Esther Arias Pérez-Ilzarbe
Oficina Española de Patentes y
of the mind
What is a Patent?
•!Patent gives its owner certain limited-term rights to
exclude others from making, using or selling an
invention in a country
•!In return for these rights, the patent must describe
how to construct the invention and how to use it, and
define in a set of valid claims the scope of protection
•!A patent may not allow to practice the invention
defined therein: NO GUARANTEE of Freedom to
Operate (ex. health regulations; cross patents)
•!Once the patent rights run out, everyone can use
the information to invent further and so more
knowledge becomes available to society
What can be the subject of a
1.! Mechanical Devices and Articles of Manufacture:
2.! Process/Methods: “new apparatus for filtering and
purifying plant extracts” as well “his filtration method”
3.! Chemical compositions or compounds: “Tamiflu”
4.! Isolated and Characterized Molecules
5.! Genetic organisms/Gene sequences
6.! Computer programs?- USA, and EP with some conditions
7.! Improvements on prior inventions: “improved brush to
clean the floor”
Patent = Disclosure
A typical patent application includes the
–!Object of invention
–!Statement of invention
–!Summary of invention
–!Brief description of drawings
–!Detailed description of the invention
PATENT APPLICATIONS ARE SIMILAR AROUND THE
WORLD ALTHOUGH LAWS DEFINE DIFFERENT RULES
HOW CAN BE APPLY FOR
IT IS DIFFICULT
TO FIND A
BUT YOU HAVE
TO TRY IT !
Requirements on Patentability
•! Inventive Step
•! Industrial Applicability
Novelty: Legal basis
An invention is new when it is
not part of the state of the art
Everything made available to the public anywhere in
the world prior to the relevant date
2002 2003 2004 2005 2006 2007 2008
What is the state of the
Examining Novelty: the
•! The invention as claimed is examined on
novelty, rather than the embodiments
•! An Application is not new when the state of
the art has all the features of the application
and is suitable for solving the same
problem as the Application
VIAGRA AS HAIR RESTORER IS NEW
ALTHOUGH THE COMPOUND ITSELF IS
Novelty Flow Diagram
Disclosure available before no
The filing/priority date novel
(if any) of the application?*
(*) it is assumed
yes that the priority
is validly claimed
Identify the technical
Features of the claim
Identify technical features
In a disclosure that are Identical ?
Common to the claim
yes Not novel
A device for watering plants
having a water containing portion
(1), a handle (2), an opening with
a lid (3) and a spout (4)*.
* A spout is a projecting pipe or tube, e.g. in a
Inventive Step ...
Suppose we had only the Novelty
requirement for Patentability ...
Other Inventions ?
Are minor, merely novel
improvements to known
devices worthy of
Inventive Step ...
•! Historical Introduction
–! … something more…
•! Non-Obviousness (DE, US, UK)
•! Reasons to establish this requirement
–! ...it must be a good reason to grant a monopoly.
–! ...discourage speculators.
–! ... minimize misgivings by limiting patents to free
Article 33(3) P.C.T.
... a claimed invention shall be considered to
involve an inventive step if, having regard to
the prior art as defined in the Regulations, it is
not, at the prescribed relevant date, obvious
to a person skilled in the art
•! The question is, which inventions are
obvious having regard to the state of
•! This is a quite subjective question, isn’t
•! Using the Problem/Solution approach
makes the decision process as
objective as possible
•! Identify the closest prior art: eliminate irrelevant
•! Formulate the problem to be solved
•! Prevent the use of hindsight
•! Is the solution obvious to the skilled person,
starting from the closest prior art?
•! But It does not automatically give you the right
Q1. Closest prior art?
Q2. Difference with (claimed) invention (in terms of technical
Q3. Technical effect (if any)?
Q4. (Objective) technical problem?
Q5. Solution = Difference?
Q6. Would the person skilled in the art:
–! recognize and solve the problem, on the basis of the
totality of the prior art, and without employing inventive
US METHOD FOR INVENTIVE STEP EVALUATION
Test TSM : TEACHING, SUGGESTION, MOTIVATION
BUT AFTER 2007 (KSR DECISION): more flexible application of the TSM
At the USPTO: Graham v John Deere (1966)
“..to a person having ordinary skill in the art”
•! State of the Art determination ( Analogous Prior
•! Differences between prior art and claims
•! Resolving the level of ordinary skill in the
•! Secondary considerations
EVIDENCE: The prior art must suggest or motivate the
desirability of the claimed invention and within a reasonable
expectation of success.
BOTH MUST BE FOUND IN THE PRIOR ART NOT ON
INVENTIVE STEP EXAMPLE
1.- PEPPER AND SALT
PEPPER AND SALT
1.- Cutlery item constituted by a hollow handle (1), for receiving spices, with
a rear part lid (2) with outlet-openings (3) where it is installed a cover
element (4) that prevents escape of the spices during non-use.
2.- Cutlery item according to claim 1, characterized in that the cover element
(4) is provided with protrusions (5) which penetrate into the openings (3) in
a closed position.
Closest Prior Art: D1
The closest element of
the prior art has a hinged
lid that covers the holes
(movement in horizontal
Examined Application D1
1.- In view of document D1:
Do the claims 1 and 2 have Novelty
and Inventive Step?
2.- What technical feature would be
necessary to combine and object
Another document D2 arises
Pepper container with a cover
comprising protrusions to penetrate
into the openings of the lid to
3.- Facing document D2, is claim 2 Inventive?
"! Claim 1 is not new:
it comes directly and unambiguously from
"! Claim 2 lacks inventive step:
it will be obvious for a person skilled in the art to
combine the locking means disclosed at
documents D1 and D2.
Drafting a patent is one of the steps of a
commercial strategy, but sometimes
patents applications are a strategy to close
Grant and publication of the patent
Prosecution of the patent application
Drafting and filing of a patent application
Crystallizing the idea behind the invention
Finding a solution for a technical problem
For drafting patent applications it is
•! To understand the invention
•! Find the “gist” of the invention (essence)
•! Find the right embodiments
•! Find the right words, terminology and
sentences to describe the invention
•! Have imagination: how competitors could
avoid the claimed invention but still take
advantage of its teachings (foreseeing
One way road
•! You cannot broaden the disclosure and the claims
after the application that was filed
•! You do not get a second chance except for simple
clarifications and for narrowing the claims when
further prior art is taken into account
•! You cannot get protection for what is not described
•! You cannot broaden the claims of a granted patent
The 10 steps involved in patent drafting
1 Spotting the invention
2 Generalizing the invention
3 Drawing one or more figures showing the invention
4 Arranging the figures of the drawing in a sequence
5 Deciding on the terminology to describe the invention
6 Drafting the claims
7 Drafting the detailed description (reference numerals)
8 Inserting the reference numerals in the claims
9 Writing the introductory part of the description
10 Writing the abstract using the reference numerals
Step 1: Spotting the invention
•! Identify what that invention is about.
•! If there is a novel invention
•! What are the differences between the closest prior art and the
invention that can spot?
(or catch, detect, determine, discern, discover, distinguish, find,
isolate, identify, notice, make out, locate, perceive, pick
out,recognize, single out etc.)
•! Which specific difference has the technical effect that seems to
be the most important one?
(most significant, most substantial or most unexpected one)?
•! Identify the new feature(s) or combination of features which provide
the “trick” of the invention (inventive step requirement): what
problem did the invention solve
•!1 s t C l a i m
•!35 claims more
OEPM Written opinion.-search report of WO2007112987
Written opinion.-search report of WO2007112987
OEPM Written opinion.-search report of WO2007112987
US3899803- cited in the search report of WO2007112987
Step 2: Generalizing the embodiment
of the invention
•! Once we have spotted the specific feature or
combination of features important for the invention we
are still not quite ready to draft our main claim.
•! We need to generalize the important feature(s) and
crystallize what we think the general idea underlying
the invention is.
•! This can be done once a narrow main claim has been
drafted and is reviewed (several times).
•! It is important to generalize the concept of the invention
by concentrating on the essential features,by using
broad technical concepts, broad language and by
avoiding unnecessary limitations.
Steps 3 and 4: Drawings
•!Drawings are required when they are necessary for
the understanding of the invention.
•!To make patent drafting easier, it is good to have a
sensibly ordered set of drawings which move from a
broad overview, via intermediate drawings to those that
show the details of the invention.
•!Flow sheets and diagrams are considered
Step 5: Deciding on the terminology to
describe the invention
•!When writing the description it can be helpful to have a set
of drawings to hand which you have labeled with the
names of the parts shown in the drawings.
•! Write down next to each element shown in each of the
figures show these elements are called by the specialist
and how they could be named in broad terms
(e.g. instead of copper wire it might be electrical conductor)
•! Use dictionaries and/or published patent documents
downloaded from the internet
•!Be carefull using words containing absolutes of any
sort: if a patent application uses words like “must” or
“always”, these words express a very precise and accurate
situation in case of litigation
Step 6: The Claims
The claim or claims shall define the matter for which
protection is sought (searched).
Claims shall be clear and concise.
They shall be fully supported by the description.
A series of numbered statements in a patent
specification, usually following the description, that
define the invention and establish the scope of the
monopoly conferred by the patent.
Each claim consists of one sentence starting with a
capital letter and ending with a full stop
The drafting dilemma
•! Claiming too broadly (covering prior art):
–! No Protection at all since the claim is not “new”
•! Claiming too narrow (terminology, features):
–! Competitor can use the invention
•! Claiming just right:
–! This is an art and requires lots of imagination.
–! Each claim should be a single sentence and should
be clearly worded (drafted, written)
–! Each claim should be precise and without
Specific vs General
•! Description of a specific compound
destroy novelty of a general claim that
include the specific compoun
Document describing a copper cable
Claim: metal cable
General vs Specific
•! A general description claim doesn’t
destroy novelty of a specific compound
Document describing a “metal cable”, and in
all the embodiments the metal is copper
NOT DESTROY NOVELTY
Claim: aluminium cable
The drafting dilemma
•! Rights are given to claims only, not for any matter described in
the complete specification. On the other hand claiming what is not
supported by the description must be avoided
•! Claims define the boundaries of legal protection and form a
protective fence around invention
•! Each claim is evaluated on its own merit and, therefore, if one of
the claims is objected, it does mean that the rest of the
claims are invalid: dependent claims often cover advantageous
ways to realize the invention. They can be used as fallback
positions in case the independent claim is rejected or cancelled
by a court
Types of claims
BASIC STRUCTURE OF CLAIMS
A PATENT CLAIM IS COMPOSED OF THREE PARTS:
1.! PREAMBLE/INTRODUCTORY PHRASE/PRIOR ART
2.! MAIN BODY OF THE CLAIM OR INVENTIVE PART OF THE
3.! THE LINKING WORD THAT JOINS THE TWO
CLAIM FORMAT …
•!Claim shall define the invention in terms of technical
•!Definitions in terms of non-technical features are
-!Statements of origin
Example: “A new and inexpensive instrument for
executives with an urge to write” .
Could be a pen or pencil?
CLAIM FORMAT …
COMPRISING – CONSISTING OF
• “Comprising” is equivalent to “open” definition
A geometrical device comprising three sides
connected together at equal angles
(Covers primarily an isoscelese triangle but also
inlcudes various poligons)
• “Consisting of” is equivalent to “closed” or “exactly”
A geometrical device consisting of three sides
connected together at equal angles of 60º
(limited to an isoscelese triangle)
CLAIM FORMAT …
TRANSITION WORDS –
Substantially as described
Use of…for the treatmente of condition…
• “Characterized in that" or "characterized by”
This format is used in EP patents, but not in USA
• “Substancially as described”
Omnibus Patent. Format not allowed in USA patents.
-"Use of substance X in the manufacture of a
medicament for the treatment of condition Y”
Types of claims
•!Independent Claim: The claim which covers all the significant
characteristics of the invention. Generally, the first claim is Independent
Claim which reflects the whole picture of the invention.
•!Dependent Claim: The claim which depends on a claim or several
claims is called dependent claim. Generally, the subsequent claims of an
Independent claim are Dependent Claim.
•!Omnibus Claim: It is usually used in order to ensure that nothing
that has been mentioned in the description and drawings has been left out
of the claims. The words such as "substantially as described" or
"substantially as described with reference to the drawings" or
"substantially as described herein" are commonly used to claim as
"Apparatus as described in the description" or "An
x as shown in Figure y".
NOT ALL THE COUNTRIES ALLOWED OMNIBUS CLAIMS
Types of claims
•!Jepson Claim: A Jepson claim admits that the invention is an
improvement on a previous invention. The claim must be written in a
specific order. First, give a general description of the known elements or
steps of the existing invention. Second, state “wherein the improvement
comprises” or something similar like “wherein the combination with”. And
third, list the elements or steps that are new or improved over the previous
A system for storing information having (...) wherein
the improvement comprises…
In USA they are rarely used, since they introduce a potencial risk.
Everything before the separating phrase is assumed to be known, whether
that is in fact true or not
•!Swiss Claim:. Swiss-type claim or "Swiss type of use claim" is a claim
intended to cover the first, second or subsequent medical use (or
indication) of a known substance or composition.
Use of substance X in the manufacture of a
medicament for the treatment of condition Y…
Step 7: Purpose of the description.
•! To disclose and teach the invention;
•! To support the claims;
•! To provide the basis for interpretation of the
•! To provide a context within which to view the claims;
•! To provide basis for future amendment of the
claims (during prosecution or litigation).
Shall disclose the invention in a manner sufficiently
clear and complete for the invention to be carried out
by a person skilled in the art.
Describe in detail at least one way of carrying out the
This shall be done using examples where appropriate
and with reference to the drawings, if any
Bearing in mind that the application, when published,
will be prior art against new inventions, it is important to
avoid including examples which unnecessarily
disclosure details of potentially new developments
•! Describe the invention in its context. Start with the big
picture and work into the detail of the invention.
•! Do not throw the reader right into the heart of the
invention: lead the reader progressively along a logical
path with no sudden changes of direction.
•! Avoid criticisms of prior art, just compare technical
•! When the way in which an invention is capable of
explotation in industry is not obvious from the
description or the nature of the invention, the
description should end by an explicit indication
Step 8: Inserting the reference numerals
in the claims
•! When the detailed description is finished
it takes only a little time to insert the
reference signs or reference numerals
into the claims drafted earlier.
•! The parts list made during the drafting of
the description can help to avoid errors or
Step 9: Introductory part of the
•! The description shall first state the title of the invention
•! Specify the technical field to which the invention
•! Indicate the background art which, as far as known to
theapplicant, can be regarded as useful for the
understanding,searching and examination of the
invention, and, preferably,cite the documents reflecting
Step 10: The abstract
•! Intended to help searchers know what the
patent is about.
•! 150 words maximum.
•! Often based on the main claim, but this is not always
•! Unlike the other parts of an application, does
not contribute to the disclosure of the invention.
•! But an abstract is “prior art” for future applications
Following Step 10: Review
•!When you have finished your specification
(complete description, claims,
drawings,abstract) review it, particularly with
reference to the language of the claims.
•!Are all the features mentioned in the claims
also present in the description?
•!Have you explained how the embodiments or
elements of the invention interact or can be
Differences between US and
1. Entitlement to own and file.
2. What is patentable.
4. Best Mode.
5. Inventive step vs obviousness.
6. Treatment of amendments.
7. Claim structure.
8. Unity of invention.
9. Continuation and divisional application.
10. Information and inequitable contact.
11. Examination experience.
Entitlement to own and file
•! Ownership of patent in USA goes to first to invent, in Europe to
the first inventor or successor to [e.g. employer, assignee …]
•! In USPTO normal application has to be filed by inventor or
someone acting for and on behalf of inventor so get ownership
Filing in the wrong name with deceptive intent can lose
application – can result in jail sentence
•! EP patent application can be filed by anyone, but have to show
entitlement (authoritation/right) during the prosecution of the
Note – for applications going through PCT route there is no requirement to show
entitlement during European phase
Correction of inventorship possible without loss of patent
USA What is patentable
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title. [35 U.S.C. 101]
A broad statement, but subject to much case law to determine what is covered.
European patents shall be granted for any inventions, in all fields of
technology, provided that they are new, involve an inventive step and are
susceptible of industrial application. [Article 52(1) EPC]
A broad statement but with many detailed exclusions:-
discoveries, scientific theories, mathematical methods, aesthetic creations,
schemes, rules and methods for performing mental acts, playing games or
doing business, and programs for computers, presentations of information,
AS SUCH [Article 52(2)-(3) EPC]
inventions the commercial exploitation of which would be contrary to "ordre
public" or morality; plant or animal varieties or essentially biological
processes for the production of plants or animals; methods for treatment of
the human or animal body by surgery or therapy and diagnostic methods
practised on the human or animal body. [Article 53 EPC]
The extent of the exclusions are being continually tested.
•! US Novelty
–! Detailed and complex provisions concerning novelty – seven different
criteria on which an invention is deemed lacking in novelty or lost [35
–! One year grace period for documents published before filing application
but after making invention
–! Earlier filed applications prior art for assessment of novelty if filed before
the invention by the applicant
–! “Swearing behind"
(an inventor, in certain circumstances, can get a US patent even
though the invention became public before the inventor filed an
original patent application)
–! EP absolute novelty based on availability to the public [Article 54 EPC]
with severely restricted six month grace period for International
Exhibitions and disclosure which is an “evident abuse” [Article 55 EPC]
–! The content of European patent applications as filed, the dates of filing of
which are prior to the priority date and which were published on or after
that date are prior art for assessment of novelty [Article 54(3) EPC]
US patent law requires the inventor to include the best
way to practice the invention in the patent application
(35 US Code section 112). This way, the inventor
cannot get a patent and still keep some essential or
advantageous aspect a secret.
European patent law has no such requirement. At
least one way of practicing the invention must be
included in the application (Article 83 EPC), but there
is nothing that states this way must be the best way, or
even a good way.
Inventive step v obviousness
•! USPTO – Full availability of earlier filed later published
applications as art [subject to “swearing behind”]
•! EP – No availability of earlier filed later published applications as
art for assessment of inventive step
•! USPTO obviousness
A test called “teaching, suggestion, or motivation” (TSM) test,was
applied to determine whether invention obvious or not. More
flexible application of the TSM test:
Overturned by Supreme Court in 2006 case [KSR v. Teleflex].
“A court must ask whether the improvement is more than the predictable use of
prior-art elements according to their established functions”.
•! EP Inventive step: Problem and solution approach applied
SIGNS THAT RAISING OF US STANDARD LEADING TO RESULTS
CLOSER TO EP APPROACH, HOWEVER FORM OF ARGUMENT
LIKELY TO BE VERY DIFFERENT
Treatment of amendments
•! No amendment shall introduce new matter into the disclosure of
the invention. [35 U.S.C. 132]
•! The European patent application or European patent may not be
amended in such a way that it contains subject-matter which
extends beyond the content of the application as filed. [Article
Although looks the same – application very different - US permits
reasonable interpretation of what the application discloses – EPO
look to near explicit disclosure
•! US high cost penalty for multiply dependent claims and problems
in application before courts
This leads to many independent claims being filed in the USA
•! EP high cost penalty for too many claims and ability of courts to
find claims partially valid
This leads to much use of multiple dependency which are better
dealt with in courts and easier to draft and examine
•! No common drafting style that is good for US and
EPO (e.g JAPSON CLAIM or Omnibus claima)
For PCT applications, draft claims for Europe and make preliminary
amendment on entry into US regional phase
Unity of invention
•! US same invention
If two or more independent and distinct inventions are claimed in
one application, the Director may require the application to be
restricted to one of the inventions……[35 U.S.C. 121]
This leads to many continuations and divisional applications being
filed in the USA
•! EP same inventive concept
The European patent application shall relate to one invention only
or to a group of inventions so linked as to form a single general
inventive concept [Article 82 EPC].
This appears [and usually is] more generous than the US
•! However EP Rule 43(2) – one claim per category (product,
process…) of invention [with exceptions] is leading to more
divisionals being filed in Europe
Continuations and divisional
•! USPTO – at present, freedom to divide as you see fit
subject to potential for “double patenting” objections
•! EPO – April 2010 restrictions in when divisionals can
be filed – more limited concept of double patenting
(New Rule 36 EPC and other rule changes)
•! USPTO – ability to better specification by improving
disclosure in a continuation [cip-continuation in part]
•! EPO – unambiguously derivable test prevents adding
subject matter between a parent and a divisional
Information and inequitable
•! USPTO – full duty of disclosure
You lose your patent if you do not tell USPTO all that
you know that might be relevant to examination “DUTY
Possibility of going to jail
•! EP theoretical availability of requirement to provide
information relating to prosecution elsewhere [Article
124 and Rule 141 EPC]
Only penalty is if applicant fails to respond to request
The Examination Experience
•! High staff turnover ! low examiner experience ! seemingly
•! High incidence of serial prosecution [one objection raised and
dealt with, a fresh objection raised] ! high level of appeals
•! Low quality of granted patents and high cost of challenge
•! Highly skilled examiner body and low staff turnover !
experienced examiners ! professional examination most of the
time [even if you lose]
•! Low incidence of serial prosecution ! low level of appeals
•! HOWEVER appeal numbers in EPO are rising [still very much
below appeal numbers in USPTO]
•! High quality of granted patents and low cost of challenge
“Peer-to-Patent opens the patent examination process to public
participation for the first time.Become part of this historic program.
Help the USPTO find the information relevant to assessing the claims of
pending patent applications. Become a community reviewer and
improve the quality of patents”.
What happens in the event of
Relatively easy to remedy most procedural mistakes
and even some mistakes of substance [e.g. content of
Relatively difficult to remedy procedural mistakes –
mistakes of substance still difficult to remedy but some
easing of requirements followed EPC 2000 [entry into
force in December 2007]
•! No central litigation forum except ITC – otherwise district by
district but US-wide enforceability
•! Extremely high cost of litigation but extremely high market to
•! Ability to amend post-grant through re-examination/reissue
process [high cost]
•! No central litigation forum as yet – country-by-country litigation,
high variability in costs and outcome, severely limited ability to
•! Lower costs of litigation for individual countries than in US but
smaller markets – litigation throughout Europe would probably
exceed cost of litigation in USA
•! Ability to amend post-grant through limitation process [low cost]
•! Major differences in practice between US and EPO
•! US procedure more “forgiving” than EP procedure
•! Not possible in most cases to write one patent that is
good for both USPTO and EPO
•! US unlike any other large jurisdiction, therefore treat as
•! EP model is being adopted by more and more
countries – drafting to EP standards likely to be good
for most countries
•! High quality of EP patents seen as persuasive in many
Example of a patent family
-!HOW TO DRAFT PATENTS-Oviligy Renault LLP
-!Patent Application Drafting mistakes-Paul N.Katz
-!Guidelines on writing patent specification-Patent wire
-!Determining the scope of a patent- Arnould Engelfriet
-!Patent Drafting –Bangkok 25 September–7 October 2006.Karl Rackette
-!Patent drafting workshop-Manila 10-14 October 2005.Karl Rackette
-!Differences between US and European patents
-!Comparison of EPO and USPTO practices. Author: Jim Boff. Phillips & Leigh, London 10th June
-!New Rule 36 EPC and other rule changes.
-!Patent reform act.