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

Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani
Claim drafting and analysis Arun K Narasani Founder, ipMetrix arun@ipmetrix.com
Agenda ● Basics of claims ● ● ● Claim structure Claim types Drafting ● Preparation ● Claim construction ● Protecting multiple facets ● Other considerations ● Caselet ipMetrix 2
Claim Basics ipMetrix 3
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 ipMetrix 4
Examples ● “A method as illustrated and described” ● “An apparatus as described in figures 1-10” ipMetrix 5
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 ipMetrix 6
Statutory classes ● ● US: process, machine, (article of) manufacture, or composition of matter, or any new and useful improvement thereof India: product or process ipMetrix 7
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 ipMetrix 8
Ordering ● ● Claims are presented in a logical order and numbered consecutively Logical grouping of claims is allowed (using a line, for example) ipMetrix 9
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.> ipMetrix 10
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 ipMetrix 11
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 ipMetrix 12
Transition phrase (contd..) ● Other uncommon transition phrases ● “including”, “having”, “containing” and “wherein” – Really not used anymore in the electronics/software domain ipMetrix 13
Body ● ● Includes material limitations of an invention New element introduced by an indefinite article (e.g. “a” or “an”) ● ● An element not introduced by an indefinite article is not allowed ● ● Further references to the same element may use a definite article (e.g. “the”) Said to have no antecedent basis Elements may be claimed in function language ipMetrix 14
Body (contd..) ● ● Double inclusion of elements without separate structures may be rendered indefinite Single element performing multiple functions may be claimed using function language ipMetrix 15
Claim types – subject matter ● Method claims ● ● Apparatus claims ● ● As one or more steps With active components Article claims ● With non active components ipMetrix 16
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” ipMetrix 17
Claim types – scope ● Functional ● Method: step-plus-function ● Apparatus: means-plus-function ipMetrix 18
Example z-1 1/3 + x(n) y(n) z-2 Moving Average Filter ipMetrix 19
Example ● Apparatus claim ● A moving average filter comprising: – – – – a first delay unit; a second delay unit; an adder to add signal; and a multiplier. ipMetrix 20
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. ipMetrix 21
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. ipMetrix 22
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. ipMetrix 23
Example 1/3 + x(n) y(n) z-1 + z-1 Moving Average Filter ipMetrix 24
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. ipMetrix 25
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. ipMetrix 26
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. ipMetrix 27
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. ipMetrix 28
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. ipMetrix 29
Drafting ipMetrix 30
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 ipMetrix 31
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 ipMetrix 32
Claim construction (contd..) ● Claim considerations ● Overlap with prior art ● Circumvention ● Directing towards target infringers ● Review and iterate ipMetrix 33
Protecting multiple facets ipMetrix 34
Claim constructions ● Apparatus ● ● Method ● ● Sequence of actions System ● ● Active elements Set of discrete elements article/article of manufacture ● Passive elements ipMetrix 35
Claim constructions ● Program product / storage device ● ● Means-plus-function ● ● When there are alternate elements Program encoded on an electrical signal ● ● Storage device like disk Program transferred as signals (Internet) Computer readable medium ● Storage media, signals etc. ipMetrix 36
Claim interpretation and other considerations ipMetrix 37
Claim interpretation ● ● Claims must be based on matter disclosed in specification Specification must have adequate support for each claim ipMetrix 38
Clarity of claims ● Ambiguous terms ● ● Glorification ● ● “like”, “close to”, “almost”, “near” etc “.. where said greatly improved device comprises of:” Appropriate punctuation ● “A tool for manufacturing a machine comprising: ..” ● “A tool for manufacturing a machine, comprising:” ipMetrix 39
Clarity of claims ● ● Essential elements ● ● “A tool for manufacturing a machine, said tool comprising:” 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 ipMetrix 40
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... ipMetrix 41
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 ipMetrix 42
Caselet ipMetrix 43
Caselet ● providing services using SMS communication ● providing targeted advertisements ipMetrix 44
Caselet – core concepts ● ● generating user context from user interactions method of rendering services on a terminal from using SMS communication ipMetrix 45
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. ipMetrix 46
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. ipMetrix 47
● 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. ipMetrix 48
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. ipMetrix 49
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. ipMetrix 50
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. ipMetrix 51
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. ipMetrix 52
Questions? Contact: Arun Narasani Founder, ipMetrix arun@ipmetrix.com ipMetrix 53

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