Introduction To Patent Drafting (African)
Introduction To Patent Drafting (African)
“Success is going
from failure to failure
without a loss of
enthusiasm”-
Winston Churchill
INTELLECTUAL PROPERTY HAS
BEEN TRANSFORMED FROM A
SLEEPY AREA OF LAW AND
BUSINESS TO ONE OF THE DRIVING
ENGINES OF A HIGH TECHNOLOGY
ECONOMY – New York Times (1999)
“ The biggest reason to be hopeful is that “24/7“The irony is that 90% of the
it takes time for results from past media’scoverage is concerned with the
investment to come through, and many West, whereas 90% of the opportunity is
Stephen Jennings, CEO,
”
such benefits have yet to materialise. in emerging
The Economist markets.”
Renais ” sance Capital
100%
16.8%
32.4%
80%
68.4%
79.7%
60%
83.2%
40%
67.6%
20% 31.6%
20.3%
0%
1975 1985 1995 2005
Intangible Assets
Tangible Assets
Value of Intangible Assets
=
Protected Inventions +
New products + New
markets
Intellectual property
transforms knowledge
into assets of
economic
value generating
wealth to the countries.
Why does this not apply to us?
TWO BRANCHES:
COPYRIGHT AND RELATED RIGHTS
And
INDUSTRIAL PROPERTY
COPYRIGHT AND RELATED RIGHTS
Definition : A bundle of rights which empowers a
copyright owner to exclude others from certain uses of
their works and also authorize others for certain uses.
Moral rights
Economic rights
• literary work,
• artistic work,
• musical work,
• sound recording,
COPYRIGHT AND RELATED RIGHTS
• audio-visual work,
• choreographic work,
• derivative work, and
• computer software or programmes.
• Expressions of folkore:
• Kente
• Adinkra
• Fundamental research
• Improvement on existing art
• Solving unsolved problems of art/unaddressed
issues
• Different approach
IP LAW & PRACTICE
First to file
system
PATENT FILING ROUTES
NATIONAL
ZIMBABWE
REGIONAL INTERNATIONAL
PCT
HAGUE
PATENT DRAFTING – GETTING STARTED
• BEFORE DRAFTING
• POST DRAFTING
BEFORE DRAFTING
• What is the invention ?
• Is invention patentable ?
• Is invention novel, inventive ?
• Prior art/prior disclosure ?
– Oral disclosure ?
– Prior printed publication available to the public ?
– Prior public use ?
BEFORE DRAFTING:
VERIFY THE FOLLOWING:
Conduct search
Enlist problems in prior art
What is the problem sought to be solved by the invention?
What is the novelty?
Is the solution obvious?
Is it artificially excluded ?
Has publication ensued?
Ascertain the type of application -whether complete or provisional is to
be filed
Decide the area and nature of protection- Paris convention, PCT,
ordinary application.
WHAT IS NOT PATENTABLE?
Inventions that cannot be patented are:
Frivolous
Contrary to well established natural laws
Contrary to morality or injurious to public health (animals/plants) or to environment
Scientific principle or abstract theory
New property or use of a known substance
Mere admixtures (as opposed in synergistic mixtures) and processes thereof
Mere arrangement or rearrangement of known devices each functioning
independently of one another in a known way
Method of agriculture or horticulture
Treatment of human being, animals including diagnostic methods
Plants and animals in whole or any part thereof
Essentially biological processes
Mathematical or business methods, computer programme per se or algorithm
Literary, dramatic, musical or ar6tistic work
Method of playing games
Presentation of information
PUBLIC DOMAIN
• Public knowledge - known to persons in the art. A part of the
mental equipment of those concerned in the art under
consideration
Description Claims
Patent Office
Licensee/Assignee
Court
Technical peers/skilled persons
Competitors
Commercial players
General public
DESCRIPTION
• Description must describe the invention
comprehensively
• No ambiguity
• Product-Process-Apparatus
BACKGROUND
THEY REFER TO
ΟΡΓΑΝΙΣΜΟΣ
ΒΙΟΜΗΧΑΝΙΚΗΣ ΙΔΙΟΚΤΗΣΙΑΣ
Patent Claim Format
61
Patent Claim Format
• Preamble
– Defines a category for the invention
• Ex.: An electronic …
– Often identifies the type of invention
• Ex.: A method for …
– Usually consistent with title of invention
62
Patent Claim Format
• Example:
• Title of invention:
• “Rice Cooking Apparatus”
• Preamble might read:
• 1. An apparatus for cooking rice,…
63
Patent Claim Format
•Example: But suppose that the inventor knows
that the apparatus could be used for cooking any
type of grain, then a broader preamble might
read
• 1. An apparatus for cooking grains,…
64
Patent Claim Format
•Example: Now suppose that the inventor knows
that the apparatus could be used for cooking
vegetables and melting cheese, then a broader
preamble might read
• 1. An apparatus for cooking,…
65
Patent Claim Format
•In drafting claims and their preambles, it is
important to know:
– What the invention is
– How adaptable the invention is to related
technologies
– How the client plans to make money from the
invention
66
Patent Claim Format
• Transition
– Open or Closed
– Follows the preamble
– May begin with a comma
• The device, comprising
– What’s an “open” word and what’s a “closed”
word varies around the world
67
Patent Claim Format
• Open
– Recited elements are the minimum needed for
infringement
– The presence of other elements in an infringing device
does not defeat infringement claim
• Closed
– Recited elements are everything required for
infringement
– The presence of other elements in an infringing
device defeats infringement claim
68
Patent Claim Format
• “Compromising” and “Including”
– Have been construed to mean “including the
following elements but not excluding others” in
many jurisdictions
– Open-ended phrases
– A few jurisdictions have, however, found
“comprising” to be a closed phrase
69
Patent Claim Format
• Example:
• If invention relates to a pencil with an eraser and a light
attached to it …
• Claim might be:
1. An apparatus, comprising:
a pencil;
an eraser attached to an end of the pencil; and
a light attached to a proximal center of the pencil.
•
70
Patent Claim Format
• “Consisting of”
– Has been construed to mean that the claim covers only
the elements named & nothing more
• The claim is “100%” of everything protected
– Confers a close-ended connotation
71
Patent Claim Format
• Use Close-ended phrases sparingly
– Your client will usually not want to limit the claim to just
the recited elements
– Imagine how easily a competitor could make a trivial
addition and avoid infringement
72
Patent Claim Format
• Body
– Follows the transitional phrase
– Recites the limitations of the claim
– Explains how different limitations exist in
relationship to one another
73
Patent Claim Format
• For example:
• The body of an apparatus claim on a table
might read:
1. An apparatus for holding items, comprising:
• a top; and
• at least one leg configured to
support the top.
74
Patent Claim Format
•A patent claim cannot typically be a mere list
of parts.
•The recited elements must usually relate to
each other in some way.
75
Patent Claim Format
•This claim would most likely not be allowed –
76
Post-Drafting
• Professional ethics
• Confidentiality
esackey@aripo.org