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

53
Claim drafting and analysis Arun K Narasani Founder, ipMetrix [email protected]

description

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

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

Page 1: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

Claim drafting and analysis

Arun K NarasaniFounder, ipMetrix

[email protected]

Page 2: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 2

Agenda

● Basics of claims● Claim structure● Claim types

● Drafting● Preparation● Claim construction

● Protecting multiple facets● Other considerations● Caselet

Page 3: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 3

Claim Basics

Page 4: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 4

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

Page 5: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 5

Examples

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

Page 6: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 6

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

Page 7: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 7

Statutory classes

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

● India: product or process

Page 8: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 8

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

Page 9: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 9

Ordering

● Claims are presented in a logical order and numbered consecutively

● Logical grouping of claims is allowed (using a line, for example)

Page 10: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 10

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.>

Page 11: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 11

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

Page 12: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 12

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

Page 13: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 13

Transition phrase (contd..)

● Other uncommon transition phrases● “including”, “having”, “containing” and “wherein”

– Really not used anymore in the electronics/software domain

Page 14: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 14

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

Page 15: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 15

Body (contd..)

● Double inclusion of elements without separate structures may be rendered indefinite

● Single element performing multiple functions may be claimed using function language

Page 16: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 16

Claim types – subject matter

● Method claims● As one or more steps

● Apparatus claims● With active components

● Article claims● With non active components

Page 17: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 17

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”

Page 18: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 18

Claim types – scope

● Functional● Method: step-plus-function● Apparatus: means-plus-function

Page 19: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 19

Example

z-2

+

1/3x(n) y(n)

Moving Average Filter

z-1

Page 20: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 20

Example

● Apparatus claim

● A moving average filter comprising:– a first delay unit;– a second delay unit;– an adder to add signal; and– a multiplier.

Page 21: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 21

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.

Page 22: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 22

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.

Page 23: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 23

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.

Page 24: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 24

Example

z-1

z-1

+1/3x(n) y(n)

Moving Average Filter

+

Page 25: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 25

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.

Page 26: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 26

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.

Page 27: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 27

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.

Page 28: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 28

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.

Page 29: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 29

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.

Page 30: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 30

Drafting

Page 31: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 31

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

Page 32: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 32

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

Page 33: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 33

Claim construction (contd..)

● Claim considerations● Overlap with prior art● Circumvention● Directing towards target infringers

● Review and iterate

Page 34: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 34

Protecting multiple facets

Page 35: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 35

Claim constructions

● Apparatus● Active elements

● Method● Sequence of actions

● System● Set of discrete elements

● article/article of manufacture● Passive elements

Page 36: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 36

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.

Page 37: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 37

Claim interpretation and

other considerations

Page 38: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 38

Claim interpretation

● Claims must be based on matter disclosed in specification

● Specification must have adequate support for each claim

Page 39: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 39

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:”

Page 40: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 40

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

Page 41: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 41

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...

Page 42: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 42

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

Page 43: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 43

Caselet

Page 44: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 44

Caselet

● providing services using SMS communication● providing targeted advertisements

Page 45: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 45

Caselet – core concepts

● generating user context from user interactions● method of rendering services on a terminal from

using SMS communication

Page 46: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 46

Caselet – claims

● A system for providing services using SMS communication comprising:● a terminal with at least an application and at least a

middleware to present services using information obtained through SMS;

● a server to provide SMS responses to SMS requests from said terminal;

● an SMS gateway to marshal and unmarshal information between said terminal and said server;

● an SMS communication link between said terminal, said SMS gateway and said server.

Page 47: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 47

Caselet – claims

● A method for providing services using SMS communication, the method comprising:

● providing at least an application and at least a middleware in a terminal;

● said application rendering available initial services on said terminal;

● user requesting a service;● said middleware sending request to a server in SMS;● said server receiving SMS request and providing response

to said SMS request in SMS; and● said application rendering response on said terminal.

Page 48: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 48

● Method of rendering services on a terminal using SMS communication comprising:● receiving an SMS message with data to render

services, said message comprising a plurality of data fields;

● reading menu data fields to construct menu items;● reading service action data fields to map menu items

with service action to be performed; and● rendering a frame with a menu bar with said menu

items.

Page 49: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 49

Caselet – claims

● Method of rendering services on a terminal using SMS communication comprising:● receiving at least one SMS message with data to

render services, said message comprising a plurality of data fields;

● reading menu data fields to construct menu items;● reading service action data fields to map menu

items with service action to be performed; and● rendering a frame with a menu bar with said menu

items.

Page 50: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 50

Caselet – claims

● Method as in claim x, where a service action data is a short code.

● Method as in claim x, where a service action data is a search string.

Page 51: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 51

Caselet – claims

● A program storage device embodied in a computer readable medium comprising instructions when executing resulting in a method of rendering services on a terminal using SMS communication comprising:

● receiving at least one SMS message with data to render services, said message comprising a plurality of data fields;

● reading menu data fields to construct menu items;● reading service action data fields to map menu items with

service action to be performed; and● rendering a frame with a menu bar with said menu items.

Page 52: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 52

Caselet – claims

● A terminal to render services using SMS communication comprising:● a receiving means to receive at least one SMS

message with data to render services, said message comprising a plurality of data fields;

● a reading means to read menu data fields to construct menu items;

● a reading to read service action data fields to map menu items with service action to be performed; and

● A rendering means to render a frame with a menu bar with said menu items.

Page 53: Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

ipMetrix 53

Questions?

Contact:

Arun NarasaniFounder, ipMetrix

[email protected]