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Introduction to claim drafting by Caezar Angelito E. Arceo

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Training cum Write-Shop on Technology Disclosures and Claim Drafting, Organized by the Philippine Council for Agriculture and Forestry Research and Development Council (PCARRD) for selected NARRDN Researchers, BPK, PCARRD, Los Baños, Laguna, 30-31 August 2007

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Introduction to claim drafting by Caezar Angelito E. Arceo

  1. 1. Introduction to Claim DraftingCaezar Angelito E. ArceoRegistered Philippine Patent AgentExecutive Assistant IIIto the Deputy Executive Director for AdministrationPhilippine Rice Research InstituteScience City of Muñoz, 3119 Nueva Ecija+63-918-518-5555cae_arceo@yahoo.comTraining cum Write-Shop on TechnologyDisclosures and Claim DraftingOrganized by the Philippine Council for Agriculture and Forestry Researchand Development Council (PCARRD) for selected NARRDN ResearchersBPK, PCARRD, Los Baños, Laguna30-31 August 2007
  2. 2. Disclaimer from this presentor: Claim drafting is the heart and soul of any patent application. This domain may bring priceless streams of lucks to the inventor, or his immediate demise in a market arena. Since it entails sweats and perseverance to appreciate this art, nothing in this presentation will guarantee the fool-proof imbibition of all knowledge and skills necessary to effect a good patent application. After all, claim drafting is only the first base of patent application.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  3. 3. “There is no reason anyone would want a computer in their home.” - Ken Olsen (1977) Founding Chair, Digital Equipment CorporationCAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  4. 4. Question No. 1 Why claim?CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  5. 5. Question No. 1: Why claim? bk2bsics… Inventions = Technical solution to a problem Inventions = Patents Patents = Agreement between the inventor and the government in exchange of a limited exclusivity Limited exclusivity = 20 years Therefore: Therefore: Inventions ==20 years protection Inventions 20 years protection Infringers ==20 years to study disclosures claimed Infringers 20 years to study disclosures claimed Corollary, we further conclude: Corollary, we further conclude: Unclaimed features/poor claim(s) ==entry point(s) of infringers Unclaimed features/poor claim(s) entry point(s) of infringersCAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  6. 6. Question No. 1: Why claim? 1. Claims = legal boundaries of the invention.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  7. 7. Question No. 1: Why claim? 2. Claims identify inventions from prior arts. Cheng, 2006 Crow, 1924 Hubeny & Frahm, 1924 Griffiths, 1927 Sharpe, 2006 Santos, 2004 Hammer, 1957 THE PAPER CLIP FAMILY Lorber, 1972CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007 Froehlich and Froehlich, 1994 Botsford, 1973 Cabili, 1996
  8. 8. Question No. 1: Why claim? 3. Claims target multiple audiences. Inventor’s wish Patent Examiner Trial court Patent Agent $$$$ PATENT CLAIMS Infringers “Future” Market CompetitorsCAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures and Copyright © 2007 by Caezar AE. ArceoClaim Drafting, 30-31 August 2007
  9. 9. Question No. 1: Why claim? 4. The law requires such. PART 4 THE PATENT APPLICATION Rule 400. The Patent Application. - An application for a patent shall be in Filipino or English and shall be filed in writing either directly to the Bureau or by post and must be addressed to the Director. The application shall contain the following: (a) A request for the grant of a patent; (b) A description of the invention; (c) Drawing(s) necessary for the understanding of the invention; (d) One or more claims; and (e) An abstract.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  10. 10. Question No. 2What could be claimed?
  11. 11. Question No. 2: What could be claimed? 1. Depends on the prevailing patent laws. Patentable subject matter in the Philippines:  Useful machine  Product  Process  Microorganism  Non-biological and microbiological processes Sec. 21, IP CodeCAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  12. 12. Question No. 2: What could be claimed? 1. Depends on the prevailing patent laws. Non-patentable subject matter in the Philippines: (a) Discoveries, scientific theories and mathematical method; (b) Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; (c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and compositions for use in any of these methods; (d) Plant varieties or animal breeds or essentially biological process for the production of plants or animals; (e) Aesthetic creations; and (f) Anything which is contrary to public order or morality.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007 Sec. 22, IP Code
  13. 13. Question No. 2: What could be claimed? 2. Depends on the claiming system. Central claiming system.  Claims identify the “center” of the patented invention.  Depends on the inventor’s actual contribution to the art in the concerned technology. Peripheral claiming system.  Claims identify the exact periphery of the patented invention.  Depends on the patent agent’s drafting skills.  Only the requested protection as requested by the applicant is granted, nothing more.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  14. 14. Question No. 2: What could be claimed? 3. Depends on the patent claims…or agents. US6842914CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures and US1906870Claim Drafting, 30-31 August 2007 US6796467
  15. 15. Question No. 3How to draft claims?
  16. 16. Question No. 3: How to draft claims? 1. Understand the parts of a claim. Preamble  Introductory phrase.  Identifies the category of the invention protected by the claim. Transitional phrase  Characterizes the elements that follow.  Common phrases: “consisting of…”, “comprising…”, “characterized in that…”, “containing…”, “involving…”, and so on. Body  Recites the elements and limitations of the claims.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  17. 17. Question No. 3: How to draft claims? 1. Understand the parts of a claim. I claim: Preamble 1. An apparatus, consisting of: Transitional phrase a pencil; an eraser attached to the pencil; and a light attached to the pencil. BodyCAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  18. 18. Question No. 3: How to draft claims? 2. Follow preferred claim sets. Independent claims.  Stand on their own.  Present the basic design of the invention. Dependent claims.  Express particular embodiments.  Provide fall-back positions.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  19. 19. Question No. 3: How to draft claims? 2. Follow preferred claim sets. I claim: 1. An apparatus comprising: a pencil; an eraser attached to the pencil; Independent claim and a clip; characterized in that a light is attached to the pencil. 2. The apparatus according to claim 1, characterized in that the light Dependent claim no. 1 emitted is colored pink. 3. The apparatus according to claim 2, characterized in that the light Dependent claim no. 2 further emits polka-dotted red.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  20. 20. Question No. 3: How to draft claims? 3. Use appropriate claim structures. Jepson claim structure  Also known as “two-part claim.” “1. A pencil having an eraser, wherein the improvement comprises a light attached to the pencil.”CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  21. 21. Question No. 3: How to draft claims? 3. Use appropriate claim structures. Markush claim structure  Mainly used in chemistry to claim multiple “functionally equivalent” chemical entities allowed in one or more parts of the compound. “1. A composition selected from the group consisting of A, B, and C…”CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  22. 22. Question No. 3: How to draft claims? 3. Use appropriate claim structures. Means-plus-function claim structure  Recites elements that do not have specifically defined structures, but instead recites functions performed by structures disclosed in the specifications. “1. A device for cooking rice, comprising: a means for holding rice, and a heater configured to heat the rice-holding means.”CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  23. 23. Question No. 3: How to draft claims? 3. Use appropriate claim structures. Product-by-process claim structure  A product claim where the product is defined by its process of manufacture, especially in the chemical and pharmaceutical industries. “1. Product obtained by the process comprising the steps of...”CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  24. 24. Question No. 3: How to draft claims? 3. Use appropriate claim structures. Omnibus claim structure  Claiming the invention according to the description or the drawings without stating explicitly any technical features of the product or process claimed. “1. A table as shown in Figure 1.” Figure 1CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  25. 25. Question No. 3: How to draft claims? 4. Draft claims appropriately. “1. An apparatus for chemically disintegrating the carbohydrates and other nutritionally useful compositions from agricultural crops belonging to Family Graminae through heat application to obtain palatably physical properties…” vs… “1. An apparatus for cooking rice…” “1. An apparatus for cooking grains…” “1. An apparatus for cooking…”CAE Arceo: Introduction to Claim Drafting …and…Training cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007 5. Hit the nail in the head!
  26. 26. Question No. 4 Are we ready for a practice?CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  27. 27. Question No. 4: Are we ready for a practice? Practice No. 1: A Table. Prior art Disclosure Figure 2 Figure 1CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  28. 28. Question No. 4: Are we ready for a practice? Practice No. 1: A Table. Ideal answer: 1. A device for holding items, comprising: a top that is parallel to the ground, and a single leg that supports the top. 2. The device according to claim 1, characterized in that the end of the top is provided by a closed plane curve.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  29. 29. Question No. 4: Are we ready for a practice? Practice No. 2: A Table, still. Prior art Disclosure Figure 1 Figure 3CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  30. 30. Question No. 4: Are we ready for a practice? Practice No. 2: A Table, still. Ideal answer: 1. A device for holding items, comprising: a plurality of legs; and a top configured to support the plurality of legs; characterized in that a hole is provided in the top. 2. The device according to claim 1, characterized in that the top has ridges in its surface. 3. The device according to claim 1, characterized in that the plurality of legs is provided with wheels.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  31. 31. Question No. 4: Are we ready for a practice? Practice No. 3: Book guide/review tool. Prior art Disclosure Figure 4 Figure 5CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  32. 32. Question No. 4: Are we ready for a practice? Practice No. 3: Book guide/review tool. Actual answer: 1. A device for holding books open, the same formed of a single wire and comprising front and rear members of approximately U form and having their cross and side bars longitudinally curved, the rear cross-bar being outwardly deflected intermediate of its ends, spring - coils connecting side bars, and a tie having its end portions passed through the springs – coils and looped Primeau and Casad, 1905; therearound, substantially as set forth. US Patent No. 795048.CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  33. 33. Question No. 5 What are your questions?CAE Arceo: Introduction to Claim DraftingTraining cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007
  34. 34. “If you don’t, others will.” Copyright © 2007 By Caezar AE. Arceo All Rights Reserved View credits
  35. 35. Acknowledgment: 1. Ms. Corazon Magboo, PCARRD 2. World Intellectual Property Office 3. Dr. Karl Rackette, European Patent Office 4. Atty. Douglas Weinstein, Finnegan & Finnegan 5. Atty. Thomas Ewing, Licensed US Patent Attorney 6. Atty. Ronilo A. Beronio, PhilRice 7. Abegail V. Tirante, PhilRice 8. Ms. Recille T. Galvez, PhilRice 9. Mr. Jerry C. Serapion, PhilRice “If you don’t, others will” punch line by Jerry C. Serapion. Backgrounds, photos, and slide designs by CAE Arceo. Online information resources: 1. www.espacenet.com 2. www.ipophil.gov.ph 3. www.uspto.gov 4. www.philrice.gov.ph 5. www.patentlysilly.com Please cite this author-presentor if any part of thisCAE Arceo: Introduction to Claim Drafting presentation will be used.Training cum Write-shop on Technology Disclosures andClaim Drafting, 30-31 August 2007 Copyright © 2007 by Caezar AE. Arceo All Rights Reserved.

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