Patent Drafting Strategysustech.edu/files/workshop/20150120171720639.pdf2 Scope •What is a...
Transcript of Patent Drafting Strategysustech.edu/files/workshop/20150120171720639.pdf2 Scope •What is a...
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Patent Drafting Strategy
Zeinab A. Osman, PhD
Institute of Engineering Research and Materials Technology
National Center for Research
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Scope
• What is a patent?.
• How Good Must Your Invention Be.
• The Basic Patent Right
• Precautions to be taken before drafting a
specification
Contents (kind) of patent specifications
Drafting the patent ( description and claims).
Claims and their interpretation
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Invention: means a new product or process involving
an inventive step and capable of industrial application.
Patent : is a limited monopoly right conferred by the
State in consideration of disclosure of the invention.
Means:
Is the right to exclude others from exploiting or using
the particular invention
• Fundamental research
• Improvement on existing art
• Solving unsolved problems of art/unaddressed issues
• Different approach
What is an invention and what is a
patent?
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Solution/Invention
Application
Satisfaction of
condition
PATENTABLE
Useful
Novel
Inventive
(Surprising)
How Good Must Your Invention Be.
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The Basic Patent Right
• Stop others from
– Making
– Using
– Selling
• your invention
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Exercise
License
Sell
Trade
pledge
promote
Exploiting Patent Rights
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BEFORE DRAFTING
• What is the invention ?
• Is invention patentable ?
• Is invention novel, inventive ?
• Prior art/prior disclosure ?
– Oral disclosure ?Did I tell anybody about it?
– Prior printed publication available to the public ?
– Prior public use ?
– Application entitlement: Conflicting
interests! Employee Invention Act? Employment Contract?
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BEFORE DRAFTING
VERIFY THE FOLLOWING:
Conduct search
Enlist problems in prior art
What is the problem sought to be solved by the
invention?
What is the novelty?
Is the solution obvious?
Has publication ensued?
Ascertain the type of application -whether complete
or provisional is to be filed
Decide the area and nature of protection- Paris
convention, PCT, ordinary application.
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• Patent Office
• Licensee/Assignee
• Court
• Technical peers/skilled
persons
• Competitors
• Commercial players
• General public
Your patent will be Read by:
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KINDS OF PATENT SPECIFICATIONS
PROVISIONAL COMPLETE
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A PROVISIONAL SPECIFICATION
•when there is an Urgency
•commercial disclosure
•Submission of thesis
•Inventors/Seniors leaving the company
•Accidental disclosure
•Many competitors
Provisional application: Is a document
describing the invention and need not
contain claims
Disclose as much as possible
Decides the date of the application
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Drafting the patent
•
PATENT SPECIFICATION
Description Claims
• Description discusses the invention
• Claims define boundary of monopoly
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DRAFTING THE DESCRIPTION
Title
Abstract
Technical field of the invention
State of the art (prior art)
Disadvantages of prior art
Objects of Invention (purpose)
Statement of Invention
Detailed description of Invention
Claims
What should be mentioned:
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TITLE
• A concise statement
providing the crux of the
invention
• Care should be taken to
incorporate all major
aspects claimed
• Product-Process-
Apparatus
Technical field of the
invention
•More details than the title
•Provides utility
•Sometimes used as a tool
for search in the absence of
abstract
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DRAFTING THE ABSTRACT
(purpose : the technical information presented by
briefly mentioning everything analyzed in the
description, the claims and the drawings. It
doesn’t affect the extent of protection.)
The title of the invention
The technical field to which the invention pertains
A reference to the manner of solving the technical
problem the invention deals with
The main use or uses
The basic chemical formula (if there is any)
What should be mentioned:
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State of the art ( prior art)
Is a brief write-up of what is
known before the invention
associated with each of the
known art; and describes the
problem proposed to be solved
by the invention; sets out the
problems
Invention •Un-solved problems
•Prior art solution not working
•Describe new solution adequately
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OBJECTS OF THE INVENTION
•Provides purpose of the
invention
•Main object(s) and
Ancillary object(s)
•Essential aspects and
preferred/optional aspects.
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DETAILED DESCRIPTION OF INVENTION
•Sets out best mode of performing the invention
•Describes the invention in greater detail with
examples/illustration/tables/graphs/diagrams, etc
•Description sufficient to enable a skilled
person to put the invention into practice
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PRODUCT SYSTEM DEVICE
PHYSICAL ENTITY
METHOD PROCESS USE
ACTIVITY
THEY REFER TO
(purpose : they define the extent and the content of the
protection on the basis of the technical features of the
invention)
DRAFTING THE CLAIMS
Is the operative part of the specification. Defines the monopoly to be
conferred by the patent. Define the metes and bounds of the invention: at the
time of infringement proceedings, only claims will be interpreted
If you do not claim, you disclaim
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EXAMPLE: DRAFTING THE DESCRIPTION
OF INDUSTRIAL DESIGNS OR MODELS
• Describing the elements that are characteristic of the design
• It should not exceed 100 words
• Technical details relating to
the operation of the object
Or its possible uses
or the material of its making
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PRESENTATION OF GRAPHIC OR
PHOTOGRAPHIC REPRESENTATIONS
OF INDUSTRIAL DESIGNS OR MODELS
Color or black and white photos or graphic
representations
should present clearly the object only, without shadings
other objects, persons or animals are not allowed to be
depicted next to the object
the object should be depicted at least once in a position
of usual use
the dimensions of the photographs or the graphic
representations should not exceed 16 x 16 cm
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It is not allowed:
To use words or texts or typical phrases
or company names or marks on the object
photographs are not accepted when :
- they are instant film
- they are photocopies
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Claiming Your Stake: Examples
Somebody invented a pencil with an eraser and a light
attached to it. A claim may read as follows:
1. An apparatus, comprising:
a pencil;
an eraser attached to one end of the pencil; and
a light attached to the center of the pencil.
Closed phrases, such as “consisting of,” limit the
claim to nothing more than the specifically-
recited elements. The claim covers only the
elements named and nothing more.
A pencil having an eraser, wherein the improvement
comprises a light attached to the pencil.
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Example 2. A patent applicant has invented a rice
cooker. Since an object of this invention is to cook rice,
the preamble and title might reads as follows:
An apparatus for cooking rice.
But suppose that the patent applicant knows his
invention could be used for cooking all kinds of grains,
a broader preamble might read:
An apparatus for cooking grains.
Suppose further that the patent applicant knows his
invention could be used for cooking vegetables, or
even melting cheese for fondue, an even broader
preamble might simply read:
An apparatus for cooking.
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Example 3. An apparatus for turning lead into gold,
comprising:
an electric motor;
a bowl for retaining scrap lead; and
a lead-gold zapper element operably coupled to the
bowl and configured to receive electric power from
the electric motor Should still try to make it as broad as possible in order to fully capture the
invention.
An apparatus for turning lead into gold,
comprising:
a power source;
a bowl for retaining scrap lead; and
a lead-gold zapper element operably coupled to the
bowl and configured to receive power from the
power source.
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Check for every claim feature:
Can realization of feature be proven (easily)?
Can the feature be replaced by another one with easier provability
(e.g. indication of the structure instead of the generating method)?
The provability test
Check meaning of apparently clear words (e.g. „solvent“ or
„attachment“)
If required, define term yourself (German Federal Supreme Court:
every patent application is its own dictionary)
Beware of finite definitions such as „consisting of“. Better use open
wording such as „comprising“ or „including“
In case of basic inventions, indication of function may be the only possibility
to lead to appropriate scope of protection.
If the claim only indicates the targeted aim, the claim becomes unclear
and may be far too broad;
Choose the middle: Combination of structural and functional features
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Reckitt Benckiser
Title: Soap -dispenser with authentification check of the
refill
Dettol patent.doc
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Thank you for
your attention