Patent: A presentation on "Patent Drafting" by Ms. Vinita Radhakrishnan - BananaIP
BananaIP Counsels, formerly Brain League IP Services, founded in 2004 at the Indian Institute of Management (IIM) Bangalore’s incubation center (NSRCEL), is recognized as an IP/Patent trailblazer in India. The firm’s mission is to help clients maximize business value from their Intellectual Property (IP)/Patents, and gain competitive advantage in the market place. In its evolution from Brain League, BananaIP carries forward the firm’s core values – Merger of Technology,Management and Law, Swift Adaptation to changes in competitive environment, and business driven approach to Intellectual Property (IP)/Patent Services.
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2. 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
3. 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
4. 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
5. 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
7. 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
8. 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
9. 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
10. 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
11. Title
Sufficiently indicating the subject-matter of
the invention
Fifteen words
Has to indicate the nature of Invention
Need not describe the invention
13. Name, address and nationality
Full Name
Address: Place of Business or residence
Nationality of Applicant
14.
15. 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:
“This invention relates to …””
16.
17. 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
18.
19.
20.
21. Object of Invention
The necessity of the invention has to be
fortified in this section
Bring out the positives of the Invention
“The principal object of this invention is …”
“Another object of this invention is …”
“A further object of this invention is …”
22.
23. Statement of Invention
Most essential and distinguishing features
of the invention
Detail the essential novel features of the
invention for multiple embodiments.
“One embodiment of the invention is….”
“One further embodiment of the invention
is…”
24.
25.
26. Detailed Description
Sufficient detail so as to give a complete
picture of the invention
Clear description of the nature of Invention
Specific examples
27.
28. Claims
Claims define the extent of protection
sought for an invention and form the heart
of the specification
Techno-legal part of the Specification
29. 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
30. 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
31. 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.
32. 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.
33. 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
34. 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.
38. In other words….
“The 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".
39. Claims
Claims define the metes and bounds of an
invention
Claim Limits the extent of protection
What is not claimed is disclaimed!
40. Parts of claim
Single sentence ending with a period.
Three parts
Introductory Phrase
Introduces the subject matter of the invention
Body
defines a particular embodiment of the invention
Transition Phrase
joins the introductory phrase and the body of claim
Open ended v. close ended claims
41. Example
“I claim a pencil having an eraser fastened
to one end.”
Introductory phrase - “a pencil”
Transition phrase – “having”
Body – “an eraser fastened to one end”
GENERALIZATION IS THE KEY
42. 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.
43. 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.
44. 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.
45. Other claim types
Markush Claims
System Claim
Product by process claims
Fingerprint claims
Structure Claim
Composition Claim
Gene Sequence claim
Diagnostic method claim
46. 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.
47. ‘Markush’ type Claim
include a chemical entity along with the
various variants of the same
close ended claims
48. Markush claim
A compound having the formula
Wherein X is selected from a group consisting of Cl, Br, F and I.
49. Product by process claim
When the product cannot be clearly
defined and is best defined by the process
of preparing the same
50. 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 "unsucculated“, 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
51. 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.
52. 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.
53. 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.
54. 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.
55. 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
56. 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.
57. Claim Drafting is all about
Precision! Clarity! Imagination! Foresight!
59. 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
60. 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
68. 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
“PuddleCakes™”, and filed patent applications for the concept in
India
72. 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.
73. 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.
74. Kahani mein twist
One day, while eating PuddleCakes at a PANCAKES restaurant, the
CEO of ‘TASTY 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 “PuddleBurgers.”
‘BURGER QUEEN’ a take away joint next to ‘PANCAKES’ 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???