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Introduction To Patent Drafting (African)

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0% found this document useful (0 votes)
53 views78 pages

Introduction To Patent Drafting (African)

Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PDF, TXT or read online on Scribd
You are on page 1/ 78

INTRODUCTION TO PATENT DRAFTING

“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

“ Hope is Africa's rarest commodity. Yet buried though it is


amid the despair that haunts the continent, there is more
optimism today than in decades.
TIME Magazine ”
Market value of Tangible and Intangible
Assets

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

• Intangible assets more valuable than tangible assets

–Europe - Intangible assets account for 40


to 60 per cent of hidden value of wealth
–US - Three quarters of the value of publicly
traded companies are intangible assets
IP creates wealth

IBM earns $1billion p/a through licensing it IP rights.


Microsoft files 3 000 patents per year.
More than 50% of foreign currency earning of the US is
through IP.
INTELLECTUAL PROPERTY FOR DEVELOPMENT

Powerful economic tool for the


generation of global knowledge
“proprietary” platforms for companies
and nations

Confederação Nacional da Indústria


INNOVATION AND
COMPETITIVENESS

The future of global


competitiveness is strongly
connected to the
commercial exploitation of
the rights over proprietary
innovations
INGREDIENTS
FOR TECHNOLOGICAL
INNOVATION
Brains +
Information +
Capital

=
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?

Why should the developing world export cheap labour only?


Why do we not create and export knowledge?
WHAT ARE IP TOOLS?

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

 the resale right (droit de suite) in original works of art


and original manuscripts of writers and composers.
(article 14ter).
• REQUIREMENTS
• Original
• Fixed
• Duration: life of the author +70 years
Non copyrightable matter
• Ideas
• Mathematical concepts
• Style or technique
• Historical incidents
• News
• Scientific principles
RELATED RIGHTS
• Neighbouring rights
• Phonograph producers
• Broadcasting organisations
• Performers
Fields of Industrial Property

• In contrast with copyright, the common


denominator to industrial property
(patents, trademarks and designs) lies in
the fact that protection requires
registration

• This implies completing an application


form for registration and the payment of
fees
INDUSTRIAL PROPERTY
• PATENTS (UTILITY MODELS)
• INDUSTRIAL DESIGNS
• TRADEMARKS
• GEOGRAPHICAL INDICATIONS
• GENETIC RESOURCES
• TRADITIONAL KNOWLEDGE
• INTERNET DOMAIN NAMES
• INTERGRATED CIRCUITS
• TRADE SECRET
• UNFAIR COMPETITION
WHAT IS AN INVENTION?
‘Invention’ means a new
product or process involving an
inventive step and capable of
industrial application.
CREATING AN INVENTION

• 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

ARIPO, EPO OAPI,


EAPO

PCT
HAGUE
PATENT DRAFTING – GETTING STARTED
• BEFORE DRAFTING

• DRAFTING OF PATENT APPLICATIONS

• 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

• Common general knowledge: All available public knowledge and


all that is published
PUBLICATION
Kinds of publications: documents
 papers or publications should provide unmistakable
direction/disclosure of the invention
• even single disclosure is sufficient - extent of publication/
availability of publication-immaterial
PATENT SPECIFICATION

Description Claims

• Description discusses the invention


• Claims define boundary of monopoly
WHAT IS A COMPLETE SPECIFICATION
” … specification shall fully and particularly describe
the invention and its operation or use and the
method in which it is to be performed; discloses the
best method of performing the invention which is
known to the applicant and for which he is entitled
to claim protection…”
PATENT SPECIFICATION
Read by:

 Patent Office
 Licensee/Assignee
 Court
 Technical peers/skilled persons
 Competitors
 Commercial players
 General public
DESCRIPTION
• Description must describe the invention
comprehensively

• Should fully explain the problem to be solved with


examples

• No ambiguity

• Should be adequate and sufficient so as to enable a


person skilled in the art to perform and repeat the
invention without inventor’s further inputs
CONTENTS OF THE DESCRIPTION
• Title
• Field of the Invention
• Background of Invention
• Prior Art details
• Objects of Invention
• Statement of Invention
• Detailed description of Invention
TITLE
• A concise statement providing the crux of the invention

• Care should be taken to incorporate all major aspects claimed

• Product-Process-Apparatus
BACKGROUND

Provides the technical background of


the invention
PRIOR ART
• Is a brief write-up of
what is known before
the invention; sets
out the problems
associated with each
of the known art; and
describes the
problem proposed to
be solved by the
invention
OBJECTS OF THE INVENTION

• Provides purpose of the invention

• Main object(s) and Ancillary object(s)

• Essential aspects and preferred/optional


aspects.
STATEMENT OF THE INVENTION

• Statement forms the main claim or claims in verbal


agreement

• It is essential only when there is an omnibus claim(s).


DETAILED DESCRIPTION OF INVENTION

• Sets out best mode of performing the invention

• Describes the invention in greater detail with


examples/illustration/tables/graphs/diagrams,
etc

• Description sufficient to enable a skilled


person to put the invention into practice
CLAIMS

The main claim defines the essential features and


the sub-claims define the preferred / optional /
additional features
CLAIMS

The important, main properties need not be merged into


the other claim.

A separate claim has to be formed for the important


feature(s).
CLAIMS
• Is the operative part of the specification
• Defines the monopoly to be conferred by
the patent
• Define the metes and bounds of the
invention: at the time of infringement
proceedings, only claims will be interpreted
• If you do not claim, you disclaim
DRAFTING OF PATENT
APPLICATIONS
Patent Applications
• What kind of a document is a patent?
– A patent memorializes the agreement
between the inventor & the government
• Thus, a patent application is analogous to
a contract
– Drafting a high quality patent application is
similar to drafting a high quality contract
• Patent application drafting also has some
similarities to writing a technical or
scientific paper
Patent Applications
•Who is the Audience for a patent?
– A patent examiner
– A judge
– An investor
– A competitor
– An infringer
– An infringer’s legal counsel
•The patent draftsman/person should draft the
application with these important audiences in
mind
Preparing Patent Applications
•The patent agent also needs to know:
– Where the client wants to protect his invention?
• Different countries have different laws and
different requirements for patents
– Has something already happened that
jeopardizes the client’s ability to protect the
invention in the desired countries?
– How soon does the client intend to do something
that might jeopardize his ability to protect the
invention in the desired countries?
Meeting with the inventor
• Obtain invention disclosure from the inventor

• Identify patentable inventions

• Understand the invention


Drafting Patent Applications
•Once the patent agent understands the invention, then he can
begin preparing the patent application.
– Prepare draft claims for the invention as the first
step.
• The patent agent may want to sketch out
draft claims in the disclosure meeting with
the inventor
• This procedure will often confirm for the
patent agent that he has understood the
invention since he can obtain immediate
feedback from the inventor
Drafting Patent Applications

•In the initial draft claims, the patent agent


may wish to use a “picture” claim
– A picture claim essentially “draws a
picture” of the invention in words
– A picture claim is not typically the
broadest claim & does not use highly
abstract language
– But a picture claim can be helpful in
beginning the process of finding the
broadest possible claim
Drafting Patent Applications

•A picture claim may be helpful in the initial


meeting with the inventor since inventors are
often unfamiliar with patent claim language
– The patent agent will likely develop the
most abstract terms possible for the
claims later after further consideration of
the invention
Claims
•The claims are the legally operative part of a patent application
– everything in a patent revolves around the claims
– The majority of patent agents prepare
several draft patent claims as their first
step in drafting a patent application
•When the claims are prepared before drafting the specification,
then the patent agent knows precisely which terms need to be
described clearly in the specification
Claims
•A few situations may suggest drafting the claims after writing the
specification.
– For example, assume a patent agent receives a
technical paper from an inventor & the inventor
tells the patent agent that the patent
application must be filed “today”
• The patent agent will likely not have time to
draft his own patent specification but will
instead use the inventor’s technical paper as
the basis for the specification
– Even in this circumstance, the patent agent may
still want to sketch draft claims before
proceeding
Title of Patent Applications

•A patent application’s title should:


– Broadly describe the invention
– Help the Patent Office classify the
invention & assign it to the proper group
of patent examiners
– Avoid limiting language
Detailed Description
•The “detailed description” section, sometimes
known as the “disclosed embodiment of the
invention” section, should:
– Breath life into the claims,
– Provide a sufficient disclosure of the invention
that an artisan of ordinary skill in the relevant
field could make & understand the invention,
– Demonstrate that the inventors were in mental
“possession” of the claimed invention
•The detailed description section must be closely tied
to the drawings
Detailed Description
•The patent agent must always be cautious in his use of
language in a patent application. Language choices:
– Will be helpful during patent prosecution.
– May be critical when the patent is litigated.
•The patent agent must be especially careful in using absolute
words, such as “must,” and “always.”
– If an inventor says that a widget “always” does
something – then the patent agent must make
sure that this is “always” the case.
Drawings
•The patent agent should prepare exceptionally descriptive
visual materials that illustrate the invention and support the
claims
– The drawings should explain the invention in
sufficient detail that reading the detailed
description section merely confirms in words
the information provided by the drawings.
– Some patent offices require that each claim
term be shown in a drawing
– Many patent agents believe the drawings are
the most important part of the patent
application after the claims
Drafting Claims
purpose : they define the extent and the
content of the protection on the basis of the
technical features of the invention.

THEY REFER TO

PHYSICAL ENTITY ACTIVITY

PRODUCT SYSTEM DEVICE METHOD PROCESS USE


DRAFTING THE CLAIMS

Main (Independent) Dependent


They specify the technical
features mentioned in the
Product Method Use main or prior dependent
claims

Introduction Distinctive part


•Subject of the Technical features
invention not belonging to
the state of the art
• Technical
and for which
features belonging
protection is
to the state of the
sought
art

ΟΡΓΑΝΙΣΜΟΣ
ΒΙΟΜΗΧΑΝΙΚΗΣ ΙΔΙΟΚΤΗΣΙΑΣ
Patent Claim Format

•A patent claim has 3 parts:


– preamble
– transitional phrase
– body
•A claim is written as a single sentence.

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 –

1. An apparatus for holding items, comprising:


• a top; and
• at least one leg.

•Because no relationship is provided between (or among) the recited


limitations.

76
Post-Drafting
• Professional ethics

• Confidentiality
esackey@aripo.org

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