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Claim Drafting_20012022
Claim Drafting_20012022
Claim Drafting_20012022
Deepa ES
Origiin IP Solutions
deepasai@origiin.com
Some important
considerations
• One invention - one application
• Single inventive step
• A drug formulation, process to make it and uses make
single inventive step and altogether make a single
invention.
• Identify inventors, complete names, address
• Applicant name, address, nationality
Have feel of
the invention
Read about invention
Have feel of it
Identify terms and keywords commonly used in
industry
Claims
• Figure out the all essential features or
elements of the invention which are
sought to be claimed.
• Start with broadest claims of the
invention and then progress to narrower
claims.
• Precede claims with a short statement
such as ‘I/We claim/what is claimed is:
…’
• Each claim should consist of an
introduction, linking word, and body.
Claims
• Claims are statement of technical facts expressed in legal terms defining the scope of the
invention sought to be protected.
• Clearly worded and each claim is single sentence
• Rights are given to claims only, not for the matter described in the complete specification
• Defines the boundaries of legal protection and forms a protective fence around the
invention
• Each claim is evaluated on its own merit and, therefore, if one of the claims is objected, it
does not mean that the rest of the claims are invalid.
• A claim shall be either for a product or process or apparatus or all of them, and shall in one
sentence according to the standard practice
Claims-Scope
A claim must not be too narrow also because such a claim would not be
sufficiently effective in preventing infringement of the patent.
Broad-> narrow
Structure of a
Claim
A with bottle ocontainerpener comprising a cup having a
sidewall and a bottom wall, the sidewall an inner recess for
receiving a beverage container;
Claims: Important tips
Claim format
• The claim should be formatted in such a way that
each elements in the claim is set apart, making it easy
to understand the structure of the claim.
• There may be many ways of describing claim and
claims description mainly depends upon the practice
followed by the claim drafter.
• But generally, a format which is easy to follow both
for the reader and the claim drafter is used.
Body of claims
• A colon typically is inserted after the transitional phrase
and semicolon can be used to separate elements.
• In case the number of elements is more than two, generally
a hyphen or alphabetical bullets (a, b, c ...) are used to
separate each element.
• These letters also help in referring to the elements of
previous claim, or in discussing the claim with an examiner
in the patent office.
• For example, a dependent claim might refer to performing
an added step ‘after step (c)’ of its parent claim.
‘Whereby’ Clause
SESSION CODE:PIP_202_04 45
Independent claims
• 1. An improved windmill to generate electricity irrespective of wind
direction and wind velocity comprising:
• a plurality of wind guide plates extending in a radial direction;
• a charger to close the lower end of said wind guide plate
wherein said charger has a conical sectional shape;
• an upper plate to close the upper end of said wind guide plate;
• an wind inlet provided on said wind guide plate through which
the wind in introduced into said windmill;
• first wind inlet opening and closing device pivotally installed in
said wind inlet;
• second wind inlet opening and closing device being positioned
behind said first wind inlet opening and closing device through
which the wind is discharged out of said windmill;
• a power generating tunnel through which the wind in
introduced into the windmill via said first wind inlet opening
and closing device;
• a wind outlet comprising of a plurality of cells defined by plating
the plurality of wires in the form of a lattice.
SESSION CODE:PIP_202_04 46
Dependent
claim
The chair as claimed in claim 1,
wherein said backrest is adapted
to be supportable in any desired
position relative to said seat
surface.
SESSION CODE:PIP_202_04 47
Omnibus claim is a claim which includes a reference
to the description or the drawings without stating
explicitly any technical features of the product or
process claimed. It is allowed only if the statement of
invention is incorporated in the specification. The
Omnibus words such as ‘substantially as described’ or
‘substantially as described with reference to the
claim drawings’ or ‘substantially as described herein’ are
commonly used to claim as Omnibus Claim.
Example
• ‘Apparatus as described in the description’
Product
claim
A pharmaceutical composition, comprising:
10 to 20 mg of clindamycin and from 50 to 100
mg of clotrimazole per application unit; and at
least one pharmaceutically acceptable carrier.
Process claim
A bio-assisted method for treatment of hydrocarbon-
contaminated soil employing a blend of selective
microbes, the method comprising; isolating the
microbes, which are capable of releasing oil from the
contaminated soil/gravel particles, adding the isolated
microbes into said soil to release the oils, adding
separately isolated microbes, which are capable of
degrading the released oils, providing optimized
nutrient for the microorganisms, and aerating the
same by periodic mixing of the oil contaminated soil-
water slurry or by air sparging to treat the
contaminated soil.
Apparatus claim
A storage battery powered, electric motor vehicle,
particularly an electric fork lifter, having a main
electric drive motor connected to the storage
battery in series with an electrical control circuit,
comprising a steering device having an auxiliary
electric motor connected to the battery in series
with said main drive motor and parallel to said
control circuit to be energized by the voltage drop
across said control circuit, wherein the sun of the
instantaneous voltage applied to the drive motor
and the voltage drop across said control circuit is
equal to the voltage from the storage battery.
Jepson claims
In an instrument marker pen body including an ink reservoir and means
for receiving a writing tip, the improvement comprising a pen arm
holding means consisting of an integrally moulded hinged member
adapted to fold against a surface of the pen body and to be locked
against said surface by engage able locking means.
Markush is derived from Dr.
Eugene A. Markush (1888–1968), a
Hungarian-born chemist who
migrated to the U.S.A. and founded
the Pharma Chemical Corporation
in New Jersey in 1919. In 1924, he
Markush claims
filed a patent application in respect
of a class of novel pyrolazone dyes,
and following a legal argument
over a U.S. Patent Office regulation
against claiming alternatives for an
invention, he was obliged to
rephrase his claims using
expressions of the form ‘where R is
a group selected from . . .
’Markush claim is mainly used in
chemistry or biochemical inventions.
It is a claim with multiple
Markush Claims ‘functionally equivalent’ chemical
entities allowed in one or more parts
of the compound.
‘The process for the
manufacture of dyes which
comprise coupling with a
halogen substituted
pyrazolone, a di-azotized
unsulphonated material
selected from the group
consisting of aniline,
homologues of aniline and
halogen substitution
products of aniline’
Clarity of claims
A structure comprising a
semiconductor substrate made
of silicon, said structure further
characterized by comprising a
near-amorphous film comprising
ZrO2.
Clarity of claims
• Here the claim does not have a precise or well-recognized meaning for a
skilled person. The term ‘near-amorphous’ used in the claim is vague and
unclear and leaves the reader in doubt as to the meaning of the technical
feature to which it refers, thereby rendering the definition of the subject-
matter of said claim unclear.
Clarity of claims
• A Diesel engine comprising an engine block and a cylinder
head made of an Aluminium-Titanium alloy having a
melting point between 1000 K and 1100 K.
Clarity of claims
• The syntax of the claim is open to different interpretation:
Either the engine block as well as the cylinder head are
made of the alloy, or only the cylinder head is made of the
alloy.
a) I claim to be the inventor of this
application,
Statements things.
Use indefinite article “a” or “an” when introducing an element for the first time
Use definite article “the” or “said” when referring back to the introduced element
Example: Claim
A game device, comprising a handle and a head portion connected to the handle,
characterized in that, an anti-slippage means is secured to the handle
Reference numerals and Parenthesis
expressions
Claim 1.
2. The formulation as claimed in claim 1, wherein silver precursor is selected from the group
comprising silver citrate and silver sulfate.
3. The formulation as claimed in claim 1, wherein citric acid in the range of 10% to 50% by
weight is used in combination with silver citrate as silver citrate is less soluble in water.
4. The formulation as claimed in claim 1, wherein silica precursor is selected from a group
comprising tetraethyl orthosilicate, tetramethyl orthosilicate, tetrapropyl orthosilicate,
tetrabutyl orthosilicate, tetrahexyl orthosilicate, diethoxydimethylsilane, ethoxy
trimethylsilane, methoxy trimethylsilane, trimethoxy(octyl) silane, iethoxy(octyl)silane,
methoxy(dimethyl) octylsilane, and 3-Aminopropyl-(diethoxy) methylsilane.
Process Claim
1. A process for preparing photo-stable silica embedded silver ion polymer
complex, the process (100) comprising the steps of: