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    Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

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    This presentation explains the nuances involved in the process of drafting claims and helps in understanding claim structure

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    1K views42 pages

    Patent Specification Drafting Series: Claim Drafting & Analysis, by Arun Narasani

    Uploaded by

    narasani
    This presentation explains the nuances involved in the process of drafting claims and helps in understanding claim structure

    Copyright:

    Attribution Non-Commercial (BY-NC)
    Download as PDF or read online from Scribd
    Flag for inappropriate content
    of 42

    Claim drafting and analysis

    Arun K Narasani
    Intellecture
    Brain League IP Services

    June 26, 2009


    Agenda
    ● Basics of claims
    ● Claim structure
    ● Claim types
    ● Drafting
    ● Preparation
    ● Claim construction
    ● Protecting multiple facets
    ● Other considerations

    June 26, 2009


    Claim Basics

    June 26, 2009


    Claims overview
    ● Claims define the boundaries of an invention -
    “metes and bounds”
    ● Claims must particularly point out and distinctly
    claim what applicant regards as his invention
    ● Claims must be fully enabled by the
    specification

    June 26, 2009


    Examples
    ● “A method as illustrated and described”
    ● “An apparatus as described in figures 1-10”

    June 26, 2009


    Valid?
    ● These do not “particularly point and distinctly
    claim”
    ● They are called “omnibus” claims and are not
    allowed
    ● One “omnibus” claim is allowed in India, if
    statement of invention is included
    ● Claims must define the invention with certainty
    and in detail

    June 26, 2009


    Statutory classes
    ● US: process, machine, (article of) manufacture,
    or composition of matter, or any new and useful
    improvement thereof

    ● India: product or process

    June 26, 2009


    Proper sentence
    ● Claim forms a complete sentence forming the
    direct object of the phrase “I claim”

    ● “I claim: A pencil having an eraser fastened to one


    end.”

    ● Note the capital letters and the full stop

    June 26, 2009


    Ordering
    ● Claims are presented in a logical order and
    numbered consecutively

    ● Logical grouping of claims is allowed (using a


    line, for example)

    June 26, 2009


    Claim structure
    ● <preamble> <transition phrase> <body of
    claim>
    ● “A pencil having an eraser fastened to one end.”

    ● <A pencil> <having> <an eraser fastened to


    one end.>

    June 26, 2009


    Preamble
    ● Introductory phrase to set the context of a claim
    ● Limitations in preamble may or may not be
    given effect
    ● Short preamble is better when possible

    June 26, 2009


    Transition phrase
    ● “comprising”:
    ● Open
    ● Means “including but not limited to”
    ● “consisting”/”consisting of”:
    ● Closed
    ● Useful in chemical arts
    ● “consisting essentially of”:
    ● Partially open
    ● Useful in chemical arts
    June 26, 2009
    Transition phrase (contd..)
    ● Other uncommon transition phrases
    ● “including”, “having”, “containing” and “wherein”
    – Really not used anymore in the electronics/software
    domain

    June 26, 2009


    Body
    ● Includes material limitations of an invention
    ● New element introduced by an indefinite article
    (e.g. “a” or “an”)
    ● Further references to the same element may use a
    definite article (e.g. “the”)
    ● An element not introduced by an indefinite
    article is not allowed
    ● Said to have no antecedent basis
    ● Elements may be claimed in function language
    June 26, 2009
    Body (contd..)
    ● Double inclusion of elements without separate
    structures may be rendered indefinite
    ● Single element performing multiple functions
    may be claimed using function language

    June 26, 2009


    Claim types – subject matter
    ● Method claims
    ● As one or more steps
    ● Apparatus claims
    ● With active components
    ● Article claims
    ● With non active components

    June 26, 2009


    Claim types – structure
    ● Independent claims
    ● Dependent claims
    ● Multiple dependent claims
    ● Alternative form only
    – “according to claims 3 or 4”
    – “either claim 1 or 2”
    – “any one of claims 1, 2 and 3”
    ● Cumulative claiming not allowed
    – “according to claims 3 and 4”

    June 26, 2009


    Claim types – scope
    ● Functional
    ● Method: step-plus-function
    ● Apparatus: means-plus-function

    June 26, 2009


    Example

    z-1

    1/3
    x(n) y(n)

    z-2

    Moving Average Filter

    June 26, 2009


    Example
    ● Apparatus claim

    ● A moving average filter comprising:


    – a first delay unit;
    – a second delay unit;
    – an adder to add signal; and
    – a multiplier.

    June 26, 2009


    Example
    ● Apparatus claim
    ● A moving average filter comprising:
    – a first delay unit to delay input signal by one unit, said
    first delay unit connected to input signal in parallel;
    – a second delay unit to delay input signal by two units,
    said second delay unit connected to input signal in
    parallel;
    – an adder to add input signal, output from said first delay
    unit, and output from said second delay unit; and
    – a multiplier with scaling factor of 1/3 to multiply with
    output of said adder.

    June 26, 2009


    Example
    ● Mean-plus-claim
    ● A moving average filter comprising:
    – means to delay input signal by one unit, said means
    connected to said input signal in parallel;
    – means to delay said input signal by two units, said means
    connected to said input signal in parallel;
    – means to add said input signal, output from said first
    delay unit, and output from said second delay unit; and
    – means to multiply with output of said adder by a scaling
    factor of 1/3.

    June 26, 2009


    Example
    ● Method claim
    ● A method of implementing a moving average filter
    comprising:
    – Obtaining an input signal
    – Delaying said input signal by a first delay unit;
    – Delaying input signal by a second delay unit;
    – Adding said input signal, output of said first delay unit;
    and output of said second delay unit by an adder; and
    – Multiplying output of said adder by a factor of 1/3 using a
    multiplier.

    June 26, 2009


    Example

    1/3
    x(n) y(n)

    z-1

    +
    z-1

    Moving Average Filter

    June 26, 2009


    Example
    ● Apparatus claim

    ● A moving average filter comprising:


    – a first delay unit;
    – a second delay unit;
    – a first adder; and
    – a second adder;
    – a multiplier.

    June 26, 2009


    Example
    ● Apparatus claim
    ● A moving average filter comprising:
    – a first delay unit to delay input signal by one unit;
    – a second delay unit to delay output from said first delay unit
    one unit, said second delay unit connected to first delay unit in
    series;
    – A first adder to add output from said first delay unit, and output
    from said second delay unit;
    – A second adders to add input signal and output from said first
    adder; and
    – a multiplier with scaling factor of 1/3 to multiply with output of
    said second adder.

    June 26, 2009


    Example
    ● Mean-plus-claim
    ● A moving average filter comprising:
    – first delay means to delay input signal by one unit;
    – second delay means to delay output from said first delay unit
    one unit, said second delay unit connected to first delay unit in
    series;
    – first adding means to add output from said first delay means,
    and output from said second delay means;
    – second adding means to add input signal and output from said
    first adding means; and
    – means to multiply output of said second adding means with
    scaling factor of 1/3.

    June 26, 2009


    Example
    ● Method claim
    ● A method of implementing a moving average filter
    comprising:
    – Obtaining an input signal
    – Using a first delay unit and a second delay unit to delay
    input signal;
    – Using at least one adder to add input signal and signals
    from said delay units;
    – Multiplying output of said adder by a factor of 1/3 using a
    multiplier.

    June 26, 2009


    Example
    ● Dependent method claim (contd..)
    ● A method as in claim x, said method further
    comprising:
    – Connecting said first delay unit in parallel with input
    signal, where said first delay unit delays input by one unit;
    and
    – Connecting said second delay unit in parallel with input
    signal, where said second delay unit delays input by two
    units,
    ● where said adder adds input signal, output from
    said first delay unit and said second delay unit.

    June 26, 2009


    Drafting

    June 26, 2009


    Preparation
    ● Novelty according to inventor
    ● Prior art according to inventor
    ● Problem that led to the solution
    ● Commercial product
    ● Commercial environment
    ● Possible applications?
    ● Likely users / infringers?
    ● Strategy for obtaining a patent
    June 26, 2009
    Claim construction
    ● Independent claims covering multiple facets
    ● Based on commercial and strategy considerations

    ● Multiple set of independent claims


    ● Broad, medium, narrow
    ● subject to financial considerations

    ● Dependent claims adding relevant limitations

    June 26, 2009


    Claim construction (contd..)
    ● Claim considerations
    ● Overlap with prior art
    ● Circumvention
    ● Directing towards target infringers

    ● Review and iterate

    June 26, 2009


    Protecting multiple facets

    June 26, 2009


    Claim constructions
    ● Apparatus
    ● Active elements
    ● Method
    ● Sequence of actions
    ● System
    ● Set of discrete elements
    ● article/article of manufacture
    ● Passive elements

    June 26, 2009


    Claim constructions
    ● Program product / storage device
    ● Storage device like disk
    ● Means-plus-function
    ● When there are alternate elements
    ● Program encoded on an electrical signal
    ● Program transferred as signals (Internet)
    ● Computer readable medium
    ● Storage media, signals etc.

    June 26, 2009


    Claim interpretation
    and
    other considerations

    June 26, 2009


    Claim interpretation
    ● Claims must be based on matter disclosed in
    specification
    ● Specification must have adequate support for
    each claim

    June 26, 2009


    Clarity of claims
    ● Ambiguous terms
    ● “like”, “close to”, “almost”, “near” etc
    ● Glorification
    ● “.. where said greatly improved device comprises
    of:”
    ● Appropriate punctuation
    ● “A tool for manufacturing a machine comprising: ..”
    ● “A tool for manufacturing a machine, comprising:”

    June 26, 2009


    Clarity of claims
    ● “A tool for manufacturing a machine, said tool
    comprising:”
    ● Essential elements
    ● A claim for improved blades for a fan does not need
    to recite the fan motor as an element
    ● Unity of invention
    ● One application must have claims relating to one
    inventive concept

    June 26, 2009


    Understanding claim structure
    ● Every claim set (set of independent and
    dependent claims) can be thought as a tree
    ● Independent claim will be the trunk
    ● Dependent claim will be a branch
    ● A dependent on a dependent will be a branch on a
    branch and so on...

    June 26, 2009


    Claim differentiation
    ● Every claim is assumed to have a different
    scope
    ● Having dependent claims automatically implies that
    broader scope of protection is sought through
    corresponding independent claim
    ● So it always good to have one or two limitations
    pushed to dependent claims

    June 26, 2009

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