DRAFTING OF PATENT CLAIMS AND NONOBVIOUSNESS IN PATENT

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ABOUT AUTHORS:
Mohit kumar*, Vishal Sachdeva,
Seth G. L. Bihani S. D. College of Technical Education,
Sri Ganganagar (RAJASTHAN) 335001, INDIA
*mohigarg30@gmail.com

ABSTRACT
A well drafted application decides the fate of an invention. Drafting plays a vital role in the success of an invention during its prosecution, management and maintenance during its tenure and turning it into cash. Drafting a patent application is one of the most important and at the same time one of the most difficult process. The applicant or his agent should so draft a patent application that it is granted with an adequate scope or ambit so as to fully serve the business purpose(s) for which the patent is meant to be used. It is here that the importance of drafting the claims in a patent must be fully appreciated, as the drafting of claims must always be done with a clear focus on the exact business needs that are sought to be served by it. That is, a business strategy perspective must inform the thinking of the one who takes up the task of drafting the patent claims. The ultimate purpose of every business strategy is to ensure that a business makes the desired amount of profit to justify the risks taken in making the investments of resources and time. Similarly, the purpose of drafting claims should be to fully serve the business strategy at hand. Even so, only a small number of well drafted patents are actually used by businesses to help them to make or safeguard their profits. (Swarbrick James, 2007).

REFERENCE ID: PHARMATUTOR-ART-1695

INTRODUCTION
There are many types of reasons as to why a patented invention, which is technically feasible is not found to be commercially viable or profitable. Yet, no patent must be sought that has poorly drafted claims, as such a patent may prove to be only a financial burden. So, the primary focus of this article is to make businesses aware of the pitfalls of recklessly filing patents, without devoting attention to drafting of good claims. Countries have different approaches and different legal principles in relation to the interpretation of patent claims. In the case of European countries, a harmonized system for the grant of European patents was instituted under the European Patent Convention (EPC), which came into force in 1977. Historically, however, variations have existed in the courts' approaches in the different EPC countries to claim construction even though there has been a convergence in the approach in the courts of European countries. This article largely exemplifies claim drafting as practiced in the USA, or what is known as US- style patent claim construction in order to create a potentially valuable patent (Jeanne c. Fromer, 2008).

What are patent claims ?
To begin with, the applicant should file the patent application in the prescribed form and manner at the national or regional office in order to get a patent. The format of a patent application differs from one country to another. Basically, however, it follows a fairly standardized list of items, of which, in our present context, the detailed description of the invention and the claims are the most important. The description of the invention should disclose the invention clearly and precisely to enable a person skilled in the art to understand the claimed invention and the technical information contained in it so as to practice the invention without undue experimentation. The application concludes with one or more claims those define particularly and distinctly the invention. Claims define the scope or boundaries of the patent owner’s exclusive rights.

From the view point of patent owners, claims are the heart of a patent. The description may teach how to make and use the invention whereas the claims define the scope of legal protection. For example, the claims demarcate in words the boundary of invention, just like a picket-fence defines the extent of land covered by a deed for a piece of land. Much of what is shown and described in a patent may not be protected by the patent because only the technology covered in the claims is protected. If an applicant or his agent has not properly drafted the claims, then any aspects or elements of the invention which are contained in the detailed description in the patent application, but are not covered by the claims become a part of the prior art, but only when the patent application is published or when the patent is granted. That is, all other would be free to use all that unprotected information without the patent owner’s permission, and the patent owner would not be able to do anything about it.

As a result, most patent agents would like to draft the claims as broadly as possible to cover all aspects of an invention as described in the detailed description of it but also all its equivalents or likely future versions. However, a competent patent examiner in a patent office would not allow inadequately broad claims that cover more than what the inventor actually invented, and would generally like to narrow the claims to the actual invention as described in the detailed description (Robert C. Faber2004).

The claims may be broad or narrow in their scope or breadth.  Normally, broad claims include fewer elements or limitations than narrow claims do, and can be very valuable because they can cover a range of valuable products or situations, but can be more difficult to obtain and to enforce because there may be a broader range of prior art that may block or invalidate them. Narrow claims are generally very specific to one particular element or product. In general, a narrow claim specifies more details than a broader claim.

Such patents are easier to obtain and enforce because there may be less prior art that may block or invalidate them. If a patent claims the exact products and processes of the company, the patent may be less useful as a business tool because it may permit competitors to easily enter the companies’ market with insignificantly modified products and services. Better patents tend to include a significantly large number of claims with a mix of broad and narrow claims (Swarbrick James, 2007).

claims(rules)
The claims of a patent define the property of the inventor. Everything else is merely explanation. Anything which is described but not properly and carefully claimed becomes freely available for public use. Claim drafting is a highly specialized skill, and it is not recommended that inventors try to draft their own claims. However, inventors should understand some basic facts about patent claims, so they can tell whether their attorney is working hard and fighting for their best interests, or taking an easy way out and settling for claims that are too narrow to offer any real protection against infringers.

There are two basic rules:
1. Every “limitation” in a claim must be in-fringed for that claim to be infringed.
2. If any claim in a patent is infringed, then that entire patent is infringed.

The patent owner does not need to show infringement of more than one claim. The first rule acts as a major warning for inventors. In the broadest claims, do not include any limitations that are not absolutely essential. Every limitation in any independent claim should have a clear reason for being in that claim, and the only two reasons for including a limitation in an independent claim are

(1) to define and describe the invention, or
(2) to avoid prior art. For example, suppose invent a machine with seven essential parts (A through G), and an optional part H, which helps it work better. Your broadest claim (which will be an independent claim that stands alone and does not refer to any other claim) should specify only parts A through G. It will also need to specify the relationship between those parts; it must describe how the machine is constructed and/or how it functions; you cannot claim a machine merely by listing its parts. After you have listed essential parts A through G in an independent claim, part H should be specified in a dependent claim, which will be written in a form such as, “The machine of Claim 1, which also contains part H.” Why is it done this way? Well, if your broadest claim lists all eight components (A through H), then competitors can “avoid” that claim (they can make, use, and sell that invention without paying royalties) by getting rid of part H, or replacing it with some other item. After the patent attorney has drafted the claims, study every word carefully. See if any words can be taken out while still distinguishing your invention from the prior art. And, because of rule 2, try to draft several independent claims from several different angles, using different phrases. One of those claims might cover it in a way that other claims missed. While you’re working with a patent attorney, don’t be afraid to question, challenge, and probe. It’s your child, and you’re paying the bills. A good attorney won’t get upset, any more than you should get upset at him if he challenges you to back up your assertions. In a good relationship, each side works hard while challenging the other side to do the same. If an attorney can’t or won’t clearly explain why he did something, or why he used a certain phrase in a claim, that’s a danger sign. Patents aren’t really scientific documents; they’re legal and business documents, and the essence of both law and business is conflict and competition. Patent examiners get paid to challenge your application and find any flaws. And if your patent becomes valuable, people who want to infringe or ignore it will try even harder to find any flaws in it. It’s best to find those flaws before an application is filed, even if it means a bit of a struggle.

Defination of claims
Claims are the essence of a patent. The claims define the invention which the inventor holds as his exclusive property and has the right to exclude others from making, using and selling. The claims specify the scope of ownership in a piece of property, i.e. Intellectual Property. These claims are of paramount importance in both patent prosecution in the Patent Office and patent litigation in the courts. Therefore, during claim drafting the choice of words used in the patent claims should be dealt in a great understanding and thought(patentwire.co.in).

points considered while drafting patent claims:
*  Each claim should be a single sentence and should be clearly worded.
*  Each claim should be precise and without unnecessary repetition.
*  Rights are given to claims only, not for any matter described in the complete specification.
*  Claims define the boundaries of legal protection and form a protective fence around the invention.
*  Each claim is evaluated on its own merit and, therefore, if one of the claims is objected, it does not mean that the rest of the claims are invalid.

Tips on Drafting Claims
Figure out the all essential features or elements of your invention that you want to claim rights to.
*  Start with broadest claims of your invention and then progress to narrower claims.
*  Start claims on a new page and number each claim using Arabic numbers starting with 1
*  Precede your claims with a short statement such as “I/We claim: …”

-  Each claim should consist of an introduction, linking word, and body.
- The first claim would be the Independent claim and subsequent claim would be dependent claims. And, these claims should be linked so as to form a single inventive concept.
-  There is no restriction to the number of claims to be incorporated in the specification. But the applicanthas to pay additional fee, if there are more than ten claims.
-  Claims must be supported by the description and should be based on the description. This means that all the characteristics of the invention that form the part of the claims must be fully explained in the description.

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