will just show
them to you.
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Prof. Feroz Ali
Lecture - 43
Amendment to Claims
Amendment to claim: We had already shown you how to download documents from the
patent of his website.
Now we had downloaded two documents pertaining to the Bajaj’s patent and those two
documents are; one, the patent specification that was filed first.
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That was the initial filing of the complete specification, and the, this is one document,
and we also have the amended specification; which also includes the amended claims.
So, we will just show you first the document that was filed first.
Now, this is the specification we will show you and it ends with a claim.
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Now, we have already analyzed this claim. So, I will just quickly take you through the
relevant part which introduces the amendment.
It reads an improved internal combustion engine for efficient burning of lean air fuel
mixture used in engines working on 4 stroke principle, characterized in that, that is a
transition, the set engine internal combustion engine comprising a pair of spark plugs. It
is in the corresponding numbers in the drawings are mentioned in parentheses which is a
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requirement. A cylinder head, a sleeve, a pair of ceiling means, a fixing means, a sleeve
cap.
Now, there is another clause the set pair of spark plugs. Now ideally now we have seen it
should start with the wherein language wherein the set pair of spark plugs being fitted to
the said cylinder to ignite air fuel mixture at predetermined instant. Again, it should have
been wherein the said spark plug being housed within said sleeve. Said sleeve being
detachably fixed to set cylinder head, and held in position by said fixing means said
sealing means being provided between the said cylinder head and the outer periphery of
the said sleeve, and the said sleeve cap being fitted on to said sleeve. It just tells you how
sparkplug is fitted or arranged on a internal combustion engine.
Now, claim 2 is a dependent claim, now it satisfies the all the requirements of a
dependent claim. The preamble is shorter, the improved internal combustion engine as
claimed in 1, now it is eliminated the for efficient burning of lean air fuel mixture used in
it all that thing is removed, and the preamble because it is cross refers to an earlier claim
an independent claim it is much shorter. The preamble can also cross refer to a
dependent claim, but in this case, it is an independent claim.
We are in the said pair of spark plugs are fitted opposite preferably diametrically to each
other. So, so you here you have an independent claim and a dependent claim. Now what
you notice here is that when it mentions the internal combustion engine comprising of
spark plug, there is no limitation to the size of the cylinder. It just says the cylinder head,
and it just says internal combustion engine, everything else is the same.
Now, this case as you would know ran into trouble, this patent was litigated, it continues
to be litigated in the case I believe is still pending before the Madras high court. And this
case led to a very interesting turn of things, because when the patent was filed this was
the claim, but when it got granted you will find that the claim changed by way of an
amendment. Just to demonstrate to you that claims can be amended multiple number of
times. There is no limit to the number of amendments, and what is filed could be much
different from what is eventually granted.
So, the grant they could be objection raised in grant, based on the objections they could
be changes made into the claim. So, the claim can be amended and a claim is a part of a
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specification that can be amended, and an amended claim would look different from the
one which is granted. In this case an amendment introduced a limitation into the claim.
Now, you can see the highlighted part here, internal combustion engine comprising of
spare of spark plugs. The and is and a pair of spark plugs a cylinder, that is it. Now let us
look at the claim that eventually got granted the amended claim.
Now, this is the amended specification. Because we are having a look at the specification
we can go through this in some detail. Now this was amended on 8/11/2004.
And this is form 2 this is the title page, and you can see that there is some corrections
written there.
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The following specification particularly describes the nature and manner in which it is
performed.
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Now, the second page onwards the invention starts. Now there is a description. Now here
you will see that this is an introductory statement, then the art is described, you will not
find in some patterns you will find headings, but it is it is a general description, and it
talks about disadvantages.
Here you will find that the disadvantages associated with the arrangement. So, it talks
about a problem. And it talks about further disadvantages in the prior art, yet another
disadvantage of the prior art.
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So, it talks about difficulties and it says in order to avoid; so, this is the pitch that we
were telling you about.
They would be a problem which is addressed by the invention, and the invention while it
is drafted is pitched as in solution to the problem.
So, this is the statement that they make. We have invented an engine; where when there
are 2 spark plugs providing for generating sparks at the 2 predetermined locations in the
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same time. And they the claim is that the sparks because there are 2 sparks combustion is
better.
Now, they say in the fuel efficiency, and they also say a decreased emission, decreased
fuel consumption and good driveability. Now let us go to the part by the claims are
mentioned. There are descriptions to the drawing and here is the claim. Now this is the
amended claim.
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Now, you will notice that we find something that has been introduced which was
previously not there. This part has now been introduced. Now the wherein or rather from
here fuel mixture used in engines, wherein the diameter of the cylinder above ranges
between 45 mm to 70 mm, characterized in that said internal combustion engine
comprising of the remaining goes on. So, what will happened? The cylinder has now
been introduced earlier with a restriction on the bore ranges. And there is a range tool
size that is 45 mm to 70 mm is the cylinder bore arrange within which this invention will
now operate.
So, 2 spark plugs for a normal internal combustion engine could be used for in any
invention, but this invention there is a restriction on the bore size. So, this is the way they
where Bajaj was able to get over objections, the patent office would have raised in this
case, and by introducing smaller bore or a limitation to the bore size, they were able to
get away with the objections raised at the patent office. So, this part was introduced by
an amendment. So, claims can be amended till they are granted the patent office offers
multiple opportunities for patent applicant to amend the claims, and this claim actually
got into a litigation. This got litigated in a case before the Madras high court.
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Prof. Feroz Ali
Lecture – 44
Claims Analysis Combo Pen with Marker
Claim Analysis: Combination Pen with Correction Marker. In this lecture we will be
looking at analyzing the claims of a patent for a combination pen with correction marker.
Now let us look at the patent document.
Now, this is a United States patent and it has got some bibliographical details which you
can see and at 54 you will find the combination pen with correction marker; you can you
can see that. The title is mentioned here now these are numbers which signify different
fields 76 is inventor, 21 is application number, 22 is the date on which it is filed and so,
on.
Now the abstract gives you a detail of a summary of what the invention is about. Now
we will just quickly read that abstract at least a part of it a combination pen with
correction marker providing a user with a writing utensil and a correction method in a
single device. Now that itself gives us an impression about what the invention is about; it
is a combination pen with the correction marker and the correction method and the
writing instrument both these things are united or are combined in a single device.
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now let us take a detail look at this claim because our object in this lecture is to analyze
the claim to ensure how did the claim come into being. So, we can look at parts of the
specification and eventually see how those parts turned into a claim. And when we look
at the claim we will also be able to see what portion of the description got into the claim
and how the transition happened? And we will also; obviously, be analyzing the claim
claims in the light of whatever we have learned so, far. So, let us have a look at this.
So, you though the patent is a apparatus patent it is largely the claim is for an apparatus
which is what we call a product patent. And for mechanical devices we have already
mentioned it usually starts with the drawing.
So, you can see the drawing here it is just a drawing without any writings in it and patent
drawings are drawings except for flow diagrams you do not have writings on it; you only
have markings and numbers reference numbers. And the explanation to the drawing is
given in a different part of the specification itself. So the drawings need to be explained
in writing; so, we will come to that part.
So, the drawings figure first in the Indian practice you have drawings filed in separate
sheet. So, and there are more drawings you can have a look at that and there are further
drawings describing how different things work and the you will be coming across what
these numbers actually denote and then we have the description which is the
specification.
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Now the background of the invention is important we received a question on how do we

construct or how do we write a problem solution statement? And which part of the
specification if you are actually looking at a granted specification and trying to look draft
a problem solution statement which part of the specification should we be looking at? It
is this part the background of the invention and the part just above summary of the
invention.
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So, the summary of the invention is actually the invention itself, but the background
should give you an understanding of what problems existed in the art.
So, ideally if you want a problem solution statement you will look at the background,
understand what the problem in the art was then look at the summary of the invention
understand the solution and then by reading these two parts you should be able to come
up with the problem solution statement.
Now, let us just run this quickly field of invention the present invention relates to writing
utensil, the choice of word could be in writing device, writing instrument, writing
apparatus equipped with a correction method to provide a user with a pen and a
correction marker in a single device. Thus enabling the user to write and then remove
errors all in one unit. So we understand; what is the field of the invention it is a combo
device.
Now description of related art now this is where you can describe; what went before
permanent staples from the office supply market are writing utensils and correction and
Ink. Writing utensils specifically pens are available in a plethora of options ranging from
ballpoint, felt tip, inkwell, erasable, multicolored, clicking, twisting etcetera now they
describe further things about the field itself this is the background.
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Now, in para of 5 they mentioned some pens are designed like a pencil and do offer a
eraser built at one end. Now this is not an eraser at one and it is a correction marker at
the end, but look at the parallel they are bringing they are showing pen pencils with an
eraser as a prior art or something which could be comparable and they continue.
Unfortunately this method is often insufficient; So, whenever you see this language
unfortunately that that or the problem with the existing art; it tells us that they are trying
to define a problem in the prior art. The eraser usually leaves mark behind or smears the
pen ink thus creating a large error mark than what was originally present. So, they bring
out a problem in the eraser.
Para 6: as a solution a few previous patterns have combined the writing utensil with the
correction ink means. So, they say there is already some prior art and that has been
patented. And patent number 327 which discloses a writing pen with correction fluid
reservoir which combines a pen with a small reservoir of correction fluid at an opposing
end. Now look at this now the earlier patent calls the instrument a writing pen now they
call it a utensil. Now you can see I mean the choice of words would largely come out of
what in what position you are while filing your pat and what was the patents that went
before you.
The correction fluid reservoir includes a small removable brush to dispense the
correction fluid. Similarly 943 US patent 943, it is an easy way to refer to the patent by
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the last 3 numbers and it is also you can also write it that way write an apostrophe 943
the earlier patent I just mentioned it that 327. So, I am referring to the last few numbers
discloses of ballpoint pen with correction supply where in at one end of the device is a
ballpoint pen; while at the other end is a correction fluid dispenser. To use the device for
correction purposes the user squeezes the correction fluid dispenser to release the
correction fluid onto the paper.
Now, these are two prior arts which this pattern recites saying that there has been
instances of combo pen, but the invention is different; now they come to that part. Now
this is the solution they are offering right now was the problem that erasers were not
were insufficient and they were existing are existing patterns now they come to the
defining their problem.
7: while these devices are useful and do combine writing utensil to a correction methods,
they may still be improved upon. For example, it would be desirable to provide a pen
with a correction means which does not require using a brush or having to squeeze out
the correction ink for use. It would also be beneficial to provide a pen with a correction
method wherein the pen has tipped that twist from the chamber to alleviate the pen tip
requiring a lid while not in use ok.
So, they this is more often improvement patent. So, they do not identify a problem that
needs to be solved, but they identify scope for something to be better. So, which is as
good as a problem to say that we do not have pen with a twisting tip, where if you rather
than having a replaceable cap and that we do not have correction marker which need not
be operated through a brush or through a squeezing means; so, you can see that.
So, the problem statement here is not an existing problem it is in a you can call it an
inefficiency of an existing solution or the ability to improve a power an existing solution.
So, there is an existing solution this invention comes upon as an improvement. So, that is
the problem the problem is the existing solutions are not perfect. So, there is scope for
improvement that is why they say correction methods they may still be improved upon.
So, from this you can see the pitch the pitch is on a device or combo device and most
specifically the pitch is towards an improvement of a better combo device; there are
combo devices which do the same job, but this is an improvement over what is already
there. Now how do they achieve this? For that you can just quickly read the summary of
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invention and the summary of invention will tell you how this is combined and how this
is the invention is presented.
Now, following the summary you have the brief description of drawings; now the brief
description is a very short description of what figure 1 and figure 2 are followed by a
detailed description of drawings. Now in mechanical devices; the entire focus is on the
drawings.
So, you see the drawings placed first then the brief description of the drawings. And the
detailed description of the drawing itself explains the entire description of the invention.
So, in this case the detailed description of the drawing ends and the claims begin the next
portion is the claims itself.
So, I have highlighted some parts here; so, that as you read this you will know these
parts; I am not going to read the entire thing the document is available online you have
seen the pattern number and the first page. So, you can search for it now I will just read
parts of it in the detail description of the drawing.
A combination pen with correction marker as a writing apparatus containing ink; so,
there is correction marker and there is ink. Further down the combination pen with
correction marker is designed with a correction reservoir to store a supply of correction
ink. So, there is a correction reservoir and correction ink is stored there; the earlier ink
was the writing ink extending from the corruption reservoir is a sponge. So, the sponge is
another I have just highlighted the things that could be important or the things that could
get into a claim.
Now, make a note of this, mental note of this and see how it gets into the claim. And see
what gets into the main claim and what gets into the or the independent claim and what
gets into the dependent claim now that is the exercise we are trying to do here. So, there
are other things explanations.
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Now, now in para 17 the combination pen with correction marker may comprise a
tubular body; now look at the language may comprise a tubular body or a chamber to
extend along an entire length which is what you call the main part of the pen. So, the
tubular body is recited it is mentioned further down the next highlight centrally located
where in the tubular body may be an ink cartridge.
So, the ink cartridge is mentioned and further down fastened to an end of the ink and
ridge may be a pen tip. Now maybe language is used you would seen maybe language is
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used here to tell you that it could also be something else. So, it could be a pen tip or it
could be something else which you will soon see.
The next highlight attached to an opening of the tubular body may be a twisting grip. So,
the grip as it is recited the twisting grip may include a textured portion. Now look at this
carefully they recite a twisting grip and a detail to the twisting grip is a textured portion
which means we have already seen. So, twisting grip is one level of detail if the textured
portion is there to a twisting grip that becomes a limitation on the twisting grip.
So, you can understand that the twisting grip to be recited in one clause and the next
clause you can see a transition say characterized by or where in the twisting grip is a
texture potion. So, you can see how the language of the claim can emerge from this the
next highlight.
Threaded within the twisting grip beneath the textured portion is in tip encasing. Tip
encasing is another thing which I have highlighted down para 19. Accordingly inside the
twisting grip is coupled with a plunger mechanism; so, the plunger mechanism is a way
in which the twisting grip operates by twisting the plunger mechanism operates by
turning the twisting grip.
So, there is also; so this is different from they need to have a cap. So, which was recited
in the prior art the prior art had a cap which here you have a twisting mechanism by
which this the tip can get inside the body of the pen.
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Now, para 20 surrounding the pen tip with the tip encasing is a spring; now spring is
recited and how the spring works is also detailed there.
21; turning on to the opposing end of the combination pen with correction marker. So,
right now we were at the writing end; we go to the other end from the twisting grip is a
correction reservoir. So, the reservoir with the correction fluid is at the opposite end. So,
see how they in the description they move to the other end of the invention. So, they
recite the correction reservoir and they further say the correction reservoir may contain a
supply of correction ink even that is recited.
Now coming on to this part this side housed partially within the correction reservoir may
be a sponge; sponge is recited. The sponge may comprise a blunt end or an angled tip;
so, there is a choice here may comprise a blunt end or an angle tip covering the sponge
may be a cap. So, that is optional you can have a cap covering it; the cap may include a
pocket clip pocket clip.
So, now this is a quick overview of the invention I know that you during an opportunity
to read every word of it which you can; obviously, do at your leisure. Now this tells you
that there are certain elements the elements are the ones which are highlighted and there
are certain functions; functions are every time an element is recited, the function is also
recited following it what does that thing do?
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Now, so, so you can actually see the what you call the framework of a claim here. So,
what I mean what has been highlighted are the elements and based on the elements and
the function you should be able to write a claim; now let us analyze the claims. So, we
come to the claims what is claimed is a combination pen with let me use the highlight
here a combination pen with correction marker.
So, that is also recited; so, this is the preamble a combination pen with correction
marker. In some cases the preamble itself becomes the title of the invention, this is an
ideal case where the preamble qualifies for a title.
Now comprising is the what we call the transition; now let us see comprising look let us
look at the body what does the body contain? A tubular body we had seen this being
recited extending an entire length of the said combination pen and the correction marker.
So, what does the tubular body the function of the tubular body or the structures rather is
that it extends to the entire body.
Then you have an ink cartridge housed within the said tubular body; now what we need
to understand here; once an element is recited tubular body is recited. When the next
element is recited which is the ink cartridge there is always a connection to what was
recited before because that is how it what we called a logical structure. So, the ink
cartridge is housed within the tubular body and what is the tubular body? What you will
recited in the earlier clause a tubular body extends to the.
So, try to understand the way in which an engineer may describe this in a structurally
coherent manner is to recite each part in a manner in which it is connected to the earlier
part which was disclose to you. So, first they say there is a tubular body then they say
there is an ink cartridge where is the ink cartridge oh the ink cartridges inside the tubular
body; then there is a pen tip connected to an end of the said ink cartridge. So, look at
look at the flow here; so, the pen tip when it is recited it is mentioned that it is connected
to the ink cartridge. So, the pen tip is connected to the ink cartridge the ink cartridges
inside the tubular body.
So, you can see how the logical structure comes in. So, without a logical structure this
will look like a list just a list or collection of material what we call we cannot call it a
combination; it is just an aggregation or a list. So, so what makes it a combination is the
element is recited and how the element is connected to the other part is also recited. So,
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when they recite the pen tip they mentioned that the pen tip is connected to the end of the
said ink cartridge wherein the said pen tip dispenses ink supply within the ink cartridge.
Now couple of things to note here it starts with a combination pen that was a indefinite
article. Again the first element was a tubular body, but when the tubular body was recited
for the second time here it became said tubular body look at that. So, it is no longer
indefinite; so, said this definite.
So, so there is a transition from the indefinite to the definite. Now this is what we had
already explained as antecedent basis because tubular body is already recited a tubular
body you can now call it the tubular body, said tubular body, such tubular body. Because
it is already recited there is antecedent basis again notice an ink carriage for the first time
you use indefinite article.
Now in the next clause when in cartridge is recited again you say said ink cartridge and
so, on the same thing a pen tip said pen tip. So, you can understand the logic now; now
then the fourth element is a twisting grip coupled with a plunger mechanisms. So, there
are two things the grip also has a plunger mechanism attached to an open end of the said
tubular body.
So, to an open end look at that because the tubular body has two open ends. Now you
could also call it to the upper end or the lower end depending on how you have described
it you could use you could use those words.
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Where in the said plunger mechanism moose said pen tip from an extended position to a
retracted position when turning said twisting; so, the mechanism is also explained its it
can be from a retracted position, it can move to an extended position. So, like you would
have seen in most twisting pens all the ballpoint pens which was to on the twisting
mechanism is what we call a plunger mechanism. So, the plunger is a choice of word
which this inventor has used.
Now the next element; a correction reservoir fastened when opposing end now here we
had an open end and here they use an opposing end of the said ink cartridge where in the
said correction reservoirs stores a supply of correction ink. So, the correction reservoir is
recited and the structure is recited and where or wherein resides the function what does it
do? It stores the supplying.
And finally, so you can see and here and tells us that the elements are coming to an end.
So, it is a closed set of elements and a sponge inserted within the said correction
reservoir where in the said sponge dispenses said supply of correction fluid from the said
correction reservoir; now this completes the invention.
Now you can see the number of elements tubular body, in cartridge pen tip, twisting
grip, plunger mechanism, correction reservoir and sponge. And we had when we read the
descriptive part we are actually seen in the highlights; we did a quick reading of it how
these elements are connected to each other? How they are they interact with each other
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and describing their functions and the options also; in sponge we saw that it the sponge
could have different options.
Now this is the main claim or what we call the independent claim. So, as we have
discussed an independent claim does not have reference to anything else and an
independent claim can stand on its own it there is no cross reference. And whatever
limitation you find here are the only limitations that are there for instance there are 1, 2,
3, 4, 5, 6 elements recited the invention needs to have all those 6 elements; so, that is a
limitation.
Now let us look at the dependent claims a combination pen with correction marker of
claim 1; it could also have been a combination pen off claim 1 that would have been
perfect, but anyway you have a short preamble; so no harm in reciting all the words of
the preamble if it is a shorter one.
Wherein said twisting grip includes a tip encasing to house said pen tip to prevent said
supply of ink from drying. So, there is a tip encasing which was already recited you had
seen that it was already mentioned in the description. So, the here the twisting grip which
is here which is an element that was already recited in the main claim; gets the twisting
will appear gets the limitation which says that it includes a tip encasing ok. So, the
limitation in the second claim is to the twisting grip and not to any other element.
Now let us look at dependent claim 3 the combination pen with correction marker off
claim 2. So, claim 3 is dependent on claim 2 which in turn is dependent on claim 1. So,
this is a dependent claim with single dependency the dependency here is claim 2, but it is
indirectly dependent on claim 1. So, you could even mention this as a combination pen
with correction marker of claim 1 or claim 2, but the point is because they are going to
recite a limitation on the tip end casing, it is better to have it on claim 2. So, it is a single
dependency claim, but it could be written as a, but you will have to change the language
it could also be written as a multiple dependency claim.
And in some jurisdictions there are multiple dependency claims will attract more cost.
So, that is another reason you will find that not many patterns will have multiple
dependency claim; you will out to be more cost per claim examination of claim the
examination fee is proportional to the number of pages you write and to the number of
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claims you have. So, this is something which you will learn in our other course pattern
law for engineers and scientists which is also running parallelly on NPTEL.
So, you will find that wherever the cost of examination increases it is largely because the
person had more pages than the minimum allotted pages or the person has more claims
than the minimum number of claims allowed.
Now to claim 3. The combination pen with correction marker of claim 2 wherein said tip
encasing includes a whole to enable said pen tip to extend and retract from said extended
portion to said retractor portion. So, the tip in casing has a whole.
4: the combination pen with correction marker of claim 1 wherein said twisting grip
includes textured portion. Now twisting grip is another element which we have already
mentioned this is the twisting lip. So, this is also on the twisting grip; so, here this
twisting lip includes a textured portion; so, the limitation is the textured portion.
5: combination pen with correction marker of claim 1 wherein said sponge includes an
angled tip; so, the sponge is the limitation that you had seen that in the main claim there
is a sponge. So, this claim 5 is a limitation to the sponge what is the limitation? It
includes a angled tip. So, when you say it includes an angle tip it also has other things in
it. So, it is the sponge also has other things it includes angle tip.
Now, claim 6 is a connected claim a combination pen and look at here it the claim 5 goes
back to claim 1 and not to claim 2 or claim 3 because claim 2 and 3 are limitations on
twisting group whereas, claim 5 and 6 are limitations on the sponge.
Now, 6 a combination pen with correction marker of claim 1 wherein the said sponge has
a blunt tip as opposed to an angle tip. So, a blunt tip is again something which was
recited if you had seen the inventor reduce the language may. So, may means it could be
an angle tip or a blunt tip.
Claim 7 a combination pen with correction marker of claim 1 wherein said sponge is
covered by a cap to prevent said sponge from hardening and to prevent such supply of
correction ink from brain within said correction reservoir. So, the sponge has a cap. So,
this was already described in the description.
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8; the combination pen with correction marker of claim 7; so, this is a limitation on claim
7 wherein the said cap includes a pocket clip a pocket clip is something which you find
in your usual pens so, that you can clip it on to your pocket. So, this is how the claims
are recited you have one independent claim followed by 7 other dependent claims.
And we saw the arrangement of the claims claim 2 and 3 are on one element of the claim
2 3 are on one element that is the twisting grip which go to claim 1. And the claim 4 is
also on the same twisting grip, but it gets its parent is claim 1 claim 5, 6, 7 are limitations
on the sponge they all go back to its parent claim 1 claim 8 is dependent on claim 7.
So, you can see that claim 2 and 3 are grouped together because 3 is dependent on 2 and
claim 8 is dependent on claim 7. So, you can see you can actually draw a claim
arrangement chart. A claim arrangement chart is where the claims are arranged to show
what is dependent on which claim arrangement.
Now, claims can broadly be arranged in two formats one is what we call the chained
format and the non chained format. The chained format the first claim will have the
broad invention followed by a definition of element X and then by a feature A which you
want to introduce that will be in the claim 3 and claim 4 can introduce the feature B.
So, you have the this is called the chained arrangement; so, when you have a series of
dependent claims flowing out of a main claim; you follow the chained arrangement and
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we had seen it in couple of examples. So, the broad invention is followed by definition
we would define element X and in claim 2 which is a dependent claim in claim 3 and
claim 4 you bring out features A and B of what you had defined in claim 2 of element X
now that is the chain arrangement of claims.
So, you have the broad invention as the independent claim followed by 2, 3 and 4
dependent claims which are dependent because in claim 2 you introduce an element X
and define it in claim 3 and claim 4 you introduce features of element X and define them
or introduce them and tell how it works.
Now, apart from this you could have a non changed chained arrangement where claim 1
is the broad invention claim 5 is definition X which is dependent non claim 1. So, you
would recite claim 5 as an apparatus of claim 1 and then wherein or characterized by you
define element X.
You could have claim 6 directly flowing out of claim 1 wherein you would say apparatus
ask of claim 1 wherein the feature or wherein feature which you want to introduce of
definition of the element X can be defined or can be introduced there. Similarly, you
could have claim 7 where you introduce feature B directly from claim the main
independent invention the broad invention; now this is one arrangement.
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Now, here you have a set of dependent claims; this is a arrangement which follows both
the merits of both the things. So, both the charts that you saw this has the chained and the
non chained.
So, in one set of claims you could have 1, 5, 8 and 9 in the chained manner. And you can
have 6 and 10 again chained one 7 and 11 again chained and you can have 5, 6 and 7 in
the non chained manner; now this gives you flexibility in prosecution.
Now, if there is some objection raised on the definition of X in 5 claim 5. The definition
of X is still covered in claim 11 and claim 11 will still survive. So, so this is the way in
which the if you can you can take this as an exercise you can take a complete
specification of with a few set of granted claims and try to draw a claim chart a claim
dependency chart.
Now, this is a claim dependency a chart. So, you could look at the pen combo; the
combination pen and try to draw a chart and see how the chart comes which invention is
based on what which claim is based on which claim and you can find that the chart will
show whether you have a chained arraignment or a non chained arraignment. Preferably
you will have a mix of both to ensure that your claims will survive objection that can
come from the patent office.
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Prof. Feroz Ali
Lecture – 45
Introduction to Specification Drafting
Specification drafting; We have already seen the principles involved in claim drafting
now our approach is to first create a problem solution statement from the disclosure,
work on the problem solution statement to formulate claims and then we will work on
the description. Description means the remaining part other than the claim. So, the
claims and the description together form the specification.
Now, when we refer to specification drafting, in this context we are referring to the other
parts of the specification that remains. Now, that we have drafted the claims.
Now, let us look at the statutory requirements claims had very little statutory
requirements which we had to cover, but when it comes to the specification the Act and
the Rules do give quite a lot of detail on what should be the structure and the function of
various parts of the specification. Let us look at section 10(1); it says that every
specification whether provisional or complete shall describe the invention.
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So, the job of the specification is to describe the invention. So, that is where we get the
requirement of description and a disclosure. The disclosure, there are certain
requirements for the disclosure. So, you need to describe the invention in the
specification and there are certain objectives for that description, there are certain
requirements we will get to that and shall begin with the title.
So, we get two things there has to be a description, there has to be a title sufficiently
indicating the subject matter to which the invention relates. So, the function of the title is
also given, the title cannot be few words of your choice it has to do a particular function
and the function is it should indicate the subject matter to which the invention relates.
So, from 10(1) we understand that every specification should describe the invention; you
could say claims also describe the invention. So, claims can be regarded as a part of the
description, but in patent parlance you use description to refer to the parts other than the
claim. So, in this lecture will be covering those parts which require or which have certain
functions, that form a part of the specification other than the claims. So, we know that
there is a description and there has to be a title.
10(2) tells us that subject to any rules that may be made in this behalf under the under
this Act which is the patents act has corresponding patent rules, rules give the details,
Act gives the broad principles. So, to speak drawings may and shall if the controller so,
requires the controller is the person in charge of the patent office be supplied for the
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purposes of any specification whether complete or provisional. So, we understand
drawings can be a part of complete as well as provisional. So, we understand that
drawings can be supplied both for complete as well as provisional and any drawings. So,
supplied shall unless the controller otherwise directs be deemed to form part of the
specification and reference to this Act to a specification shall be construed accordingly.
So, we understand drawings are regarded as a part of the specification. So, if you give
drawings along with your specification, it will be treated as a part of the specification,
now what do we understand when something is referred as a part of a specification.
When something is referred to as a part of a specification, it simply means that, that part
is integral and that part could be used to interpret and construct the claims.
So, if something is a part of a specification, it is a part of form two the specification is

filed using form 2. So, you would we regard something as a part of a specification, then
we had already seen this point then it becomes an intrinsic aid for construction we saw
that they could be intrinsic aid, extrinsic aid as well as tertiary aids now intrinsic aid the
description and the claims can throw light on interpreting the invention.
Extrinsic we had covered dictionary encyclopedias could be extrinsic aids for

construction and the third thing that we covered was tertiary, which was expert evidence
given by an expert. So, when you regard something as a part of a specification, it means
that that part could be used as an intrinsic requirement for constructing that specification
in case there is any ambiguity.
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Section 10(4) further says every complete specification shall fully and particularly
describe the invention, you again see the words describe the invention being repeated
here fully and particularly we need not get into that there is a certain style in which
certain a provisions in law are written and this has been explained by the courts. So, we
need not worry about it lets just look at describe the invention and its operation or use.
So, you just do not describe the invention you also explain the operation of the invention
or use of the invention and the method by which it is to be performed.
So, here you there are two things that we need to bear in mind. The description of the
invention should also contain operation and its use that is the first point and it should
also have method by which it is to be performed it should also state the method by which
it is to be performed. So, the description should be a detailed description because if it is
not a detailed description, you would not understand how it is operated or how it is how
it is used. And the method by which it is performed also needs to be given in detail. Now
we will see further layers coming up as we read the other provisions of the Act for the
levels of detail.
Now, there is also a requirement in 10(4), section 10(4) which states that the disclosure
of the best method has to be done. The complete specification should disclose the best
method of performing the invention, which is known to the applicant and for which he is
entitled to claim protection. So, there is a requirement called the best method
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requirement. Now, what is the best method requirement? Ask an applicant to do it simply
requires him to disclose the best method and the best method should be something that is
known to the applicant what is known to her if the applicant does not know it then there
cannot be a burden on the disclosure.
We will get to the details of what a best method is and what is the scope of the best
method in subsequent lectures, for now we need to know that the applicant is required to
disclose the best method for which he is entitled to claim protection, which means if
there is a single claim which is the minimum number of claims that you can have the
minimum or the single claim should correlate to a disclosure which you regard as the
best method.
So, you cannot claim something without describing the best method of performing. It
could be just one method, but there should be which means the claim should have the
claim the single claim in case you have just made one claim that claim should have a
corresponding disclosure of the method of performing it. So, the method of performing
the invention should correspond to the independent claim or the main claim that you
have made.
So, if there is a main claim and if there is a corresponding method of performing the
invention which you have described in your descriptive part of the specification, then in
principle you are you have satisfied the requirement of best method. So, it is an easy
requirement to satisfy we find very few cases where the applicant has not disclosed the
best method and the best method has become a reason for a revocation of a granted
pattern.
There are very few case laws on that, but because this is an easy requirement to satisfy
all you need to do is when the claims are drafted ensure that the method of performing
the invention or explaining what has been covered in the main claim is also described in
detail in your disclosure.
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Then for further continues and it says the complete specification shall end with claim or
claims defining the scope of the invention for which protection is claimed, we had
covered this in our earlier lectures be accompanied by an abstract to provide technical
information on the invention. So, we saw many things propping up we saw the invention
has to be described, we saw title requirement that the title has to be mentioned, now we
see claims coming up and we saw the best method as a requirement and now we have
abstract. So, there has to be an abstract.
So, we will collect all these things and we will show you from the statutory provisions,
what are the requirements we also saw something on drawings. So, we will we will
collect all these things and show to you what are the statutory requirements, that you
need to satisfy when you draft a specification.
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Rule 13(7) gives some detail about the abstract, it says that the abstract as specified
under clause (d) of subsection (4) of 10, which is section 10, accompanying the
specification shall commence with the title of the invention. So, the abstract should have
a title this is the same as the title of the specification itself there is a separate specific title
for the specification the title of the invention shall disclose the specific features of the
inventions normally not more than 15 words. So, there is a word limit for the title which
is 15 words.
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The abstract clause (b) continuous the abstract shall contain a concise summary of the
matter contained in the specification. So, the abstract is a summary and the summary
shall indicate clearly the technical field to which the invention belongs. So, the field of
invention has to be mentioned in the abstract, technical advancement of the invention as
compared to the existing knowledge. So, some kind of an advancement has to be
demonstrated and principal use of the invention excluding speculative use and where
necessary the abstract shall contain chemical formula which characterizes the invention.
So, the abstract when you draft an abstract, you should ensure that the abstract satisfies
the requirements in this rule 13(7)(b) clearly stipulates what are the things that your
abstract should satisfy; it should be a summary, it should clearly indicate the field to
which the invention belongs, it should demonstrate technical advancement over existing
knowledge and the principal use of the invention it should not contain speculative views
and where it pertains to chemicals you can show the abstract shall contain a chemical
formula.
Now, the abstract has a word limit just how the title has a word limit it should not
contain more than 150 words. So, 10 times the word limit of the title. If (d) continues if
the specification contains any drawing the applicant shall indicate on the abstract the
figure or exceptionally the figures of the drawings, which may accompany the abstract
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when published each main feature mentioned in the abstract and illustrated by the
drawing shall be followed by a reference sign used in that drawing.
So, drawings are would normally have references, the abstract should also indicate the
references from the drawing.
The abstract so, drafted that it constitutes an efficient instrument for the purposes of
searching in the particular technical field, in particular by making it possible to access
whether there is a need to consult the specification itself. So, here they describe the
function of an abstract no it is used as a searching tool that is the role of an abstract. In
fact, when a patent as application is published, it is published with the bibliographical
details and the abstract.
So, the abstract is important as a tool for searching and the abstract should correspond to
a technical field, because you have to disclose which technical field it pertains to. So,
that it becomes easy to classify the invention and we have already seen the importance of
the classification and the classification codes. So, once it is classified then you would
know that the abstract can be searched in a particular field and in that field it will tell you
the summary of an invention and the role of the abstract is to make it an efficient
instrument for search.
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Drawings: rule 15 gives the details on drawings, now drawings as you know are not
mandatory, drawings are usually given when the patent office feels there is a requirement
for drawing or in cases where mostly in mechanical inventions, where drawings actually
add more clarity to the invention. For instance when it comes to a biotechnology or a
chemical invention, drawings are not mandatory in the sense, they are required for a
mechanical invention.
So, drawings when furnished under section 10 by the applicant otherwise then on
requisition made by the controller; So, you know you know understand that drawings can
either be given voluntarily or when there has been a request by the controller, shall
accompany the specification to which they relate. So, if it is, if your invention has
drawings, then it has to accompany the specification while you are filing it. This is
different when you file an application and the controller asks you to provide some
drawings to explain your invention. So, it has to go along with the application no
drawings or sketch would require a special illustration of the specification shall appear in
the specification itself.
So, if you have seen all the specification that we have showed you so, far the drawings
appear in a separate sheet that is the case of the American specifications it is also the
case you saw that in the Bajaj patent the drawings appear in a separate sheet. At least one
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copy of the drawing shall be prepared neatly and clearly on a durable paper sheet again it
is a requirement.
Now, it continues drawing shall be on standard A4 size sheets, and with a clear margin
of at least four centimeters on the top and left of left hand and three centimeters at the
bottom again this is to bring in some uniformity to the filing process.
Now, drawings shall be on a scale sufficiently large to show the invention clearly and
dimensions shall not be marked on the drawings. So, if there is something that you need
to mark you will not mark it on the drawings rather you will just use an arrow and mark
it with numbers reference numbers.
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Drawing shall be sequentially or systematically numbered and shall bear now you had
seen in some cases are the drawings are sequentially numbered. So, you will have figure
1 and figure followed by figure 2, figure 3 and so on and shall bear one in the left hand
top corner the name of the applicant because it is filed in a separate sheet it has to have
these details in the right hand top corner, the number of sheets of the drawing and the
consecutive number of each sheet and on the right hand bottom corner the signature of
the applicant or the agent.
No descriptive matter shall appear in the drawing except in flow diagram. This is
important you cannot describe anything in words in the drawing you can only have
reference number and the reference number because you have given a particular
reference number to a particular part of the drawing has to be explained in writing.
So, there is a brief description of the drawings, in some specifications which has
drawings and in the brief description of the drawings you have the figures explanation of
the figures. And in the detail description wherever you describe the invention you give
the corresponding part as a reference, which you have illustrators and drawing.
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Now, the claim had certain requirements we had seen the requirements of the claim the
claim has to be clear, it has to be fairly based on the matter that was disclosed, the claims
cannot use ambiguous language, the claims cannot be omnibus statement we have we
saw various requirements. The specification by which we mean the parts of patent
specification other than the claims, has certain requirements too now the sufficiency is a
requirement which the specification has to satisfy.
Now, sufficiency comprises of two parts one there has to be an enabling disclosure this is
called the enablement requirement the disclosure or when you describe the invention it
should enable a person skilled in the art the skilled person to whom the patent does
address to it should be able to describe the invention in such a manner the skilled person
can perform the invention. So, the enabling disclosure is a requirement which would
make an addressee who reads the specification to perform the invention.
The second requirement is that the sufficiency it is a second part of the sufficiency
requirement is that there has to be a clear and intelligible disclosure the earlier part
enabling disclosure would mean that whatever you have said enables a person to do your
invention to perform the invention it is more like teaching, the second part is whatever
you have described about the invention is clear and intelligible.
So, if it is not clear you could say that it is not clear hence it is not a be enabling fine it is
quite possible to say that. But clear and intelligible is a separate requirement because if
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the claim even if it is if it enables a person skilled in the art to perform the invention, if it
is clear unclear and it is not intelligible that itself can be a reason why a specification can
come under scrutiny and challenge.
So, sufficiency is a requirement and sufficiency is a requirement tied to the disclosure.

Now apart from sufficiency you have the best method requirement. The best method
requirement was also called the best mode requirement in the United States. The best
mode requirement requires the applicant to describe the best method that is known to
him at the time of filing whatever is known to him or her at the time of filing has to be
described this is the best method apart from the sufficiency and best method requirement
you also have the utility requirement which means the fact that the invention is useful
should come out in the description.
So, the descriptive part of the specification by which we means the parts other than the
claims we have already covered the claims should satisfy broadly these three
requirements sufficiency best method and utility and we had also covered the relevant
provisions, which says that these are the three things, but we will cover in the next
lectures we will cover these three things and see how these things can be achieved or can
be incorporated while drafting it. Now, on utility it is not something that really affects
most applications because in your application you will state the objectives of your
invention for what the invention is to be put to use.
So, the usefulness of the invention normally comes in, because the invention always as
we have already discussed targets a problem a problem that has not been solved. So, you
because you have defined your invention as a solution to an existing problem it is very
hard for us to miss out on the utility requirement, but nevertheless the utility requirement
is manifested in terms of the objectives of the invention.
One objective of the invention is a further objective of the invention is another further
objective of the invention is. So, you can have multiple objectives that your invention
achieves in the descriptive part and that will be useful to satisfy the utility requirement.
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Prof. Feroz Ali
Lecture - 46
Enabling Disclosure
Enabling Disclosure; Now, let us look at this requirement, we already said enabling
disclosure is a part of the sufficiency requirement; the sufficiency requirement also has
an additional requirement that whatever you say has to be clear and intelligible. That is a
it is a language requirement if you ask if it is not clear and intelligible, then the basic
requirements of the English language has not been satisfied.
Now, we are concentrating on the legal requirements and sufficiency has this
requirement called the enabling disclosure. So, the disclosure that you make should
enable or empower a person skilled in the art to perform or to make your invention;
because a disclosure to be enabling there are me there are certain conditions that it has to
be satisfied.
Now, let us look at what enablement is. The specification must teach a skilled person
how to make and how to use the invention. So, making and using the invention has to be
taught through the specification. So, whenever you see a comparison with a prior art, you
may find a statement that the such and such prior art teaches the invention or such and
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such prior art has already anticipated the invention. So, teaching the invention is
something which every specification is expected to do.
So, the specifications roll apart from carving a private right to the inventor, the role of
the specification which is a role that is directed towards the public is to teach the people
who do not know anything about the invention, to perform and to use the invention.
So, once you describe in detail how the invention can be made, which is once you teach
the invention through your specification there is the danger of others copying you. So,
patent law comes in to allow an applicant, an inventor do closest invention in full in such
a way that others can make it, but grants a monopoly or an exclusivity over a period of
time, such that though the teaching is there in the public domain others cannot use it
without your permission.
So, this is the balance that patent law tries to strike. At one end it puts the knowledge
into the public domain people can use the knowledge to a limited extent they can
experiment with it they can use it for instruction; they can teach others about it falling
short of commercial exploitation. They could do quite a lot of things that is one part of
the pattern bargain and the other part is that though you have put this thing into the
public domain patent law protects you from others copying your invention. So, whatever
you have claimed becomes your private property and because you have claimed you
have the right to enforce it against people, who may copy your invention which is what
we call infringement.
Now, if you do not satisfy this requirement, if you do not teach a skilled person now it is
addressed to a skilled person. So, it need not teach the invention to a person on the street.
So, you could assume so many things that is expected of a skilled person in your art
whatever that art is. So, if you do not do this, if you do not teach a skilled person to
perform or to use the invention, then it could be a ground for revocation because section
64 has a whole lot of grounds on which a patent can be revoked, one ground is the fact
that your disclosure is not enabling.
Now, enablement is a requirement of the disclosure and this is captured in the language
of section 10(1), which we had seen already where it mentions that the complete
specification shall describe the invention. So, the description law states that the
description should be of such a nature that it enables the person to do it.
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So, section ten only tells us this simple three words describe the invention, but there are
other provisions in the act which explain what this description has to be.
Now, here is that requirement the enablement requirement or the fact that a disclosure
has to be enabling or the applicant has to make an you know enabling disclosure there
are various ways, in which you can express the same idea it is contained in section
64(1)(h). Now this is a ground section 64 generally deals with the grounds on which a
patent can be revoked, they could be grounds that are extrinsic there is a prior art you
had anticipates the invention that is an extrinsic round because you have to compare the
pattern with, something that has gone out.
They could be a obviousness related objection. The fact that the invention does not
involve an inventive step again you need to compare something with the prior art. The
enabling disclosure requirement, which can be a ground for revoking the patent is an
analysis which you would do internally. You would read the specification and see
whether it discloses the invention in a manner in which a person who reads the
specification, whom we call the person skilled in the art to whom normally all patents are
expected to be addressed to. So, all patents are addressed to a person skilled in that art.
So, when a person of that background reads the invention, he is unable to perform it he is
unable to use it. So, in by which we understand that the applicant has not made an
enabling disclosure. So, not making an enabling disclosure is an internal requirement,
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because the analysis will completely come out from the specification itself, there is no
mapping or matching with something outside it is going to be an internal analysis.
So, let us look at that. So, this is the ground for revocation. So, a complete specification
can be revoked if it does not sufficiently and fairly describe the invention. So, it is put in
a negative language, I have just quoted the relevant part that is to say it continues the
description of the method or the instructions for the working of the invention as
contained in the complete specification are not by themselves, sufficient to enable a
person.
So, it has to enable a person in India, the person has to be in India, processing average
skill in an average knowledge of the art. So, average skill and knowledge we understand
this as a person skilled in the art. So, it should enable a person skilled in the art in India
which means it should teach the person skilled in the art in India the art to which the
invention relates to.
So, it should what should it do what should how should it enable a person? It should
enable the person to work the invention. Now this is the enabling requirement the
sentence continues also to include the next requirement, that is the best method that it
does know or that it does not disclose the best method of performing it, which was
known to the applicant for the patent and for which he is entitled to claim at a protection.
This repeats the language of section 10 we had already quoted section 10. So, a patent
can be revoked, a granted patent can be revoked if it does not disclose the best method or
if it does not enable a person skilled in the art to perform the invention to work the
invention.
Now, the requirement of enablement refers to the ability to practice the invention,
without any further input from the inventor. So, you should which means the document
should be self-contained you just read the document or a person skilled in the reads the
document and he should be able to practice the invention there should not be any need to
get back to the inventor with further information has to what did you mean when you
meant heating, heated at a particular temperature how is the heating done or on what
equipment the heating is done.
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So, it should contain all the details. So, that you do not have to get back to the inventor
or there is no need for you to get back to anybody else in the sense that, you know you
need to consult another expert as to what was mentioned here. So, it is viewed from the
perspective of a person skilled in the art and it should enable a person skilled in the art to
practice the invention.
Now, let us look at the scope of the enablement requirement, it applies only to the
claimed subject matter. So, what you have claimed you should enable. So, if your claim
is covered to what you have mentioned in your principal claim, the main claim, then the
enablement requirement should cover what you have claimed there is no need for you to
enable a person with something which you have not claimed.
If the method is not claimed it need not be disclosed. So, this again flows from the earlier
point. So, you only claim an apparatus and a product and you do not claim the method.
There is no method claim or process claim in your application. So, there is no need for
you to disclose or to enable a person to show in what method you had achieved the
product or the apparatus.
Trade secrets: Because of the enablement requirement, you cannot include trade secrets
because trade secrets are contrary to the enablement requirement, you cannot say that we
would not disclose a part of our invention because it is a trade secret and you would also
understand this better when you know that patent law came as a replacement to the trade
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secret regime, because earlier before patent law came into effect we had only the trade
secret regime, which means people used to keep their invention as a secret.
So, far as they could do it because there were some technologies which could be reverse
engineered, and which could not be kept as a secret, but if the technology allowed you to
keep it as a secret the person keeps it as a secret.
So, patent law or the patent bargain by which we mean you teach the public how to
perform the invention and in lieu of your disclosure you are granted an exclusivity. So,
that came to replace the trade secret regime, because in a trade secret regime you do not
make a disclosure. So, trade secrets and the enablement requirement do not go hand in
hand. So, you cannot claim any of specification saying that this was not disclosed
because it is a trade secret. So, if it is a trade secret you keep it outside the purview of
patent law.
And the enablement as we have already mentioned is addressed to a skilled person in that
art. If it is mechanical invention pertaining to automotives more specifically on internal
combustion technology for engines then the person skilled in the art is a person who
belongs to that field who has the expertise in this that field and who can work the
invention in that field. So, enablement should be viewed through the eyes of a skilled
person, it should not be viewed through the eyes of a commoner or a person on the street
a common man.
Now, some specification in order to make the specification brief and to save time, they
may use things like well known process or a commonly used device. So, those terms
have been interpreted as not enabling a person. So, when you say it is by well known
means, you have to actually mention what those well known means are. So, words such
as well-known and commonly used and other variants which would signify something
that is already known to everyone still may need an explanation depending on the field of
the art.
Now, the enablement requirement requires the applicant to disclose all information that
is needed to reproduce the invention. And the standard in India is that the skilled person
should be of average skill and average knowledge. Now, in U.S. it is called ordinary skill
a person having ordinary skill in the art in this particular context, we use average skill
and there is a difference in the wording in the Patents Act in India itself.
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In this context alone the word average appears and in every other context; especially
when it comes to inventive step it is just the person skilled in the art this is the average
qualification is not there though.
So, as we said the patent is addressed to the skilled addressee and the enablement
requirement is viewed and determined through the eyes of the skilled addressee. The
skill itself is determined as on the date of the filing. So, if there are certain improvements
to the art after the date of the filing or if there are certain clarifications which have come
to the field after the date of filing they will not be considered in determining whether
there was an enablement requirement because the enablement requirement goes back to
the date of filing, the day on which the applicant made the application did he enable the
person skilled in the art.
Now, they may not be a need to explain the how and why the invention works. Now you
explain the invention, you carve an exclusivity for your apparatus or for the method, but
the theory or the logic behind its working need not be explained. You can just explain the
fact that how the invention is made, the fact that how it can be put to use all that is fine,
but the theory or the explanation as to how or why it works is not expected from the
patentee.
Now, one of the requirements in this field is that because it is addressed to a skilled
addressee, the skilled person in a particular art there is quite a lot the skilled person
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would already know. Now if it is a internal combustion engine, and if you are drafting a
specification on an internal combustion engine if the skilled person will know how an
internal combustion engine works the parts of it, how it is to be assembled you can
assume quite a lot of knowledge because it is addressed to a person who already has that
skill.
But nevertheless you should ensure that the description that you give our self sufficient,
and there is no need for the skilled person to involve or participate in undue
experimentation. Now, undue experimentation is when a person reached the specification
and still is not able to perform the invention and he is required to carry out certain
experiments to attain the invention.
So, undue experimentation means experimentation which is needed it is undue. So, it is

qualified experimentation which is more than what is usually required. So, if a person
skilled in the art reads a specification he has to go to the lab he has to do n number of
things; before he can actually find it or if he has to do some more experiments, then that
is a criteria which the courts will regard as not having satisfied the enabling disclosure
requirement.
Now, the claim should also match what has been disclosed. Now, this is the principle
which we discussed earlier, the enablement requirement is only for the claims what you
have claimed. So, the claims this is the other side of it the claim should match the
enabling disclosure.
So, what you would do because as we have taken the approach of drafting the claims
first, you will ensure that the claim the main claim is not disclosed the way of
performing, it is disclosed in detail in the specification. So, it also turns out that the
claims would eventually match that disclosure.
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Prof. Feroz Ali
Lecture – 47
Best Method
Best method.
Let us look at the other requirement, we have just seen the requirement of enabling
disclosure. And while we read 64(1)(h) we also said that there could be another objection
to the specification based on the descriptive part of the specification; where the invention
has described the other objection could be that. The best method of performing the
invention is not disclosed.
Now, let us look at the best method requirement. It is a simple requirement we already
said that it is an requirement that can easily be satisfied, if you look at the claim and
describe the claim in detail how the claim works, and that will qualify for the best
method disclosure.
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Now, the best method is on performing the invention. Now this we get from section
10(3) that the complete specification should disclose the best method of performing the
invention which is known to the applicant. So, he can only disclose what he knows for
which he is entitled to claim protection.
So, the best method is tied to the claim. So, if you describe the claim in detail, the
method of performing the invention in detail whatever you have claimed then you satisfy
this requirement. Now the patent again as we have seen in section 64(1)(h), it can be
revoked if you do not disclose the best method in your specification. Now there are two
issues that come out of the best method requirement.
The first one is a subjective issue; which is whether the best method is disclosed,
whether the best method has been disclosed by the applicant. This is subjective because
you will have to see whether there has been a disclosure at all. The second requirement is
there is a disclosure; whether the disclosure is adequate to practice the best method. The
the first instance was to see whether there is a disclosure at all.
In the second case the disclosure is there, will that disclosure qualify as a best method?
Now the scope of the best method.
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It applies only to the claimed subject matter. Just how we saw the enablement
requirement, the enablement requirement is tied to the claim. Similarly, the best method
is also tied to what you have claimed, you are not expected to disclose, things which you
have not claimed in your best method disclosure. Again, like the enablement
requirement, it should be what is known on the date of filing. What is known to the
applicant on the date of filing the best method need not match the commercial method.
So, if an applicant files an application, and he starts commercially manufacturing
something related to the invention, though not what he has claimed, it could be a
dependent claim or it could be something incidental to the invention.
There is no requirement in law which requires the applicant to actually disclose the best
method as the method which he would eventually commercialize. So, you could
commercialize something that is incidental something that is a variance something that is
an improvement to your claim, but there is no requirement which says that the
commercial method should also be the best method. A statement in the specification that
the inventor believes to be the best method will be sufficient. If the inventor says in his
application that, this is the best method known to us or this is the way in which we have
understood the invention works best or the invention can be performed in the most
efficient matter manner.
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So, whatever words if there is something that can be attributed to the inventor, that will
satisfy this requirement. Now one way to ensure that this requirement is satisfied is to
have a working example. So, you have the claim, you have descriptions in the
specification, we will see that there is a there are different parts there is a summary
description there is a detailed description, and you have a working example of an
embodiment which is what you have covered in your claim, the main claim. So, if the
main claim has a working example. It satisfies the best method requirement. Again, trade
secrets are not allowed we saw the same thing for the enablement requirement.
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Prof. Feroz Ali
Lecture – 48
Parts of the Specification
Parts of the specification; what constitutes a specification?
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Now we had seen that the patent specification comprises of 2 things, 2 broad things and
that is how we have structured this course we had looked at the problem solution
statement helping us to create a claim. So, there is a claim which we have looking at.
And in this set of lectures we were looking at everything else other than the claim. So,
the patent specification includes the description and the claims.
So, the descriptive part along with the claims is what we call or refer to as the patent
specification. now the description itself has many parts. It has a title, it has a background,
summary, detailed description, abstract and drawings also become a part of the detailed
description. So, this tells us that the description comprises of various parts. The title,
there is a statutory requirement up on the title, background and summary are
requirements which are regarded as a part of the descriptive part, to which we will now
turn our attention to.
To whom is the patent address to? the patent is addressed to a variety of people.
Now, I had mentioned this when I wrote my first book in 2007, a patent specifications
are curious documents in that they are written by a group of experts, patent agents,
embody the rights of a group of creative people inventors are addressed to a hypothetical
group of skilled persons, whom we call the person skilled in the art. And may if the case
so demands be interpreted and constructed by a legally trained group of persons
examiners and judges.
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Now, you can see that patent specifications are not addressed to one set of people, a. and
you could add many more to this group, you can have angel investors who are interested
in looking at a a a start up which has a patent. You could add consultants who would
value intellectual property, an intellectual property valuers, you could have a financial
people who want to gage a particular intellectual property before advancing a loan or
before giving making some kind of an investment into the company.
So, you could have a whole lot of people who could be interested in a patent
specification. But technically the patent specification is addressed to a person skilled in
the art; whose which is a hypothetical construct, because a person skilled in the art at
times could be a group of people. it could also be a group of people working in different
parts. It could be a group of people who have different skills; which are brought together
only for the purposes of interpreting a patent specification.
So, it is a hypothetical construct, because if the invention combines technology from 3

fields, then you will have to assemble hypothetically that is you do not actually do that,
assemble a group of people who will have taken a skills from all the 3 fields of
technology. So, it is from that perspective, that the patent is constructed. Now we have
seen that the patent specification has to describe the invention. Now the description of
the invention as we have said has different parts. we saw the requirements that there is a
sufficiency requirement of which the enablement requirement is a part, then we saw the
best mode requirement and the utility requirement.
Now, how these requirements translate into different parts of the specification is what we
will now look at.
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Now, we have already covered section 64(1)(h). So, the person to whom it is addressed
to is to is a person who has average skill in or average knowledge, this is the person to
whom the invention is addressed to. And the enablement requirement tells us that the
person should be able to come up with the invention. Though, it is addressed to a person
skilled in the art, patents have to be drafted keeping a wider audience in mind.
Now let us quickly Run through the role of the description or the descriptive part of the
pattern specification before we see what are the different parts and what are their
function.
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Now it explains what the invention is. Now in the descriptive part, you convince the
examiner or the patent office, that there is an inventive concept that can be claimed
because the descriptive part comes before the claim, and what you do in the descriptive
part is apart from supporting the claim, you convinced that there is something inventive.
It also supports and explains the claim; it teaches the public this is the teaching
requirement in patent law; where it enables a person skilled in the art to perform the
invention. In some, the descriptive part of the patent the description tells the story of the
invention, and the story concludes with the claim. So, it is essentially narrating the life of
an invention, or how the invention has come into being, what are the problems that were
overcome, and what are the different parts and how the parts work.
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Prof. Feroz Ali
Lecture – 49
Background & Summary
Background and Summary; The background and summary refers to the first two parts of
the specification.
Now, the background narrates the problem, it also tells you what others have done it is
more like a literature review which you would find in an scholarly article. It just tells
what others have done more importantly it also tells where others have failed and you
would also describe existing solutions, if your invention is an improvement over an
existing solution, then you will describe the existing solutions and say that the existing
solutions are not perfect or that their solutions are not sufficient to solve a problem in an
efficient manner.
So, it could be also the fact that what exists is not efficient that itself could be the
problem that you are addressing and it does the role of being a precursor to the summary.
So, the background of the invention should connect to the summary. So, this is one part
where you start your description and in the background part, you narrate the problem. So,
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from the problem solution statement this part will cover the problem part of the problem
solution statement.
Now, so, the if we equate background to the problem. So, we had worked on a problem
solution statement and in the background part of the specification, you are going to
explain the problem and flush out the details of the problem. Now you bring out the
problem in a way it prepares for the summary, you have to be brief and conclude
quickly. The reason being dealing in great detail with the prior art because the problem
could bring some elements of the prior art may not be advisable because the focus of
your application is your invention the problem is only the context.
So, focus on your invention spend your time and effort in explaining the invention cover
the background to the extent it requires to be covered. So, you have to be brief and if you
see some samples, you will find that there is no great discussion on the background and
patent agents throughout the world very quickly cover the background in a few
sentences.
Now, you should avoid the temptation to compare the prior art, because when you make
a comparison there is a possibility that the, you your invention may look obvious if you
compare it with the prior art. There is no harm in describing in broad statements what the
prior art is what the problem is, but a step to step comparison with your invention could
be detrimental to your to the future of your invention.
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Now, you can show how the prior art falls short while describing the problem, this is
normally done by using words like unfortunately disadvantageously. So, when you read
the background portion, if you find this word these words you will know that this is
where they are describing the problem.
Now there could be exceptions where you may have to describe the background in some
detail. For instance, if there is a long felt need for a solution then you are going to create
that need by saying that the prior art has these deficiencies over a period of time or if
your invention is a successful attempt in achieving something which was previously
attempted by multiple people and they have been failures then you may have to even
describe that to show that your invention has been tried or the what you try to achieve
has been tried by others and all their attempts ended in failures.
So, that these are exceptional cases where you may have to cover the background in
some detail, otherwise you be brief and you conclude quickly. Now do not include the
description of the invention in the background. The background is not for your invention
the background is what creates a pitch for your invention.
So, you should conclude the background without touching on the invention. So, that the
next part of your specification, which is a summary introduces the invention. So, it is
more like setting up for your invention the background does the role of setting up the
stage for your invention and for that reason you will not include any description of their
invention in this part of the specification.
And you end with the problem that the inventions solved. So, you give the background
the field and you say the attempts others have done and you end with the problem as you
have defined it in the problem solution statement. So, this sets the stage for introducing
your invention.
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In some cases you would also describe the field of invention this is a requirement in the
United States, you have to describe the field of invention, but it is not mandatory from
the Indian perspective you could have it or you could even include the field as a
statement in the background part.
Now, again you should not introduce the invention in this field and whatever you state
here can be deemed as a part of the prior art. So, you should be cautious that and
understand that the field of invention is nothing, but a part of the background it is not a
part of your invention.
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Now, that we have set the stage for the invention the summary part will describe the
solution. So, the problem has been taken care of and you end with the problem as you
have defined it, and the next part of your specification which is the summary will now
present the solution. Now, the solution has to be presented in a narrative form and it has
to be, it can be presented as a restatement of the claims.
Now, these are the two approaches to how do you present your solution, you have
created a problem solution statement the problem is taken care of in the background part
in the summary part you have to immediately impress the reader with what is your
invention. So, there are two approaches one, you describe your invention in a narrative
form or you rephrase or you restate your claims which will be in claim language.
So, the preference is to describe it in a narrative form because then you have the
flexibility of cutting the various longer parts of your claim into easily understandable
parts nevertheless holding the invention together.
Now, the solution part comes from the problem solution statement and the solution is
what you will start your summery with. Now, ideally you should start your summary
with a one sentence statement of the inventive solution and you could in a patent
specification that is well drafted you will find that the first big opening statement in a
summary will be a crisp one sentence statement of the inventive solution. So, because
what you have done in the earlier part is you have concluded the earlier part by ending
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the earlier part which is the background with the problem with a statement of the
problem as you have defined it.
Now, the next sentence should be the solution in a single statement. So, you know you
are able to capture the entire scope of your invention in a single statement.
Now, once you open with a single statement of your invention you can follow it up with
how it is at how it has addressed the problem in detail. Now, you can describe the
invention functionally and you should avoid limitations in this section, because
limitations are created consciously in the claim. So, here you will not do that because
here this part could be used for understanding the scope of your claim. So, you have to
be careful and drafting this part and you should refer to the problem solution statement as
the invention.
Now, here on you will not mention the problem solution statement or there is no problem
now you are just going to concentrate on the solution which is the invention. So, from
here on you will see you can say the invention or the said invention you can you can use
that language from the summary portion onwards. Now, they could be optional features
in your invention, they could be a main claim and they could be dependent claims which
bring out the optional features.
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Now, when you have to describe the option optional, when you have to describe the
optional features you may use words like maybe or optionally or for example, if needed,
which shows that there is a broad summary where you capture the scope of the claim and
something extra the features of this invention may be or may include or optionally
include or for example. So, you bring those variants.
So, that it is very clear that the main claim is covered in a crisp summary statement and
everything else that you regard as an optional feature is described with appropriate
language.
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Prof. Feroz Ali
Lecture – 50
Detailed Description
Detailed description.
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The detailed description is nothing but the expansion of the background and the
summary. And the background and the summary as we had explained will tell the reader
about the problem and the solution. So, the problem and the solution as we have covered
in the background and the summary, will now be explained in greater detail. Now it will
include drawings. So, the drawings though they are in separate sheets and in a different
place, the drawings will have a cross reference and a description in writing of that
figures; which will come in this part, that is the detailed description.
Now, you can illustrate the problem with flow diagrams and chart flow charts, that is
perfectly allowed, but that again will need whatever you do in by way of a drawing
should have some description in words. Now you can show the prior art in in some
drawings, you will see that they will describe the prior art and they will show the
invention, and in some cases you will you can also illustrate the solution, using drawings
you can illustrate the solution in a much clearer fashion.
Now, you can show the inventive departure in the detailed description way at what point
did your invention go away from the normal trend , it can show the embodiments, it it
can list the embodiments and that will satisfy other requirements of the patents act.
Now the essence of the detailed description is to describe the invention. So, it has to refer
to the broad inventive concept, it has to avoid limitations, because limitations is
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something which we would do in the claims, and we do not want anything that we refer
to in the detailed description be read in a manner that restricts the scope of this claim.
In the detailed description, whatever you refer to as an invention will indicate the scope
of your coverage. So, when you call something an invention in the description,
understand that that will be regarded as what you have claimed. The description could be
used to interpret the claims, as we said it is an intrinsic tool or a aid for construction of a
patent, and it has to explain the invention at the outset. Just have we did it in the
summary part you have to explain the invention, then follow it up with the details later.
Now, there is a requirement in the patent law, that you have to possess the invention;
while filing a patent application the applicant has to make certain declarations in the
application. Now in the Indian patents at we do it using the Form 1. One such declaration
which the applicant has to make is that he has to say that he is in or if it is a group of
inventors, that we are in possession of the above-mentioned invention. Now it is easy to
say that once you make this declaration in the form it is assumed that you are in
possession of the invention. Possession is to show that you have already worked the
invention and you have done it. It is not something in the future that you need to do.
The language that you use should demonstrate that you already have the invention. You
have already invented it. In some applications, they would use a language in the future
they would use the future tense that we plan to do this we propose to do certain things.
Now all that would indicate that the invention is still not completed, or all the aspects of
the invention is not done. Some testing remains to be done, sometime in the future. So,
which may not go well with this requirement that the inventor, when he signs off on
Form 1; he makes a declaration that he possesses the invention.
So, this is the part of the specification where you can demonstrate that you have the
invention with you.
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Now, what is the level of detail to which the detailed description should go to? Now it
has to focus on the invention, and the embodiments or the different variants that the
invention has you can describe the ones closer to the invention first, and then describe
the ones that are further from the invention. Now you can describe the variations and
alterations in the invention, you can cover the broad range of equivalence, if you see that
the claim or the main claim can have certain equivalence or certain alterations or variants
you can try to cover them. You can disclose them; you can disclose things about your
invention which could be put to strategic use.
Now, you can make a disclosure as a strategy in your detailed description, some entities
do this, they describe quite a bit in their descriptive part. And their object is is to put all
they have described into the public domain. So, whatever you put into the descriptive
part, see you have a very detailed working of a engine. But you may only claim one
aspect in your claim, but the fact that you have described so many combinations or so
many ways in which the engine works in great detail, you have disclosed what you know
to the prior art.
So, the description could be used as a strategic tool for making a prior art disclosure.
Now now the there are instances where entities have done this. So, the level of detail to
which you should describe will depend on what you are trying to achieve. The minimum
is you are trying to achieve the requirements of enablement, the requirements of best
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method, and the requirements of utility that is a minimum. Over and above what you
need to do is if you if it is if there is some strategy involved. You are patenting in a field
which is highly competitive, or you are filing a patent, where others could tomorrow
there is a fear that others could come and stop you, based on a patent which they have
filed. In that case you would it would be advisable for you to disclose as much as you
know in a specification. So, that you capture the entire prior art, and you are protected
from somebody else’s action against you.
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Prof. Feroz Ali
Lecture – 51
Parts of the Application
Parts of the Application; Now, that we have covered claim drafting we have covered how
we got to the point of the claims and that we have covered the descriptive part, let us
look at the parts of the application itself. Now, this has the entire list of things that should
get into for you to get a patent.
Now, there has to be a title we had seen this, there has to be a cross reference in certain
cases which comes soon after the title. Now, this we are reciting in the order of its
appearance now the cross reference would come in where there is a patent of addition or
a divisional application it is not necessary for us to deal with this in detail for the
purposes of this course, but understand that in certain cases they could be a cross
reference.
And then you have the background of the invention the background of the invention may
have the field of the invention and description of related art, but what you cover in the
background of the invention is the prior art and the field. Then you have summary of the
invention which we call it as a brief summary of the invention.
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And then you could have brief summary of the drawings. Now in a case where there are
drawings, say in the case of a mechanical invention, they could be drawings. So, you
have the brief summary of the drawings. Then you have detailed description of the
invention by wherein you can explain the, what we had covered as the background and
the summary in detail.
So, the detailed description will come after the summary of the drawings and finally,
your specification will end with the claims. The abstract which has to be in a separate
sheet will come after the claims and the same is true about the drawings as well.
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Prof. Feroz Ali
Lecture – 52
Evolution of Patent Specification
Evolution of patent specifications: Patent specifications did not evolved in the form in
which we find them today the structure or the requirements of a patent specifications
were much different over a period of time. In the early days there were no claims in a
patent specification it is hard for us to imagine that situation, but patents were filed even
without claims. But later on when the dispute started to arise with regard to private
property with regard to what was owned by whom, the art of crafting claims evolved.
So, earlier they were just at one point in time they were just brief descriptions or detailed
descriptions of the invention. So, slowly over a period of time the claim appeared and
even in claim the style in which claims were done also changed over a period of time.
So, let us just look at a small section of history and let us try to understand them through
inventions that we are aware of, which have been a which has been a part of history and
see how specifications themselves have evolved over a period of time in line with the
requirements made out by certain patent offices, and also look at how claims have also
evolved in parallel with the structure of the specification.
323
Now here we have the patent for a cricket bat. This is an 1859 patent.
Now you can just see that it is pretty basic in its recital you can just see that the structure
used to be quite different.
324
It just starts with to all whom it may concern and the inventor in the first person
describes the invention and the claims are here what I claim as my invention and there is
claim 1 and claim 2.
Now this is quite simple considering what we now draft and you will notice that the
claims do not even follow the kind of a structure that we have been teaching.
325
Now, this is the next application the earlier application was an 1859 patent, now this is a
patent that is a 1880, it was granted in 1880 this is granted to Thomas Edison for the
electric lamp something which most of us are familiar with now this is the best available
copy. So, you may not be able to read it in great detail, but you will find that the portions
of the claim towards the end I claim as my invention an electric lamp for giving light by
incandescence.
326
And claim 2 as combustion of carbon filaments claim 3 again a carbon filament or strip
coiled again you will find that there is no relation between the claims that modern patent
drafting requires you to do.
The third patent is an 1885 patent again a US patent for a conductors punch, the punch
that is used by conductors for checking tickets. Now you can see that it is described
again in the first person and the claims begin right here.
327
The conductors punch provided with the box or acceptable receptacle for cutting a
movable end for cuttings a movable end or a side for the said box and a spring whereby
said end is normally held. Again there is claim 2 claim 3 you do not see a relationship
between the claims.
1888 patent for a ball pen. Now, we had covered this in some detail in our earlier lectures
and again it’s a recital in the first person figures are explained and you have the claims
here.
I claim a pen having spheroidal marking point and claim 2. Again we do not see any
relationship between the claims, as we will find in a modern specification.
1929 patent for the basketball. Now again you will find there is a general description and
you have the claims.
328
What is claimed is a case for a game ball its explained there are two claims again no
relationship between the claims.
1955 patent for the Velcro.
Now, this is not very old, but you will find that that is the structure seems to have
changed slightly you can find that the inventors name appearing and application, date
appearing priority details appearing into the specification you see a small change in the
structure and the claims you will find claim, I claim.
329
A method and there is claim 2, claim 3 and claim 4 there are two method claims and two
product claims. Again we do not see a relationship between the claims that is explained
here. 1858 claim for the band aid and you would have guessed who had filed this
application, application for a band aid filed by Johnson and Johnson you can see that
here ok.
Now, this again follows a slightly different pattern, but when it comes to the claims
towards the end of the application, you will find the claims are
330
One an adhesive bandage comprising two again another claim an independent claim, and
3 is again an independent claim, you will find that there is no relationship between the
claims. But when we come to this application in 1964, this is the application for a bubble
wrap how to make a bubble wrap which is used in packing. You will find that after the
drawings, there are quite a lot of detailed drawings you will find that the patent is
explained just how we found in the earlier patents.
331
But when we come to the claims part, I quickly take you through the claims part you will
find the claims are recited here in a way in which we would do it like it’s a modern
recital, claim 1 what is claimed is a method for continuous fabrication of cushioning
material.
Now that is a detailed claim 1, claim 2 is again a detailed claim 3 says a method
according to claim 1.
332
So, a dependent claim which refers to a earlier claim or what we call referring to a claim
this structure if we can see that appear in this patent. Now this tells us how patent the
drafting of specification the structure and the way in which claims were arranged has
changed over a period of time.
333
THIS BOOK IS
NOT FOR SALE
NOR COMMERCIAL USE
(044) 2257 5905/08 nptel.ac.in swayam.gov.in

Patent Drafting For Beginners

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Patent Drafting For Beginners

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PATENT

Prof. Feroze Ali

What are inventions?

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Background of the invention.

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So, if you file a pattern for a mechanical application or an application covering a

Now, how does this play out?

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Now, an invention advances the technology. So, it is essential for an invention to

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Now, invention is defined to mean a new product or a process involving an inventive

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Now, technical advancement of what? Now, it has to be a feature of an invention, that

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What are not inventions?

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For instance, what is contrary to natural laws, cannot be an invention. A perpetual

An admixture of a substance, a substance which just merely mixes other substances to

A method of treatment cannot be patented. A plant or animal parts cannot be patented.

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Why people invent?

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Where to look for inventions?