Sub-module C

Understanding
patent claims
Overview

(a) Toy ball (c) Material for a synthetic lawn

Slide 1 Understanding patent claims – toy ball Slide 1 Understanding patent claims –
Slide 2 The invention material for a synthetic lawn
Slide 3 How to patent this invention: claim it! Slide 2 Compaction material for a synthetic lawn
Slide 4 Result of the prior art search Slide 3 The invention
Slide 5 Comparison of the two inventions Slide 4 How to patent this invention: claim it!
Slide 6 Claim to protect the invention Slide 5 Result of the prior art search
Slide 7 Patent claims Slide 6 Comparison of the two inventions
Slide 8 Application filed with the EPO Slide 7 Claim to protect the invention
Slide 9 Additional prior art found by the EPO Slide 8 Use of dependent claims to improve protection
Slide 10 The opinion of the EPO Slide 9 Application filed with the EPO
Slide 11 Further analysis Slide 10 Additional prior art found by the EPO
Slide 12 Comparison of the invention with the prior art Slide 11 The opinion of the EPO
Slide 13 Result of the analysis Slide 12 Further analysis
Slide 14 The original description filed with the EPO Slide 13 Comparison of the invention with the prior art
supports the amendments to the claims Slide 14 Result of the analysis
Slide 15 The patent is finally granted Slide 15 The original description filed with the EPO
supports the amendments to the claims
Slide 16 The patent is finally granted
(b) Heating element for a washing machine
Slide 1 Understanding patent claims –
heating element for a washing machine (d) Double pipe
Slide 2 The invention (1) Slide 1 Understanding patent claims – double pipe
Slide 3 The invention (2) Slide 2 The invention (1)
Slide 4 How to patent this invention: claim it! (1) Slide 3 The invention (2)
Slide 5 How to patent this invention: claim it! (2) Slide 4 The invention (3)
Slide 6 Result of the prior art search Slide 5 How to patent this invention: claim it!
Slide 7 Comparison of the two inventions Slide 6 Result of the prior art search
Slide 8 Claim to protect the invention Slide 7 Comparison of the two inventions
Slide 9 Use of dependent claims to improve protection Slide 8 Delimiting the invention over the prior art
Slide 10 Application filed with the EPO Slide 9 Claims filed with the EPO
Slide 11 Additional prior art found by the EPO Slide 10 Introductory part of the description filed
Slide 12 The opinion of the EPO Slide 11 Additional prior art found by the EPO (1)
Slide 13 Further analysis Slide 12 Additional prior art found by the EPO (2)
Slide 14 Comparison of the invention with the prior art Slide 13 The opinion of the EPO
Slide 15 Result of the analysis Slide 14 Further analysis
Slide 16 New claim Slide 15 Comparison of the invention with the prior art
Slide 17 The original description filed with the EPO Slide 16 Result of the analysis (1)
supports the amendments to the claims Slide 17 Result of the analysis (2)
Slide 18 The patent is finally granted Slide 18 Result of the analysis (3)
Slide 19 The original description filed with the EPO
supports the amendments to the claims
Slide 20 The patent is finally granted on the basis
of the amended claim

2 Patent teaching kit – Sub-module C

(e) Electrical power converter (g) Automatic power switch for hearing aid
Slide 1 Understanding patent claims – Slide 1 Understanding patent claims –
electrical power converter automatic power switch for hearing aid
Slide 2 The invention Slide 2 Hearing aids
Slide 3 How to patent this invention: claim it! Slide 3 The invention
Slide 4 Result of the prior art search Slide 4 How to patent this invention: claim it! (1)
Slide 5 Comparison of the two inventions Slide 5 How to patent this invention: claim it! (2)
Slide 6 Claim to protect the invention Slide 6 How to patent this invention: claim it! (3)
Slide 7 Use of dependent claims to improve protection Slide 7 Use of dependent claims to improve protection
Slide 8 Application filed with the EPO Slide 8 Application filed with the EPO
Slide 9 Additional prior art found by the EPO Slide 9 Result of the prior art search (1)
Slide 10 The opinion of the EPO Slide 10 Result of the prior art search (2)
Slide 11 Renewed analysis Slide 11 Comparison of the two inventions (1)
Slide 12 Comparison of the invention with the prior art Slide 12 Further analysis
Slide 13 Result of the analysis Slide 13 Comparison of the two inventions (2)
Slide 14 The original description filed with the EPO Slide 14 Result of the analysis
supports the amendments to the claims Slide 15 Amended claim
Slide 15 The patent is finally granted Slide 16 The original description filed with the EPO
supports the amendments to the claims
Slide 17 The patent is finally granted
(f) Drug for the treatment of cancer
Slide 1 Understanding patent claims – drug for the
treatment of cancer
Slide 2 Treatment of cancer
Slide 3 The invention
Slide 4 How to patent this invention: claim it!
Slide 5 Result of the prior art search
Slide 6 Comparison of the two inventions
Slide 7 Claim to protect the invention
Slide 8 Use of dependent claims to improve protection
Slide 9 Application filed with the EPO
Slide 10 Additional prior art found by the EPO
Slide 11 The opinion of the EPO
Slide 12 Further analysis
Slide 13 Comparison of the invention with the prior art
Slide 14 Result of the analysis (1)
Slide 15 Result of the analysis (2)
Slide 16 The original description filed with the EPO
supports the amendments to the claims
Slide 17 The patent is finally granted

Patent teaching kit – Sub-module C 3

Understanding patent claims

Patent claims – those statements that define what is The case studies in sub-module C have been designed
actually protected by a patent – can be very complex and to give students an understanding of patent claims.
difficult to understand. This is because patent attorneys Because of the complexity of the subject-matter, they
try to get maximum protection for their clients by taking are not suitable for use as introductory modules and we
into account not only the existing prior art, but also any recommend that the teacher or lecturer should have a
potential prior art that they and the inventor did not prior knowledge of patents.
know of when the claims were drafted.
Based on real patents, each case study describes how
Despite the difficulties involved, it is important to have claims work by providing a step-by-step illustration of
a basic understanding of patent claims in order to be how they are drafted.
able to:
– understand how patents are created and how the The examples used have been taken from a variety
patent system works. of technical fields, so you can choose the case that best
– make full use of the information found in patent matches the interests of your students:
searches, including being able to make an educated – Toy ball
guess as to whether a particular technology would – Heating element for a washing machine
infringe a certain patent. It is also much easier to avoid – Material for a synthetic lawn
using a patented invention if you understand exactly – Double pipe
what it is that has been patented. – Electrical power converter
– interact with patent professionals during the patent – Drug for the treatment of cancer
application process. – Automatic power switch for hearing aid

4 Patent teaching kit – Sub-module C

Sub-module C
Understanding
patent claims
(a) Toy ball
While real patents have been used in this 1. A first, naïve, approach would be to write
case study, the various steps in the procedure a claim for "a ball that is easy to catch".
followed by the applicant/attorney have been However, this is overly broad (is it really the
adapted for the purpose of this presentation. first ever ball that is easy to catch?) and even
In this presentation the invention that we are more importantly, it tries to protect the
using as an example is a toy ball. Imagine that outcome of the invention, not the invention
you have invented this ball and that it is new. It itself. Patents are granted for new technical
consists of many plastic fibres bundled together solutions – problems themselves cannot be
to form the ball. This makes it fun to use, and patented.
you think it would sell well on the market. In
order to protect your future investments, you 2. A simple description of the technical solution
need to protect the invention first. How would is shown on the slide. This claim describes
you go about this? HOW you achieve the goal, i.e. what exactly
To start with you should ask yourself what the is new in your technical solution.
distinguishing attributes of your invention are. However, explicitly naming the "ball" in the
You might find that it is "fun to use", "looks patent is dangerous: What if somebody
nice", and is "easy to catch". The appearance of a gave it the shape of, for example, a car, or an
product can be protected by a registered design apple, or a telephone? This might circumvent
(USA: design patent). Only technical functions the patent but could well provide the
such as "easy to catch" can be patented consumer with exactly the same function:
(USA: utility patent). As you know, in order to A thing that can be thrown, is easy to catch
get a patent, you need to claim the invention. and looks nice. So you want to replace the
Let's see how that works. word "ball" with something more general. E

6 Patent teaching kit – Sub-module C

E 3. You could, for example, replace it with the In our example, a prior art search carried out by
very general concept of an "amusement a patent attorney found a similar, earlier patent.
device". Remember our examples of patent It also relates to a toy and has many flexible
jargon? You have now joined the ranks of strands fixed on a core.
people who call their inventions "a plurality
of balls" or "a writing instrument". Now you have to carefully analyse what is con-
tained in that patent so that you can determine
To make sure you really know what is new what might be new about your invention.
about your invention (only what is new can be
protected by a patent), you have to carry out
what is called a "prior art search".

Patent teaching kit – Sub-module C 7

You find that the earlier patent actually only This is the claim you might finally decide to use
describes a disc-like shape, i.e. the fibres are in your patent application.
explicitly stated to radiate in a circular plane
around the core. The earlier patent also reveals For maximum protection against competitors
that the function of these strands is to make attempting to circumvent your patent, you
the toy fly better and be easier to kick around. would normally file more than one claim
The function (the problem solved) is not that it (see next slide).
can be caught easily. So the explicitly different
configuration of the flexible strands in that
patent yielded an explicitly stated different
function. In other words:

Your invention is new because you changed

the orientation of the strands from a two-
dimensional plane to a three-dimensional globe
and you achieved a new function with that:
it is easier to catch.

Furthermore, it was not obvious to a skilled

person to modify the closest prior art in the
way your invention does to achieve this result.
So if you change your claims accordingly,
you can still get a patent.

8 Patent teaching kit – Sub-module C

Inventors want their inventions patented If a broad independent claim is later found to
in such a way that the resulting patents are be invalid, for example because there is prior
difficult to circumvent. However, making very art, then the narrower dependent claims might
broad patent claims is risky, as there might be still be valid.
related prior art not known to the inventor. If a
patent has only one broad claim and that claim For example, an inventor might claim:
is destroyed by existing prior art, then there "1. A battery made out of iron and sulphur",
is no patent protection left at all. Therefore, and then
in practice, most patent applications have "2. The battery of claim 1 in which the sulphur
both one or more broader, independent claims is deposited as small particles on a graphite
and multiple narrower, dependent claims. electrode."
The independent claim usually describes the
invention in very general terms, to allow a Even though the patent examiner, or later the
broad interpretation in infringement lawsuits. courts, might find that a battery made out of
The dependent claims usually describe specific iron and sulphur had been published before
ways of realising the invention that the (i.e. that claim 1 is not valid), the inventor might
inventor regards as economically attractive. still be the first to have used small sulphur
The dependent claims refer to the independent particles on graphite for such a battery.
claim and specify some further parameters that
narrow down the scope of the claim.

Patent teaching kit – Sub-module C 9

This is an example of the final claims that you Apart from the claims, you also have to file
might use in your patent application. bibliographic data (personal details etc.), a title,
an abstract, a description and drawings.
The main claim covers your invention in general
terms. The dependent claims describe how you Now we will have a look at what happens
think the invention will be specifically realised: when the patent office examines the patent
as a ball and possibly with some enlargements application and its claims.
on the outer ends of the filaments. The enlarge­
ments improve the grip of the ball when it
slides over a person's hand as they attempt
to catch it.

Note: Although the enlargements are part of

the original invention, they are not described
in the independent claim but only as one of
many protected ways of putting the invention
into practice. As the inventor you know that
the invention also works without these
enlargements and you do not want competitors
to circumvent your patent simply by omitting
them. So you protect them in a dependent claim.

10 Patent teaching kit – Sub-module C

Patent examiners are trained to find the rele- Remember that your invention was claimed as
vant prior art and they have a lot of experience "comprising a core region and plural elastomer-
in their technical field. So they will frequently ic filaments radiating in plural angularly offset
find prior art not considered by the inventor or planes from the core region." This is already
his patent attorney. shown in the prior patent applied for in 1982.

In our example, the examiner found the So the EPO will write you a letter, send you the
patent application shown. The claims relate search report and inform you that your patent
to a core with elastic rods or strands attached application as filed would be rejected. This does
to it. The drawings show a three-dimensional, not mean that your application has actually
globe-like shape (see next slide). been rejected, but it does mean that if you do
not amend the application or provide convincing
arguments, then it most probably will be.

Patent teaching kit – Sub-module C 11

The patent claims, as the EPO understood A structured analysis of your invention compared
them, do not constitute a new invention. with the two documents that have been identi-
fied as relevant prior art could look like this.
So either you have to demonstrate that the
claims must be interpreted differently, or you To do this analysis, you need to look at the
have to change them. features of the inventions (how the problem is
solved) and at the technical results, i.e. what
You are not allowed to change the invention problem is solved.
that your application is about, but you are
allowed to make the wording of the claims fit The following text is also written on the
more precisely to your invention. Your invention next slide:
is what you described in the description and – Although the individual elements of the
drawings. invention are known, the combination is
not known.
Check the documents found in the prior art – The new combination of the technical
searches: features produces a new, unique benefit.
– Does your invention have any feature
not disclosed in the prior art? Given our knowledge of the prior art it is not
– What are the advantages of your invention obvious to combine the elements of the differ-
compared with the prior art? ent documents to achieve these new effects ->
the inventive step requirement is fulfilled!

12 Patent teaching kit – Sub-module C

Based on our analysis of the relationship Our text described all the features we have
between the invention and the prior art, we now added to the claims.
can reformulate our claim in such a way that
the invention as claimed is new and a patent An important function of the description and
can be granted. Look how complicated the the drawings during the patent application
claim for this simple invention has become! process is to support possible amendments
to the patent claims (see next slide).
You now know why patent claims are often
very complicated in practice. And you have also
learnt how to understand them much better.
It is often helpful to consider the claim as a
bundle of features that together represent the
invention as it is protected.

You have now substantially changed your

claim compared with what you originally
filed. Of course, once you have filed a patent
application you cannot simply change it as
you like. For example, you cannot introduce
completely new elements. Rather, any change
has to be supported by the document that you
originally filed. In our case, we described our
invention very well in the description section.

Patent teaching kit – Sub-module C 13

Those parts of the description (the original This patent was actually granted with the
description that was filed with the original claims we just developed. You can look it up
patent application) which support the changes in Espacenet by entering patent publication
to the claims are highlighted. number EP0295114.

In red: This is what distinguishes the invention

from the prior art found by the examiner. We are
allowed to introduce this element (floppy) into
the claims because we had described this in the
original description.

In grey: This is what distinguishes our invention

from the prior art the patent attorney had
already found. We accounted for this in the
original claims filed.

In green: These parts of the text can be used to

support our argument that by combining the
two functions which were known individually
before ("floppy" and "three-dimensional globe
configuration") we achieve a new technical
function not achieved by the prior art.

14 Patent teaching kit – Sub-module C

Sub-module C
Understanding
patent claims
(b) Heating element for a
washing machine
Note The figure shows a cross-section of the tub and
While real patents have been used in this the drum of a washing machine. The tub (1)
case study, the various steps in the procedure is the receptacle that contains the water and
followed by the applicant/attorney have been washing powder or liquid inside the washing
adapted for the purpose of this presentation. machine. The drum (4) rotates inside the tub
around an axis, which in this example is slightly
The example used in this case study is from the inclined. The foil heating element (2) is attached
field of "Mechanics – Handling and Processing (e.g. glued) to or integrated into the lower part
– Laundry treatment" and relates to a washing of the tub. Thus, the foil heating element is also
machine with a particular heating element. "adapted in its shape" to the bottom of the tub.
Insulating strips (3) may be used for dividing the
It is based on European patent application foil heating element into different sections.
EP 03 005 120, but is a simplified version
translated from the original language (German).
As a result, there are some differences between
the claims shown here and the "real" claims.

The relevant ECLA and IPC classification is

D06F39/04 (details of washing machines:
heating arrangements) from the field D06F
(domestic laundry treatment).

16 Patent teaching kit – Sub-module C

The aim is to find a way of describing the It is important to note that the claim relates to
invention in technical terms (see also next "a washing machine with a heating element"
slide). Subjective, vague or aesthetic features and not just "a heating element for a washing
should therefore be avoided. machine".

The invention may well of course have technical The reason is that the heating element is
features which cause the washing machine to defined by its relation to the washing machine
require fewer parts or contain parts which may and its tub ("... arranged and adapted in its
well be less complex than the ones already shape ..."). Hence, the washing machine is an
known, in which case the washing machine integral part of the definition of the claimed
could indeed also be "cheaper". "subject-matter". A claim relating to a "heating
device for a washing machine" (or "in a washing
machine"), however, claims only the heating
device per se. Therefore, the claim must relate
to the washing machine with a heating element
in order to meet the requirements of the
European Patent Convention (EPC), which states
that a claim must clearly define the matter for
which protection is sought (Article 84 EPC).

Note
A claim relating to "a tub with a heating
element" would be possible.

Patent teaching kit – Sub-module C 17

The aim is to prevent anyone from circum­ Figure 2 of the prior art document shows the
venting the patent by heating something other "washing vessel (15) of a washing machine"
than water or by arranging the heating element (i.e. the tub) and the bottom wall (16) of the tub.
at a different point not exactly at the bottom It also shows the parts (9, 12, 14, 17, 19) required
of the tub. Hence, the term "water" is replaced for mounting the heating element.
by the much wider term "medium", which
encompasses "things" other than just water For more information, see EP 0 352 499 A2
(e.g. air, suds, liquid chemicals). Furthermore, (claim 1, Figure 2, and column 3, lines 5-12).
although the bottom of the tub is the most
logical and beneficial location, the foil heating
element may be located elsewhere.

Consequently, the scope of protection of this

claim is wider than that of the original claim.
This will make it more difficult to circumvent
the patent.

18 Patent teaching kit – Sub-module C

Inventive step (technical effect: lower water
level in the tub is possible):
The technical effect of the difference between
the invention as claimed and the prior art has
to be evaluated. In the prior art document
EP 0 352 499, the heating device is mounted
"expediently spaced" from the bottom wall of
the tub. Hence, in order to heat water inside
this tub, the water level must reach at least the
heating element.

The invention as claimed allows a much lower

minimum water level than is possible with the
washing machine shown in EP0352499, because
the foil heating element is directly fitted onto
the wall of the tub.

A further technical effect and advantage of

the invention as claimed lies in the fact that,
in the case of drum-type washing machines,
the diameter of the drum inside the tub can be
made larger (since there is no heating element
which is spaced from the tub).

Patent teaching kit – Sub-module C 19

Claims are usually divided into broader, The dependent claims indicate the alternative
independent claims and narrower, dependent ways in which the foil heating element can be
claims. The independent claim usually describes fitted to the tub.
the invention in very general terms, to allow a
broad interpretation in infringement lawsuits. In claim 3, the foil heating element is effectively
The dependent claims usually describe specific integrated into the wall of the tub. The features
ways of realising the invention that the of this claim limit the scope of protection quite
inventor regards as economically attractive. significantly, because they refer to the method
The dependent claims are often tailored to fit of producing the tub and integrating the foil
exactly how you would expect competitors to heating element into it.
realise the product.

For example, an independent claim could read:

"A writing instrument comprising units a and
b." A dependent claim could read: "The writing
instrument of claim 1, characterised in that its
length is between 10 and 15 centimetres."

20 Patent teaching kit – Sub-module C

In Fig. 4 you can see that the "foil heating
element" disclosed in this prior art document
comprises a heating foil (1) with its supporting
polymer layer (3) and heat-conducting material
(6). Also shown are the tub (7) and an additional
insulating material (4).

Of course, there could be some argument as

to whether the "foil heating element" is the
heating foil (1) only and whether this heating
foil is "fitted to the tub". However, there is at
least one interpretation of the prior art which
is conclusive and logical that shows all the
features of the claim of our invention, i.e.
"a foil heating element for heating a medium
inside the tub of the washing machine, wherein
the heating element is fitted to and adapted
in its shape to the tub".

Note that the "foil heating element" of

DE10025539 is glued to the tub. This document
therefore also shows all the additional features
of claim 2 of our invention.

Patent teaching kit – Sub-module C 21

Check the material revealed in the prior art
search:
– Does the invention have any feature
not disclosed in the prior art?
– What are the advantages of the invention
compared with the prior art?

22 Patent teaching kit – Sub-module C

This claim is a combination of claims 1 and 3
of our example as filed.

Patent teaching kit – Sub-module C 23

This slide shows the original description and
claims. The changes made to the claims must
be supported by the original description.
Article 123(2) EPC stipulates that "The European
patent application ... may not be amended
in such a way that it contains subject-matter
which extends beyond the content of the
application as filed." Therefore, it is important
that the original description and claims disclose
and support some "fallback positions".

Once the claims have been amended, the

description must also be amended so that
the claims and description concur again.

24 Patent teaching kit – Sub-module C

Sub-module C
Understanding
patent claims
(c) Material for a synthetic lawn
Note Synthetic turf for sport fields is normally made
While real patents have been used in this out of a mat onto which a plurality of plastic
case study, the various steps in the procedure (usually polypropylene) fibres are mounted to
followed by the applicant/attorney have been simulate grass. The fibres are compacted with
adapted for the purpose of this presentation. a layer of sand and rubber. The rubber may be
mixed with the sand or added as a separate
layer on a layer of sand. The most commonly
used rubber is made of reclaimed tyres.

The invention relates to the use of a new rubber

as compaction material for the synthetic lawn,
all other elements of the synthetic lawn (mat,
fibres and sand) being conventional.

26 Patent teaching kit – Sub-module C

All these technical features are achieved by US 4735825 does not actually mention
replacing the conventional reclaimed rubber thermoplastic rubber. This has been "added"
from old tyres by a thermoplastic block to the content of the prior art document for
elastomer based on styrene and a diene. the purposes of this case study only.

It is conceivable that other thermoplastic

elastomers would also work, not just styrene-
diene block copolymers. The claims should also
leave open the possibility of adding certain
further components to the compaction material.
The verb "is" would be read restrictively in a
patent claim to mean that the compaction
material is made of this copolymer only. An
expression such as "comprises" is preferable.

Patent teaching kit – Sub-module C 27

The selection of a particular type of material
out of a generic class of materials constitutes
new subject-matter if the prior art did not
specifically mention that particular embodiment.

The particular effects linked to the selection

of this new material can also be considered
to involve an inventive activity. This will be
considered in the following slides.

28 Patent teaching kit – Sub-module C

Claims are usually structured to include both A further independent claim for the synthetic
broader, or "independent", claims and more lawn as such should also be included. This
specific, or "dependent", claims. An independent claim could read something like: "Surface for
claim usually describes the invention in very sports activities comprising a synthetic lawn,
general terms to allow a broad interpretation characterised in that said surface comprises
in infringement lawsuits. The dependent claims among the fibres constituting the synthetic
usually describe specific ways of realising lawn a compaction material according to one
the invention that the inventor regards as or more of claims 1 to 3 so as to form a layer."
economically attractive. The dependent claims It is also possible to claim the use of the
are often tailored to fit exactly how you would compaction material in the fabrication of
expect competitors to realise the invention. synthetic lawns and/or a method to improve
the characteristics of a synthetic lawn which
For example an independent claim could read: comprises the use of the specific compaction
"A writing instrument comprising units a and material: "Use of a compaction material
b." A dependent claim could read: "The writing according to one or more of claims 1 to 3 for
instrument of claim 1 characterised in that its compacting a synthetic lawn."
length is between 10 and 15 centimetres." "Method for giving elasticity to a surface for
sports activities comprising a synthetic lawn,
characterised in that said method provides for
the introduction among the fibres constituting
the synthetic lawn of a compaction material
according to one or more of claims 1 to 3 so as
to form a layer."

Patent teaching kit – Sub-module C 29

 The claim of the application is directed to a
"material". As such, it refers to any composition
comprising a thermoplastic block copolymer
of styrene. The indication of use "for synthetic
lawn" is only limiting in so far as the claimed
material must be suitable for being used as
a compaction material for synthetic lawn.
The material of EP 0845498 seems suitable
for this purpose.

30 Patent teaching kit – Sub-module C

The invention must be compared in detail with The advantages were mentioned in slide 4.
all the available prior art (US 4735825 and EP They have been recited in the description.
0845498), and any differences identified. They may be used to present arguments
Are these differences responsible for a in favour of inventive step.
particular technical effect?
This technical effect would then indicate the
technical problem that the invention sets out to
solve. This technical problem should have been
mentioned in the original application as filed or
at least be related to the effects mentioned in
the original application as filed.
Are there indications in the prior art that
the technical problem could be solved by
implementing the differences? If not, a claim
including those differences could be considered
novel and inventive.

Now, a new claim can be drafted that includes

the differences over the prior art that have been
identified as responsible for a particular, not
foreseeable, technical effect. All the features of
such a new claim need to have been disclosed
in the application as originally filed.

Patent teaching kit – Sub-module C 31

32 Patent teaching kit – Sub-module C
Patent teaching kit – Sub-module C 33
Sub-module C
Understanding
patent claims
(d) Double pipe

Teaching Kit – Sub-module C 35

Note
While real patents have been used in this
case study, the various steps in the procedure
followed by the applicant/attorney have been
adapted for the purpose of this presentation.

Using the double pipe makes piping layout

simpler and more compact, which is particularly
important due to packaging reasons in the
vehicle structure.

36 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 37
38 Patent teaching kit – Sub-module C
The dependent claims are based on the two
embodiments of the double pipe and represent
fall-back positions in the granting procedure.

Patent teaching kit – Sub-module C 39

All European patent applications must include
a set of claims and a description.
A set of drawings may also be included.

40 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 41
 A structured analysis of your invention compared
with the two documents that have been identi-
fied as relevant prior art could look like this.

To do this analysis, you need to look at the

features of the inventions (how the problem
is solved) and at the technical results, i.e. what
problem is solved.

The following text is also written on the next

slide:
– Although the individual elements of the
invention are known, the combination is
not known.
– The new combination of the technical
features produces a new, unique benefit.
– Given our knowledge of the prior art it is
not obvious to combine the elements of the
different documents to achieve these new
effects -> the inventive step requirement
is fulfilled!

42 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 43
Where appropriate, claims contain a preamble, The application as filed has been published
which contains the features known from as EP 1 447 606 A1. The paragraphs quoted
the prior art, and a characterising portion, are taken from this publication.
beginning with the expression "characterised
in that", which specifies the features for which
protection is sought (Rule 43(1) EPC).

44 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 45
Sub-module C
Understanding
patent claims
(e) Electrical power converter

Teaching Kit – Sub-module C 47

Note
While real patents have been used in this AC system, voltage peaks of up to 1 000 V
case study, the various steps in the procedure may occur, presenting a risk for the switching
followed by the applicant/attorney have been transistor or difficulties when designing it.
adapted for the purpose of this presentation.
The invention therefore aims to provide an
The invention is based on a switched-mode efficient damping network with few compo-
power supply as depicted. This type of power nents and low losses.
supply is used in particular as a flyback convert-
er in entertainment electronics equipment, for
example in television sets and video recorders,
to provide a regulated DC output voltage. Note
that the secondary circuit is not pictured here.

Outline of the problem addressed by the

invention:
At the instant when the transistor blocks the
current interruption causes a high di/dt, which,
due to the inductance of the transformer,
produces high-voltage peaks. For example,
if the power supply is operated from a 230V

48 Patent teaching kit – Sub-module C

Flyback and forward converters are different
topologies of isolated (i.e. transformer-coupled)
DC-DC converters. They share a similar configu-
ration on the primary side of their transformers
but have different secondary circuits.

Restricting the scope of the claim to the flyback

topology would be too limited as it would
deprive the applicant of a deserved reward for
the disclosure of his invention. A fair generalisa-
tion, given the contribution over the art, would
be a broader wording such as "switched mode
power supply", which covers both alternatives.

Patent teaching kit – Sub-module C 49

A parallel connection can be interpreted in a
broad sense as also covering cases where the ele-
ments are combined with others (like R6), as long
as the elements referred to as "in parallel" are
in parallel branches. The branch R+C, i.e. C , is in
parallel with the primary winding.

50 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 51
"Snubber" is a synonym for "damping circuit" US6061253 shows all the features of claim 1
or "clamping circuit". (although only by accident). The subject-
matter of the applicant's claim therefore does
not meet the novelty requirements of the
European Patent Convention. To get a patent,
the applicant must amend the wording of the
claim, describe the invention more precisely,
and differentiate it from the prior art.

52 Patent teaching kit – Sub-module C

Check the material revealed in the prior art Due to the subdivided windings and capacitors
searches: in parallel, the sub-windings of the primary are
– Does the invention have any feature individually damped, and not the primary as a
not disclosed in the prior art? whole.
– What are the advantages of the invention
compared to the prior art? As a result of the specific dimensioning of the
invention, the oscillations produced when the
It is clear, for instance, that the actual function- switch is deactivated have different resonant
ality of the circuit of the US document (based frequencies and partially cancel each other.
on an auxiliary switch and active snubber) is This results in a more effective damping and
different from that of the invention. at the same time keeps the total capacitance
This suggests that there must be some room small (capacitors in series), meaning that the
for amendment to restore the novelty. discharge current is quite low at the time of
activation of the switch.
The subject-matter of the dependent claims
and the content of the description must be
assessed in that light.

Patent teaching kit – Sub-module C 53

54 Patent teaching kit – Sub-module C
Patent teaching kit – Sub-module C 55
Sub-module C
Understanding
patent claims
(f) Drug for the treatment of cancer

Teaching Kit – Sub-module C 57

Definition of the terms used in the example. You have two options for defining your
invention:
Note 1. Pt coordination complex only =
While real patents have been used in this normal chemotherapeutic agent
case study, the various steps in the procedure 2. Combination of Pt coordination complex
followed by the applicant/attorney have been with HSP 90 inhibitor
adapted for the purpose of this presentation.
How can you protect it from imitation?
– Three ways of defining claims, with an ex-
planation as to why these ways are suitable/
unsuitable.

– Exceptions to patentability: No patents shall

be granted in respect of methods for the
treatment of the human or animal body by
surgery or therapy and diagnostic methods
practised on the human or animal body
(Article 53(c) EPC).

58 Patent teaching kit – Sub-module C

Note Cisplatin is used as a chemotherapeutic agent,
The product claim is formulated as a second so this document is novelty-destroying.
medical use (EPC 2000), but this aspect will not
be covered in this presentation.

You should carry out a prior art search before

you start researching or drafting your claims.

Patent teaching kit – Sub-module C 59

Analysis of features and comparison with the This is the first draft of an independent claim
prior art: the combination of a Pt coordination relating to the invention.
complex and an HSP 90 inhibitor was not
disclosed in Cancer Treatment Reports.

60 Patent teaching kit – Sub-module C

Applications are normally structured to include This slide looks in more detail at the two kinds
both independent and dependent claims. of claims referred to in the previous slide
(Rule 43(3) EPC):
The independent claim describes your invention
in very general terms, to allow a broad interpre- Claim 1 = independent claim
tation in any infringement lawsuits. An independent claim states the essential
features of the invention. In our example
The dependent claims describe specific ways this means:
to put the invention into practice. They often – a combination of a first compound
describe the most commercially successful (= platinum coordination complex) with
embodiments of the invention. – a second compound (= HSP 90 inhibitor) and
– the use of this medicament (= treatment of
For example an independent claim 1 could read: breast cancer)
"A writing instrument comprising two chambers
which are linked by a hole." A dependent claim Claims 2-4 = dependent claims
could read: "The writing instrument of claim Dependent claims define particular embodi-
1, characterised in that its length is between ments of the invention, i.e. since they refer to
10 and 15 centimetres." other claims, they relate to a combination of
the essential features of the invention (of the
independent claim) together with one or more
further features. E

Patent teaching kit – Sub-module C 61

E e.g. claim 2 refers to claim 1 and therefore The prior art found by the EPO is in Chinese.
relates to the features of claim 1 in combination Does this matter?
with a further feature, which is that the HSP 90
inhibitor is 17-AAG. No, because the state of the art comprises
everything made available to the public by
The same applies to claim 3, since this claim means of written or oral description, by use
also refers to claim 1. It therefore relates to a or any other way before the filing date of the
combination of the features of claim 1 with European patent application (Art.54 (2) EPC).
a further feature, which is that the platinum The language itself is not relevant.
coordination complex is oxaliplatin.
Examples of prior art disclosure (provided they
Note were made available to the public prior to the
Claim 4 has the same wording as claim 3, but filing date of the European patent application):
refers to claim 2! This means that claim 4 relates – a journal article written in Hindi
to a combination of the features of claims 1 – a lecture to students at a university
and 2 and additionally states that the platinum – a presentation at a congress
coordination complex is oxaliplatin. – the marketing of a product
– a disclosure on the internet
(provided the publication date
can be proven beyond any doubt)
– a book E

62 Patent teaching kit – Sub-module C

E Examples which do not constitute prior art Comparison of the disclosure of the prior art
disclosure: document with the proposed claim(s).
– a presentation given to a group bound by
a confidentiality agreement (not public!)
– a journal article published four years after the
filing date of the European patent application
(not published before the filing date)

Patent teaching kit – Sub-module C 63

Questions to be asked by the applicant prior Although the subject-matter of claims 2 -4
to filing an amended set of claims. is novel, no inventive step can be found in
claims 2 and 3.

64 Patent teaching kit – Sub-module C

Comparison of the effects achieved by the Explanation of the inventive step.
subject-matter claimed with those of the
available prior art.

Patent teaching kit – Sub-module C 65

Green: The European patent application must Final version of claim 1.
not be amended in such a way that it contains
subject-matter which extends beyond the
content of the application as filed (Article 123 (2)
EPC). In other words, all amendments must be
based on the content as disclosed right from
the filing of the patent application.
Example: Where a patent application relates on
the date of filing exclusively to a composition for
use in the treatment of breast cancer, it will not
be possible during the examination procedure
for this application to claim the composition for
use in the treatment of headache.

Red: Differences between the prior art

document found by the patent attorney and
the present patent application.

Yellow: Differences between the prior art

document found by the EPO and the present
patent application.

66 Patent teaching kit – Sub-module C

Sub-module C
Understanding
patent claims
(g) Automatic power switch for
hearing aid
Note
While real patents have been used in this
case study, the various steps in the procedure
followed by the applicant/attorney have been
adapted for the purpose of this presentation.

68 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 69
Instead of defining the loudspeaker, microphone Claims are usually structured to include
and corresponding circuits as such, patent both broader, independent claims and more
jargon often defines features by giving them a specific, dependent claims. The independent
number: first acoustic trans-ducer, first signal, claim usually describes the invention in very
second detection circuit. This is a broad but general terms to allow a broad interpretation
clear way of describing the features, since they in infringement lawsuits. The dependent claims
can be easily referred to without having to usually describe specific ways of realising
name each one precisely. the invention that the inventor regards as
economically attractive. The dependent claims
are often tailored to fit exactly how you would
expect competitors to realise the product.

For example, an independent claim might read

as follows: "A writing instrument comprising
units a and b." A dependent claim could read:
"The writing instrument of claim 1, characterised
in that its length is between 10 and 15
centimetres."

70 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 71
72 Patent teaching kit – Sub-module C
Note that the new problem (detection of the
removal of the hearing aid from the ear without
relying on the unpleasant occurrence of
feedback) is different from the initial problem
we wanted to solve ("use less battery").

This initial problem has already been solved

by prior art document US 4955729.

Now the assessment of the non-obviousness

(=inventive step) of the application is based
on solving the above-mentioned new problem
(removal detected without relying on feedback).

Patent teaching kit – Sub-module C 73

 Note that there is no mention of what happens
when insertion or removal is detected, except
in the dependent claims.

The invention as newly claimed is novel with

respect to the prior art, and is not obvious
vis-à-vis the prior art, in that it solves the new
problem (detect removal without relying on
feedback) in a non-obvious way.

The addition of the feature of reducing the gain

when removal is detected would restrict the
claim too much, and the inventor would not
have protection for all aspects of his invention.

74 Patent teaching kit – Sub-module C

Patent teaching kit – Sub-module C 75
Impressum

Published and edited by

European Patent Office
Munich
© EPO 2011
Second edition

Responsible for content

European Patent Academy – Academia & IP Research unit
External authors:
Duncan Matthews (Core module 2)
Nils Omland (Core module 1, Sub-module A, Sub-module C/a)
Terry Pollard (Sub-module B)
EPO authors:
Ernst Bendl (Sub-module C/f)
Isabelle Brandt (Sub-module C/g)
Roland Feinäugle (Sub-module A)
Lisa Imbernon (Sub-module C/e)
Luis Rodríguez (Sub-module C/c)
Nils Untermann (Sub-module C/d)
Ekkehard Weinberg (Sub-module C/b)

Concept and co-ordination

European Patent Academy – Academia & IP Research unit

Design
EPO Graphic Design Munich

Photos
Cover: Getty Images
All other: EPO or Getty Images

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Mediahaus Biering GmbH
München

CD production
CMS Compact Media Service GmbH
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