Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani
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Transcript of Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani
Claim drafting and analysis
Arun K NarasaniFounder, ipMetrix
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Agenda
● Basics of claims● Claim structure● Claim types
● Drafting● Preparation● Claim construction
● Protecting multiple facets● Other considerations● Caselet
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Claim Basics
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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
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Examples
● “A method as illustrated and described”● “An apparatus as described in figures 1-10”
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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
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Statutory classes
● US: process, machine, (article of) manufacture, or composition of matter, or any new and useful improvement thereof
● India: product or process
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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
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Ordering
● Claims are presented in a logical order and numbered consecutively
● Logical grouping of claims is allowed (using a line, for example)
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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.>
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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
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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
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Transition phrase (contd..)
● Other uncommon transition phrases● “including”, “having”, “containing” and “wherein”
– Really not used anymore in the electronics/software domain
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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
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Body (contd..)
● Double inclusion of elements without separate structures may be rendered indefinite
● Single element performing multiple functions may be claimed using function language
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Claim types – subject matter
● Method claims● As one or more steps
● Apparatus claims● With active components
● Article claims● With non active components
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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”
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Claim types – scope
● Functional● Method: step-plus-function● Apparatus: means-plus-function
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Example
z-2
+
1/3x(n) y(n)
Moving Average Filter
z-1
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Example
● Apparatus claim
● A moving average filter comprising:– a first delay unit;– a second delay unit;– an adder to add signal; and– a multiplier.
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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.
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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.
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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.
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Example
z-1
z-1
+1/3x(n) y(n)
Moving Average Filter
+
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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.
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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.
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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.
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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.
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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.
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Drafting
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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
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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
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Claim construction (contd..)
● Claim considerations● Overlap with prior art● Circumvention● Directing towards target infringers
● Review and iterate
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Protecting multiple facets
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Claim constructions
● Apparatus● Active elements
● Method● Sequence of actions
● System● Set of discrete elements
● article/article of manufacture● Passive elements
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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.
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Claim interpretation and
other considerations
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Claim interpretation
● Claims must be based on matter disclosed in specification
● Specification must have adequate support for each claim
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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:”
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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
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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...
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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
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Caselet
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Caselet
● providing services using SMS communication● providing targeted advertisements
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Caselet – core concepts
● generating user context from user interactions● method of rendering services on a terminal from
using SMS communication
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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.
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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.
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● 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.
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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.
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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.
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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.
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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.
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Questions?
Contact:
Arun NarasaniFounder, ipMetrix