This article has been written by Debojit Das, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.
Table of Contents
Introduction
Intellectual Property Rights (IPRs) are an assortment of intangible rights that comprise patents, copyrights, trademarks, trade secrets, and mask-works. Getting or the possibility to get IPR’s is fundamental for start-up organizations to draw in investment and to attract venture capital. A patent, which awards inventors restricted syndications or monopolies in return for invention disclosure, requires convenience, novelty, and non-obviousness.
In business cost is everything. In that capacity, in drafting and prosecuting patents the least-cost provider normally wins the business. While this methodology may well bring about acquiring patents at a lower cost, it does little to make genuine incentive and real value from a patent portfolio. Except if that is one’s sole technique – to gather an enormous number of patents that will do nothing and sit idle.
Utilizing this ease arrangement of low-cost solution places your business into an endless loop which supports itself through the criticism circle of inferior quality patents. This endless loop is adverse to the objective of getting significant patent resources.
A patent provides negative rights
A patent furnishes its proprietor with a negative right. That is, the patent proprietor doesn’t get syndication to produce, sell or practice the asserted innovation. Keep in mind, it’s a negative right. A patent just permits its proprietor to keep others from assembling, selling or practising the claimed invention.
Who authorizes that right? In India, just as in most nations, there is no legislative office or governmental agencies to implement private entities’ patent rights. Instead of that, it is the obligation of the patent proprietor/owner to recognize likely infringers and either arrange a license or seek infringement through a common civil suit. Basically, a patent itself has no capacity to either stop encroachment or gather compensation or damages.
It is dependent upon a patent proprietor to take on these expenses and apply the colossal exertion to see infringement claims through to their end. It ought to be clear, in this way, that toward the day’s end – a patent is just worth however much its proprietor will spend to shield it.
Understanding patent drafting
Let’s be aware of what is Patent drafting before we get into the basic mistakes or rather miss-steps that one ought to dodge while drafting. Patent drafting is the way toward composing patent specification that obviously and adequately portrays an invention. It is a vital advance step during the time spent on patent documents. Further, the possibility of getting a patent award relies to a great extent upon the nature of drafting of patent detail. A total patent application incorporates different areas and includes various sections that structure the piece of a patent detail. The Patent Office characterizes these segments and incorporates the Title of the invention, Field of the invention and Background of the invention. They additionally incorporate a Summary of the invention, a Brief depiction of the drawings, and a detailed portrayal of the encapsulations, embodiments and Claims.
The claims are the main piece of the patent specification and characterize the extent of security of the invention. As such, the claim calls attention to the novel and imaginative inventive parts of the invention. That is the viewpoints that make the invention deserving of patent assurance.
Patent drafting mistakes
Drafting a patent application isn’t simple. A patent application needs to depict one’s creation totally, and assuming one truly is qualified for a patent, probably some part of one’s development is new and non-self-evident, which implies that until now it hasn’t existed. Depicting something new that has not recently existed if to a greater degree a test than the vast majority figures it out.
Albeit a patent specification appears like a general document or as though an overall archive portraying an invention in detail, it is significantly more than that. A patent specification is a techno-authoritative or one can say it is a techno-legal document. Through this archive or document, an invention and the extent of security or protection of the invention is recognized. As the patent application is of such significance, it isn’t prescribed to a creator or an inventor to draft his/her own patent specification.
By and large, an inventor may not know about every one of the significant principles and practices in drafting patent specification. Besides, an inventor may not know about the outcomes of drafting their specification in an expansive or a thin way.
Considering the above-mentioned facts, how about we look at a portion of the basic mistakes or slip-ups that can happen while drafting patent specifications.
Inadequately depicting the invention
The absence of divulgence of adequate information in the patent specification is one of the regular mix-ups. This happens when the specification is drafted by an innovator himself or by an unpractised patent specialist. Likewise, this occurs because of the suspicion that the individual perusing the patent application will comprehend the creation appropriately with the given details.
In any case, drafting the patent specification with that viewpoint prompts an inadequately composed patent specification. The patent law requires a candidate to give a portrayal that is effectively understandable. By giving an insufficient and ambiguous description, the chances of getting a rejection on the patent increase definitely.
Further, such patent specification neglects to bring up the novel and creative highlights of the invention. Thus, it is critical to cover everything about the invention. Since this guarantees that an individual having common ability in the craftsmanship may get it and understand it.
Asserting the invention too comprehensively or broadly
This is another basic mix-up that a youngster in patent drafting performs. For expanding the extent of protection of their invention, the majority of the inventors attempt to claim their invention too comprehensively and broadly. The inventors normally do this to cover however much protection as could reasonably be expected from their patent application. Notwithstanding, asserting or claiming the invention too comprehensively can make the extent of protection of the invention uncertain. Besides, claiming the invention too comprehensively likewise welcomes the odds of infringing another patent. One of the diverse reasons why inventors claim their invention in such a way is on the grounds that they fear uncovering their insider facts or process. In any case, to get a patent award or patent grant, it is essential to clarify the invention explicitly and draft claims that are distinct and succinct.
Asserting the invention too explicitly or specifically
For a creator or an inventor, the game plan or technique for playing out their invention is in every case exceptionally clear. Because of this, it turns out to be fairly hard for the creator to consider a more extensive rendition or a substitute exemplification of their invention. For instance, on the off chance that an inventor made a seat with four legs, they may not as a rule might suspect whether a similar seat can work with three legs. In addition, in the application drafted by the innovator, he may likewise wind up including the dimensions of the seat. Drafting a claim in such a way restricts the extent of one’s invention to that specific count and measurement. Accordingly, it is essential to have the option to draft patent claim thinking about every one of the potential exemplifications of the invention.
Utilizing conflicting or inconsistent terms
One of the necessities for composing a very much drafted patent specification is the utilization of consistent terms. Claims containing conflicting or inconsistent terms can cause unintended results in a patent suit or patent litigation. An illustration of conflicting terms in a patent application may incorporate the utilization of terms ‘container’ and ‘vessel’ to characterize something very similar. The utilization of both of the terms is typical in a published article. In any case, in a patent specification, it is fundamental to be predictable and consistent with the terms. An inventor who is ignorant about the drafting rules may regularly submit to this mistake of utilizing at least two unique terms to characterize something very similar.
Drafting claims without holding to the drafting rules
Patent claims are written as per certain principles and rules. Patent Office’s characterize these rules and are important to follow for appropriately drafting the claims.
Inability to draft the cases as per these principles mentions the ground for criticism and objection as well.
The majority of the guidelines are normal in practically the entire jurisdiction. A portion of the principles/rules include:
- The claim ought to be written in a solitary sentence that is in a single sentence.
- The claim ought to incorporate a preamble, a transition phrase and a body.
- Each “new” component or element ought to be presented utilizing ‘a’ or ‘an’ for the first time, and afterwards utilizing ‘the’ or ‘said’ during resulting utilization.
Case law/Case study
In a case between Chef America Inc versus Lamb-Westin Inc, the Federal Circuit gave a decision of non-encroachment on the grounds that the patentee utilized “to” rather than word “at” in their claim language.
In the patent issued to Chef America – US Patent 4761290, the case expressed “heating the resulting batter-coated dough to a temperature in the range of about 400°F to 850°F”.
The district court said that as indicated by the claim language, the actual batter is to be heated to the expressed temperature.
Notwithstanding, the contention of the patentee was that the temperature is of an oven. That is, it is the temperature of the oven where the mixture will be heated, and not of the dough itself. The patentee further contemplated that the previous made little sense as warming the dough at that temperature will consume and burn the actual batter.
The detail likewise gave an illustration of heating the batter “at” a specific temperature, at the same time, in the claims; the candidate had composed “to.” In perspective on the equivalent, the Federal Circuit interpreted this as a cognizance choice by the patentee to utilize “to” instead of “at” and gave the decision of non-encroachment.
The decision of using associating words: “Comprising” versus “consisting of” or “having”
“Associating words” or “progress words” are the words that go between a component in a claim and the list of things that make up the component. Each has its own unique significance and special meaning, and one can seriously restrict one’s claim by the choice of some unacceptable word.
“Comprising” or “comprises” (“open” language) – The gadget has in any event the list of things that follow “comprising”, however may have different things also. This is the favoured transitional word for most circumstances.
“Including”, “containing” or “characterized by” are comparable to “comprising”, yet are not suggested in patent practice. For example, an improved windshield washer liquid includes water, soap and acetic acid. This case would cover washer liquid with these ingredients, and whatever else one wanted to blend in with it – colouring, liquor/alcohol to hold it back from freezing, scent to make it smell, whatever.
“Consisting of” (“closed” transition language) – The device would have the accompanying list of components and that’s it. In a chemical claim, the claimed compound has just the listed components, and no others. An accused product, technique, method or compound which has extra parts won’t encroach or infringe. For example, an improved windshield washer fluid comprising water, soap and acetic acid. This case would cover washer fluid with just these ingredients – add liquor/alcohol, and it doesn’t encroach.
“Consisting essentially of” – The device has the accompanying list, and potentially some immaterial different things which don’t really impact the essential and novel qualities of the invention. This is typically just utilized in chemical claims, where what you mean is that there may be traces of different synthetics or chemicals, however for the most part the substance is composed of the discussed list. Except if one truly means this limit, it is best not to utilize this momentary expression. For example, an improved windshield washer fluid consisting essentially of water, soap and acetic acid.
The extent of this claim isn’t actually clear. It would cover washer fluid with just these ingredients, in addition to insignificant added substances – the scent, maybe. Add liquor/alcohol, and it presumably doesn’t infringe, since that may change the essential attributes of the liquid.
“Having” or “composed of” – It is best not to utilize these transitional/temporary words or expressions, as their significance isn’t clear. The Examiner (and a court) may decipher them as open or closed – one will not know until it is too late of no return. For example an improved windshield washer fluid having water, soap and acetic acid.
Claiming an outcome or a result
This is a troublesome idea for most inventors to grasp on, however, it is vital. One may have had the outcome or result as the main priority when one made the invention, yet it’s the invention on which one gets the patent, not the outcome or result. In other words, one can’t guarantee an outcome or result. One can just guarantee a mechanical assembly, apparatus, strategy or method which achieves the outcome or the desired result. For instance: One may have had an issue removing the lug nuts from vehicle wheels. One find that on the off chance that by smearing a combination of axle grease and graphite on the strings before one put the nuts on, they’re simpler to take off the next time.
You can’t guarantee or claim:
An anti-seize mixture which permits lug nuts to be removed without seizing.
Or
A technique for eliminating lug nuts more effectively than previously.
You can claim:
An anti-seize mixture containing axle grease and graphite.
or
A method for keeping nuts from seizing to the strings or threads of wheel lugs involving the means of removing the nuts, spreading a combination of axle grease and graphite to the strings, and threading the nuts onto the threads.
On the off chance that one need to specify the outcome to make the curiosity or application more clear, one must do it by characterizing the invention first, maybe characterizing the application in the claim preamble, at that point saying “such that…” or “wherein…” and giving the outcome, characterized regarding the creation.
An anti-seize mixture for application to the strings of wheel lugs, including axle grease and graphite, with the end goal that when the blend is applied to the threads, nuts are kept from seizing to the threads.
Utilize this methodology sparingly, in any case. On the off chance that the combination were novel, all by itself, it is greatly improved essentially to guarantee the blend and overlook the “such that” provision totally.
Too little detail in claims
Try not to avoid whatever with regards to a case which is required to recognize the case from the earlier workmanship i.e. prior art. Essentially, one ought to ask oneself, “have I remembered for the broadest case all aspects of my innovation which makes my invention new, as contrasted and what went previously”? This is somewhat of a tightrope walk, since one likewise doesn’t have any desire to remember whatever for the broadest case which isn’t required.
Dependent claims which broaden or negate independent claims
The capacity of a dependent claim is to limit the claim whereupon it depends. Hence, be certain that all dependent claims present extra limitations or add extra components or characterize terms in a narrowing manner from their parent claims.
For example: Assume the main case is:
Claim 1: A gadget including in any event three gronkheisers, a portoflan armature having a length of 3-5 meters coupled to the three gronkheisers, and a nylon webbing encompassing the gronkheisers.
The dependent claims are:
- The gadget of claim 1, in which there are two gronkheisers. Wrong – the main claim says there must be at any rate three gronkheisers, so two is more extensive or broad.
- The gadget of claim 1, in which the nylon webbing is plastic. Wrong – “plastic” is a nonexclusive or generic term for the particular “nylon” – these two claims ought to be traded, with “plastic” in claim 1, and “nylon” in claim 3.
- The gadget of claim 1, in which there is no webbing. Wrong – dependent claims should add components not eliminate them. This claim would be more extensive than guarantee claim 1, since it would characterize a gadget with just four components rather than five.
- The gadget of claim1, in which the length of the portoflan armature is 9 meters. Wrong – Claim 1 said the length is somewhere in the range of three and five meters, and 9 meters is beyond what five, so no armature could find a way into both this claim and its parent.
- The gadget of claim 1, in which there is a mounting section instead of the webbing. Wrong – One can’t substitute components along these lines. One should pick a nonexclusive or generic term that envelops the two alternatives, and make each a dependent claim, all things considered.
- The gadget of claim 1, further including a mounting section connected to the webbing. Right – this adds a component, so it is smaller than claim 1.
- The gadget of claim 1, in which the portoflan armature is made of ferrous metal. Right – this further limits the construction of the armature.
- The gadget of claim 1, in which the length of the portoflan armature is somewhere in the range of 3.5 and 4 meters. Right – this reach limits the reach in the main claim. In any case, be certain that some place in the detail says 3.5-5 meters is liked, or clarifies why this reach has importance.
Not asserting the invention
This ought to be genuinely basic, yet it is stunning how frequently claims overlook the main issue altogether. Try not to move so diverted by the craft of composing claims that one dismisses the objective – portraying one’s invention.
Is the invention a method; however you’ve composed apparatus type cases, or the other way around?
For instance, one’s innovation may be utilizing a spool valve with a certain goal in mind to control a programmed transmission – say, when one pushes the spool valve right in, it moves the transmission into Park. You may compose an exceptionally elaborate claim, something like:
A control framework for an automatic transmission, including:
- A spool valve having a spool and a sleeve, the spool having four lands … (and so forth) … the sleeve having five ports, the primary port found …
- The spool having a first position, a subsequent position …
- A first entry interfacing the primary port of the sleeve to… (Something in the transmission)
- A subsequent entry interfacing the second port of the sleeve to … (something different)
That is all fine, however eventually, one may find one had been so enveloped with portraying every one of the lands on the spool valve and the passages between them, that one neglected to check whether the entirety of this design truly achieves the innovation. Is there anything in the case which says that when the valve is moved to one end, the transmission shifts into Park? If not, one has overlooked what’s really important.
It would have been vastly improved claiming:
A control framework for a programmed transmission including a spool valve having a spool and a sleeve, the valve is coupled to an inventory of liquid and in any event a transmission park input which moves the transmission into Park, wherein when the spool is moved to a finish of movement in the sleeve, water-powered liquid is directed to the park input, moving the transmission into Park.
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Conclusion
The objective in a patent application is to give a full, clear, and careful portrayal of the innovation in a manner that especially brings up and particularly distinguishes what the inventor believes what he or she has created and needs the patent to cover. Lamentably, while articulating an invention numerous innovators succumb to a large group of regular slip-ups. Saying that, one needs to portray one’s innovation in full, clear and accurate terms, which is the thing that the law requires, is totally fine and valuable except if one doesn’t have the foggiest idea of how to approach depicting one’s invention in full, clear and precise terms. Furthermore, that is the issue with patents and patent law, the words utilized are basic enough however the ideas the words portray challenge simple understanding.
Accepting what the reader knows is dangerous. We as a whole do it when we talk about things we are personally acquainted with, however, when it is done in a patent application it is an immense misstep. One absolutely emphatically can’t accept a specific experience with one creation, after all that one has concocted must somewhat be exceptional and imaginative. It is exceptionally perilous to expect that the reader will fill in any equivocal openings in the way one wanted. Thus, when drafting a patent application it is basic to attempt to be as explicit, and unequivocal, as could really be expected. Consider giving a model or two to assist the substance with trip what it is one is portraying – while not needed any examples can be especially useful in a patent application.
References
1)https://www.ipwatchdog.com/2015/07/18/top-5-mistakes-inventors-make-invention/id=59286/
2) https://www.bpmlegal.com/content/howtopat7
3)https://www.ipwatchdog.com/2014/05/31/patent-drafting-top-5-critical-things-to-remember/id=49882/
4) https://www.greyb.com/patent-monetization-mistakes-and-strategies/
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