Patent Drafting

Vinita Radhakrishnan

Patent System: Rationale 

Public Good
inventor must provide a complete and accurate public description of the invention in order to enable others to use that information to invent further, thus pushing technology forward for the benefit of society 

Quid pro quo

Patent Drafting 

Skill based
Techno-legal Expertise 

One time chance
Not allowed to add forgotten or missed out details later cannot get protection for what is not described properly

The Drafting Dilemma 

Implications of
Claiming too broadly Claiming too narrow 

Claiming just right:
This is an art and requires lots of imagination Claim must be adequately supported by the description 

Must avoid
Not claiming what the client wants Claiming what the client does not use or need

One way road 
 

Cannot broaden the claims of a granted patent Cannot broaden the disclosure and the claims beyond what has been included when drafting the application that was filed You are responsible for getting the scope of protection the inventor deserves You do not get a second chance

Patent drafting for India
Specification Drafting  Claim Drafting 

Specification Drafting
A specification is a techno-legal document containing scientific information constituting patent rights.  Purpose of Specification 

Disclose details of the invention for which protection is sought Define legal boundaries of the invention for which protection is sought

Sufficiency of Disclosure
Disclosure of an invention in the specification is intended for a person skilled in the art to understand and work the invention Disclosure
Support Claims  

Enablement
Must enable a person skilled in the art to carry out the invention described in it 

Best Mode
On the date of invention

Clarity of Disclosure
Disclosure must be clear, precise, honest and open  No doubts must be casted on the scope of the invention  Lack of clarity- Ground for Revocation 

Contents of Specification 
          

Title Preamble Name, Address and Nationality Field of Invention and use of invention Prior Art and Problem to be solved Object of Invention General statement of invention Detailed Description of Invention Statement of claims Drawings Abstract Deposit

Title
Sufficiently indicating the subject-matter of the invention  Fifteen words  Has to indicate the nature of Invention  Need not describe the invention 

Preamble

³The following specification particularly describes the invention and the manner in which it is to be performed.´

Name, address and nationality
Full Name  Address: Place of Business or residence  Nationality of Applicant 

Field and Use of Invention
General art to which the invention belongs.  Utility of Invention  Advantages that the invention possesses over conventional practices  The section may start as follows: ³This invention relates to «´´ 

Prior Art and Problem to be solved 


Must clearly bring out the current state of the art of technology relating to the invention. Identify Closest Prior art
Patents or applications Technical Literature Books etc. 



Differentiate the invention from prior art Disadvantages or problems existing with the prior art that the invention solves

Object of Invention
The necessity of the invention has to be fortified in this section  Bring out the positives of the Invention 

³The principal object of this invention is «´ ³Another object of this invention is «´ ³A further object of this invention is «´

Statement of Invention
Most essential and distinguishing features of the invention  Detail the essential novel features of the invention for multiple embodiments. ³One embodiment of the invention is«.´ ³One further embodiment of the invention is«´ 

Detailed Description
Sufficient detail so as to give a complete picture of the invention  Clear description of the nature of Invention  Specific examples 

Claims
Claims define the extent of protection sought for an invention and form the heart of the specification  Techno-legal part of the Specification 

Drawings 
    

Submitted on separate sheets made on a scale sufficiently large to show the invention clearly Dimensions must not be marked Sequentially numbered must not have any descriptive matter unless they contain flow diagrams Consistent Labeling

Abstract 
      

Acts as a notice Amendment by controller Concise summary of the invention Must start with the title of Invention indicate clearly the technical field and the technical problem and solution 150 words Reference can be made to formula or drawing Not used for purpose of interpreting the scope of protection

Deposit 
   

Must be made if the invention includes biological materials. Material cannot be adequately described in the written description. Reference must be provided in the specification. Deposit must be made on or before the date of Indian Filing. Geographical Origin of the material must be disclosed.

General Disclaimers 

To cover the embodiments that are the a result of minor modifications or modifications that may be possible in the future as a result of advancement of technology.

Definition
Avoid use of jargons and slangs  Not commonly used terms must be defined and sufficiently described for the benefit of PHOSITA  Terms in foreign languages 

Mandatory to provide English equivalents

Provisional Application 
   

Stand alone Is not a skeleton or rough draft Enough details to clearly identify the invention and its scope must be provided Claims, object and Statement of Inventions are optional Drawings if mandatory if required to support the invention.

Claim Drafting

Describe

The Cat Sat on the Mat

In other words«.
³The feline mammal was occupying, in a sense, a wholly if not entirely sedentary position within the general context of what was, as could clearly be seen in this situation, a horizontally-spread woven textile floor-covering, as is sometimes -- but not always -- the case".

Claims
Claims define the metes and bounds of an invention  Claim Limits the extent of protection  What is not claimed is disclaimed! 

Parts of claim 


Single sentence ending with a period. Three parts
Introductory Phrase 

Introduces the subject matter of the invention defines a particular embodiment of the invention joins the introductory phrase and the body of claim Open ended v. close ended claims

Body 

Transition Phrase 


Example
³I claim a pencil having an eraser fastened to one end.´  Introductory phrase - ³a pencil´  Transition phrase ± ³having´  Body ± ³an eraser fastened to one end´ 

GENERALIZATION IS THE KEY

CLAIM CLASSIFICATION 

Independent Claims
Do not depend on any other claim Generally defines the essential novel features of the most preferred embodiments of a product or a process. 

A pencil having an eraser fastened to one end.

CLAIM CLASSIFICATION 

Dependent Claims
Depend on either an independent claim or another dependent claim Multiple-dependent claims 

A pencil as in claim 1, where said eraser is fastened to said pencil on one end using an adhesive.

Types of claim based on Subj. matter 

Process Claims
A Process Claim is used for process inventions and has to clearly define the steps involved in the process. 

Product Claims
A product claim may be claimed as an apparatus, a system, a device, an article or any other product.

Other claim types 
      

Markush Claims System Claim Product by process claims Fingerprint claims Structure Claim Composition Claim Gene Sequence claim Diagnostic method claim

Actual Structure example 

A compound having the formula

Scope of protection rendered by the claim stated in the illustration is limited to the compound bearing the molecular structure.

µMarkush¶ type Claim
include a chemical entity along with the various variants of the same  close ended claims 

Markush claim 

A compound having the formula

Wherein X is selected from a group consisting of Cl, Br, F and I.

Product by process claim
When the product cannot be clearly defined and is best defined by the process of preparing the same

Example 

Polyjuice potion:
A potion that transforms one person to another person he desires to look and sound like

What is claimed is a potion prepared by: Mixing 12 lacewing flies that have been stewed for 21 days , 1 ounce of crude Antimony, 4 leeches that have been "unsucculated³, 1 pinch of powdered horn of a Bicorn that has been "lunar extracted" and extract of Extract of The-Transfigured-Being-To-Be floowed by 21 days of brewing in a oak barrel

Chemical Composition or Combination Claims 

Novel Combination product patents including two or more already known chemical compounds. These compounds may be available in the public domain. But so long as the combination is novel, they can be patented. A composition claim usually shall include several components both essential and non essential for the invention.  

Example 1
What is claimed is A shampoo composition comprising  a. 25 % of Alkyl ether sulphate;  b. 10% of Dimethicone;  c. 2% of imidazole and  d. 63% water.

Example 2
What is claimed is 1. A shampoo composition comprising  20- 30% of at least one Surfactant;  5-15% of at least one conditioning agent;  1-3% of atleast one anti fungal agent and  water. 2. The shampoo composition as claimed in claim 1, wherein the antifungal agent is selected from a group consisting of pyrazole, imidazole, triazole, tetrazole and pentazole. 3. The shampoo composition in claim 1 wherein said anti fungal agent is imidazole.

Example 3 

A shampoo composition comprising 
  

20- 30% of at least one Surfactant; 5-15% of at least one conditioning agent; 1-3% of at least one anti fungal agent and Water

wherein the antifungal agent is selected from a group consisting of pyrazole, imidazole, triazole, tetrazole and pentazole.

Tips
Pre drafting  Understand the invention  Identify the crux of the invention  Consider all possible embodiments  Plan the structure  Play the role of a devils advocate

Tips
Keep the inventor informed.  Draft Claim outline before starting to draft the description. Finalize the claim after specification is drafted  Avoid Unnecessary information  Keep in mind the level of PHOSITA while drafting the claim. 

Claim Drafting is all about
Precision! Clarity! Imagination! Foresight!

Take home for the day

Claim Language 
  

Invention should be clear from the wording of the claim alone Meaning of words: If necessary may be defined in description Claim should define a solution not the problem Claim must comprise all essential features
Structural features Functional Features

About Description
Support in the description for every Claim  Support over the whole breadth of claim  Not every aspect have to be proven by example 

Infringement

Types 

Direct
Literal Infringement Infringement by doctrine of Equivalence 

Indirect

Literal Infringement
Claim Construction  Comparison  Claim by claim - element by element 

© Brain League Consultants2005-2006

Doctrine of Equivalents 

Equivalents of a claim
Function Way Result 

Prosecution History Estoppel

Indirect Infringement
Contributory Infringement  Aids infringement 

Sale  Material part of invention  Not a staple 

Fact Pattern
PANCAKES, is a restaurant chain in Bangalore specializing in serving breakfast. In 2004, PANCAKES¶ pancake sales dropped. In an effort to improve pancake sales and increase profits, PANCAKES designed a new pancake, with a hole in the centre, to hold syrup, butter, whipped cream, and other toppings, such as fruit. The hole prevents the toppings from spilling all over the plate. The pancake hole was the perfect size and shape to hold the ideal amount of toppings and discourage waste by PANCAKES¶ employees and patrons. More efficient use of toppings, and increased pancake sales, translated into greater profitability. PANCAKES marketed the new pancakes under the name ³PuddleCakesŒ´, and filed patent applications for the concept in India

Prior Art

Elements
Pan cake  Hole 

Claims: As filed 

A prepared food item, said food item having a hole to retain a second food item when said second food item is placed in said hole.

Amended Claims 

A prepared food item having a top surface, a bottom surface, a perimeter and a side edge and further provided with a hole disposed centrally and shaped to retain a second food item within the hole by forming a substantially circular inner side wall and a bottom wall from the surrounding first food item, the diameter of said hole being no more than half of the diameter of the first food item. A pancake prepared on a heated surface and having a top surface, a bottom surface, a perimeter, and a side edge, said pancake further including a centrally disposed reservoir adapted to retain an amorphous topping when said topping is placed in said reservoir. 

Kahani mein twist
One day, while eating PuddleCakes at a PANCAKES restaurant, the CEO of µTASTY Foods¶, hit upon an idea for increasing his company¶s sales of pre-pressed frozen hamburger patties. His idea was to place a hole in the centre of the hamburger patties to create a reservoir for holding condiments, such as mustard, ketchup, and mayonnaise. The hole prevents the condiments from squeezing out of the bun. TASTY Foods began selling its pre-pressed, frozen hamburgers with a hole under the name ³PuddleBurgers.´ µBURGER QUEEN¶ a take away joint next to µPANCAKES¶ in Indira Nagar started serving puddleburgers as their new arrival into the take away cuisines. PANCAKE UNHAPPY. WANTS TO SUE«. Your take on the matter???

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

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