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

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> ●

●

“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”) ●

●

An element not introduced by an indefinite article is not allowed ●

●

Further references to the same element may use a definite article (e.g. “the”)

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 ●

●

Apparatus claims ●

●

As one or more steps 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

z-2

Moving Average Filter

June 26, 2009

1/3

+

x(n)

y(n)

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

z-1

+ z-1

Moving Average Filter

June 26, 2009

1/3

+

x(n)

y(n)

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 ●

●

Method ●

●

Sequence of actions

System ●

●

Active elements

Set of discrete elements

article/article of manufacture ●

Passive elements

June 26, 2009

Claim constructions ●

Program product / storage device ●

●

Means-plus-function ●

●

When there are alternate elements

Program encoded on an electrical signal ●

●

Storage device like disk

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 ●

●

Glorification ●

●

“like”, “close to”, “almost”, “near” etc “.. 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 ●

●

Essential elements ●

●

“A tool for manufacturing a machine, said tool comprising:” 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