ART OF WRITING SCIENTIFIC Drafting

REPORTS claims
- PATENT DRAFTING
PROBLEM SOLUTION STATEMENT
❑One sentence; started broadly without
reading into prior art
❑Two things
Problem: solved by the invention
Solution: Made by the Inventor
❑Benefit: Create a story/narrative on the
invention
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AN EXAMPLE
❑The problem of ________ is solved by
_________.
❑The problem of holding a stack of paper
without damaging them is solved by a bent-
wire clip.
❑The problem of non uniform heating of
food is solved by moving the food while it is
heated.

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DRAFTING P-S STATEMENT
❑It is a draft – Keep it simple and
broader
❑Client’s input – IDF, Technical writing –
read with P-S statement in mind
❑Generate P-S as soon as hear from your
client
❑[IDF P-S] i.e., Tangible
Conceptual
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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM
❑Five steps
❑Step 1: Claim setting
❑Step 2: Claim type
❑Step 3: Remove the generic terms from
P-S statement
❑Step 4: Make sense of what remains
❑Step 5: Compare with P-S statement for
accuracy
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AN EXAMPLE

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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TRANSITION FROM PROBLEM
SOLUTION TO CLAIM

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PARTS OF CLAIM
❑Claimed invention: Portable opto-electronic sensing system
Transition
Preamble Body
❑WE CLAIM:
❑1. A portable opto-electronic sensing system for detection
of food freshness, said system comprising of:
❑ at least one light source [1a] and [1b] configured to
provide illumination towards a gas which is emanated from
food stuff [8] to be monitored;
❑ absorbance filter [3];

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PARTS OF CLAIM
❑WE CLAIM:
❑An augmented reality and Internet of
Things supported environmental parameters
monitoring system, comprising:
❑an environment, said environment is a
warehouse environment [100] in which a
plurality of food grain sacks [102] stored;

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PARTS OF CLAIM
❑We claim:
❑ A cognitive body sensor network,
comprising:
a plurality of wearable sensor nodes, each
attached to a user body part while the user
practices a yoga posture, and each configured
to measure and transmit respective muscle strain
level during the yoga posture;

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 POINTS TO NOTE
❑Preamble: names the things to be
claimed
❑Transition: connects the preamble and the
body
❑Body: defines the parts and how they
work

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PARTS OF CLAIM- PREAMBLE
❑Preamble should define the field of
invention
❑Not treated as a claim limitation (restricting
the scope)
❑An element in the body can derive
antecedent basis from the preamble, may be
an essential component of the claim
(advisable not to the rely on preamble for
antecedent basis)
❑Shorter preamble preferred
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 PREAMBLE AND TITLE
❑Preamble and body should be consistent with
each other together to form the whole claim
❑Title can be modified to create the preamble
❑It is good to keep the preamble consistent with
the title of the invention.
❑Too broad a preamble may not be advisable
“A pen comprising…”
❑Breadth of the preamble- “a cap to cover the
writing tip”
“Pen” or “Pencil”= “writing device”
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LIMITATIONS IN THE PREAMBLE
❑Avoid limitations in the preamble
❑No need to include the object of the
invention in the preamble
❑Not possible to capture all objects in
preamble
❑Title shall disclose the specific feature
of the invention, whereas preamble has
to define the field of invention
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TYPES OF PREAMBLE
❑A process
❑An apparatus
❑A process for purifying honey…
❑A device for cutting paper…
❑A biodegradable pesticide delivery
system…
❑A composition for the detection of a
specific chemical substance in a testing
fluid…
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PREAMBLE WITH FUNCTION
❑Context can be indicated in the
preamble
“Apparatus for (mention the purpose),
the apparatus comprising…”
❑Dependent claims should have the
same preamble as their parent

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AN EXAMPLE

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PREAMBLE – MORE EXAMPLES
❑Exs:
A weighing apparatus for visually challenged..
A weighing apparatus..
A composition for selectively eliminating a
microorganism or a group of microorganisms
from a biological sample ..

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TRANSITION
❑It is the next part of the claim and stands
between preamble and a body.

A weighing apparatus, comprising:

weighing balance;
electric circuit; and
power supply source,

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TRANSITION - OPEN & CLOSE
ENDED
❑Two types of transitional phrases: open-ended [open-ended
phrases are inclusive, not exclusive] and closed phrases [limit the
claim to nothing more than the specifically-recited elements.]
❑An indicative list of regularly used open ended transitions is:
 Comprising
 Comprises
 Having
 Containing
 Characterized by or characterized in that or the improvement
 Wherein & providing
❑A plant nutrient composition, comprising:
alkali treated micronized kimberlite; and
lignite,
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TRANSITION - OPEN & CLOSE
ENDED
❑An indicative list of regularly used closed
ended transitions is:
Consists
Consisting
Composed of
A formulation, consisting of:
❑Exs: A - 40%;
A device, consisting of: B - 40%; and
writing means; C - 20%.
erasing means; and
scanner attached to said writing means

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PARTS OF CLAIM- BODY
Body of a
combination
Listing of claim
elements
(structure, part,
step & ingredient)

Describing how
the elements work
with each other
(Cooperation among elements
makes it a combination,
otherwise it would be an aggregation)
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PARTS OF CLAIM- BODY
❑Narrative avoiding laudatory
phrases
“novel”, “inventive”, “more
efficacious”, “enhanced efficacy”
❑Preamble: Machine, process,
composition
❑Body: Parts, steps, substances
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PARTS OF CLAIM- BODY
❑Four things to cover about each
element
Name
Distinctive feature from others in the same
class
Cooperation from other elements
Functions

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HOW TO INTRODUCE ELEMENTS
❑First time: indefinite article (“a”,
“an”)
❑Plural (layers, 2 layers)
❑Means clauses (means for lightning)
❑Second and subsequent use: definite
article (“the”, “such”, “such as”, “said”)

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FORMS AND PUNCTUATION OF
CLAIMS
❑Separate the parts of claim
Using punctuation
Commas, colon, semicolon
Break CLAIM PUNCTUATION
Preamble, transition:
Element (1); and
Element (2).

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AN EXAMPLE- CLAIM FOR A CAR
A car comprising:
(a) a chassis;
(b) an engine mounted on the chassis;
(c) a drivetrain powered by the engine;
and
(d) wheels connected to the drivetrain.
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STRUCTURAL & FUNCTIONAL
ELEMENTS
❑Each element to have a descriptive
name
❑Use words in their common meaning
❑Special meaning to be defined in
specification and claims (if possible)
❑Choose carefully; names affect breadth
of claim
❑“means for _____” for broad claims
(functional)
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STRUCTURAL & FUNCTIONAL
ELEMENTS
❑Use appropriate adjectives (“outer
layer”, “inner layer”)
❑If elements identical (“first”, “second”)
❑Distinguish elements by association
(“upper floating membrane”)
❑Use assigned name consistently (“lower
floating member”)
❑Use dictionary

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FUNCTIONAL ELEMENTS
❑“means for” or “step for”
❑“device for floating”
❑“apparatus for removing seeds” better
than “apparatus which remove seeds”
❑“means for ____” is a form of claim
limitation
❑“means for heating”=“a heater”
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FUNCTIONAL ELEMENTS
❑Functional language covers a
structure: “recording”
❑Recite function immediately after the
element
❑Use of “whereby”
To describe a result that follows from a
previously recited structure
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STRUCTURAL & FUNCTIONAL
ELEMENTS
❑Ordered structurally or functionally
❑Functional: ordered in the degree of
closeness to the element on which it
operates
“an engine mounted on the chassis”
❑Structural: first recite the base
(mechanical) or source of power
(electrical)
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COOPERATION
❑Specify how the elements interact
Machine: operative combination of
elements
Avoid a catalogue of elements: mere listing
Words describing relationships:
“Proximate”, “Adjacent to”, “Connected to”,
“Adjoining”, “Overlapping”
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FORMS OF COOPERATION:
STRUCTURAL
❑Physical and mechanical connection
between the elements
✓Static linkage: “fixed to”, “screwed to”,
“connected to”
✓Relative positions: “joined above”,
“adjacent to”
✓Connection: “screw connecting the hinge
to the door”
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CASE STUDY

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CASE STUDY

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CASE STUDY

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CASE STUDY

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THINGS NOT TO BE USED
❑I claim that my process or machine will do
such and such things.
❑I claim the following advantages.
❑I claim an improved sewing machine.
❑I claim a mechanism for converting heat
into electrical energy without any loss of
efficiency.
❑I claim a lubricating oil which is of specific
gravity…. and boiling point.....

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POINTS TO REMEMBER
❑The specification must not contain any false
representation of the invention which would
mislead the public.
❑The specification must be clear and concise.
❑The specification must contain background of
the invention that gives a brief idea about the
prior art.
❑The specification must fully and particularly
describe various features constituting the invention
including the best method of performing the
invention.
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POINTS TO REMEMBER
❑The specification may include advantages of the invention.
❑The detailed description describes in detail what the invention is
and how it is made and used and the objectives, advantages or
solutions achieved by employing the invention with reference to
drawings.
❑The specification must contain examples showing how the
invention works in a particular application, especially in the case
of chemical related inventions, pharma products, formulations,
biotech inventions etc.
❑The specification must contain in respect of a divisional
application specific reference to the number of the original
application from which the divisional application is made.
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POINTS TO REMEMBER
❑The specification must contain in respect of a patent of addition
a specific reference to the number of the main patent, or the
application for the main patent, as the case may be, and a
definite statement that the invention comprises an improvement in,
or a modification of, the invention claimed in the specification of
the main patent granted or applied for.
❑The specification must contain an abstract which is essentially a
summary of the matter contained in the specification.
❑Importantly, the specification should end with Claims which
define the scope of legal protection of the invention.

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REFERENCES
❑1. The Indian Patent Acts and Rules
❑2. http://ipindia.gov.in/ipr/patent/manual/main%20link.htm
❑3. WIPO course materials
❑4. http://www.fishiplaw.com/chapter-7-basic-specification-
drafting
❑5. http://www.patentwire.co.in/images/Guidelines.pdf
❑6. http://www.slideshare.net/ranjeetsingh09/drafting-of-a-
patent-specification
❑7.http://techcorplegal.com/Indian_Law_Firm/international_paten
t_drafting_and_foreign_patent_claim_writing_tips/

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THANK YOU
A. BALAJI GANESH, Ph.D.,
Dean (Research)
Registered Patent Agent (IN/PA 3081)
Velammal Engineering College, Chennai-66
Email: abganesh@velammal.edu.in
Phone: 9842791925

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