A Practical Guide to Drafting Patents Gwilym Roberts

Second Edition

A PRACTICAL GUIDE TO DRAFTING PATENTS

Gwilym Roberts

With an introduction by The Rt Hon Sir Colin Birss

The moral rights of the author have been asserted.

All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author.

© 2023 Gwilym Roberts. Second Edition.

First published in 2006 by Sweet & Maxwell.

Published and placed on sale by:

The Chartered Institute of Patent Attorneys

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20 – 23 Holborn

London EC1N 2JD

United Kingdom

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Website: www.cipa.org.uk

ISBN 978-0-903932-73-8

Printed and bound by Hobbs the Printers Ltd – www.hobbs.uk.com

ACKNOWLEDGMENTS to the first edition

The Intellectual Property Education Trust approached me asking if I would write a book of patents. I had been thinking about it but if it had not been for their unique blend of encouragement and patience I would not have got any further. Paul Chapman and Elizabeth Crooks provided the detailed guidance on biochemical and chemical drafting respectively. Various secretaries worked hard on my behalf, notably Liz Caffrey. I must also acknowledge the people who trained me, amongst them Peter Hale, Michael Maggs, Chris Palermo, Julian Bardo and Victor Nettleton.

ACKNOWLEDGMENTS to the second edition

For the second edition I would like to thank my PA, Emma Ward, and my other colleagues at Kilburn & Strode who contributed to this edition: Jamie Atkins, Elizabeth Crooks and Daniel Jarrett. On top of these, the book would not have been completed without the wonderful input of Hannah Auger, Hirohito Katsunuma, Chulhee Lee, Michael Newton, Chris Palermo and Sarah Wang.

INTRODUCTION

Who better to draft A Practical Guide to Drafting Patents , published by the Chartered Institute of Patent Attorneys, than Gwilym Roberts? In theory one would expect that his long experience as a UK and European Patent Attorney would make him the ideal author, and it is fair to say that the comprehensive content of this 2nd Edition of the book does bear that out. However, it is the practicality of this work which is so impressive. It stands as a testament to another aspect of the author’s character – that is his great skill as a communicator. As well as chapters on the legal requirements of patent drafting and on the various component parts of the document (the claims, the description and so on) there are also illuminating chapters on commercial considerations, international aspects and even tricks of the trade. The work is a welcome and serious effort to demystify the exercise of drafting a patent and to offer concrete assistance to those with the job of describing in words something which may never have been described in words before, a wholly new and (hopefully) non-obvious invention.

Drafting is not the most exciting exercise at the best of times but drafting patents in particular may be thought to be less than glamorous. Gwilym has put a great deal of time and effort, as well as his considerable expertise, at the disposal of the patent profession as a whole. He deserves our thanks for that.

The Rt Hon Sir Colin Birss, January 2023

PREFACE to the first edition

A patent is the most challenging and demanding legal document that anyone will ever have to produce. It may not have the complexity of a detailed contract nor the bulk of documentation in a mergers and acquisitions deal, but drafting a patent document requires far more true intellectual energy than either of these. There are two reasons for this. First of all it must, by definition, be different from all patent documents that have gone before it. In other words, it must relate to an invention. Secondly, it is impossible to add subsequently to the content of a patent even though many creative minds may be applied to circumventing the patent during its lifetime. So it has to be completely future proof.

Both of these constraints are in stark contrast with other legal documents. In the area of contracts, for example, most start with a core set of clauses which the drafter hopes will cover all eventualities. They never do, however, and all kinds of outcomes just aren’t contemplated. The next time round, therefore, the previous version is simply updated with additional clauses to cover all the things that went wrong the first time. Over many iterations the contract grows into the labyrinthine document that we see lawyers slap down on the table in the movies. In other words, the same document is used again and again, the only changes being reactive changes to problems with the previous versions.

The patent drafter has none of these luxuries. Using an old patent will not do as there is a new invention to protect. And waiting for things to go wrong and then re-writing is not acceptable either. The patent attorney has to anticipate everything that could go wrong for the next 20 years and make sure that their document covers it. What other legal practitioner can boast that?

PREFACE to the second edition

It’s 17 years since this book first appeared but even now occasionally someone says something nice about it so when lockdown came around it was either this or mastering sourdough. The exercise of doing a full update has been fascinating – I have learnt a little more but not as much as I’d hope, the law has changed but not as much as you’d think and best practice has barely moved. This slow rate of change is no bad thing; the patent system has had well over a century to mature and many thousands of great minds have contributed to its development. It hasn’t and must never reach steady state, but a lot of the review was affirmation and updates to case law (claims don’t change but the courts love rewriting the rules for interpreting them), plus a strip out of a host of oldschool gender assumptions; genuine apologies for any I missed.

Gwilym Roberts

1. INTRODUCTORY COMMENTS

Drafting is generally presented as the core skill of the patent attorney and yet there is remarkably little guidance in writing on how to do it. Traditionally, the patent attorney learns to draft by experience; drafting under supervision, learning from mistakes made and then honing their drafting capabilities over the years. There have been papers and training manuals dedicated to or at least touching upon the topic but these typically tell the reader what not to do. The statutes setting out the basic legal criteria tell you what to do but not how to do it. But after that you are on your own until you get to the case law, which tells you what you should have done.

One of the main reasons there is so little dedicated literature is that drafting is a multifaceted skill that does not lend itself to easy definition. Most patent attorneys start in a position where they cannot draft and no one can explain to them how they should draft and then move smoothly to a position where they can draft but cannot explain to anyone else how they do it. This book is an attempt to provide some positive guidelines about what the patent attorney should be doing when drafting a patent application, based on over 20 years of lecturing and training by the

author in this area and a personal caseload of hundreds of drafts spanning a range of technologies and client types and needs.

A theme throughout the book is that drafting is not as difficult as it seems at the outset. There are a few core principles that have to be followed, around which are based many, many layers of practice. I outline what I view as all of those core principles in this book together with as many tricks of the trade as I have come across.

It is the core principles that form the basis of the intuitive process used by most experienced drafters and which should be enough to allow a patent attorney to draft a good, safe, strong patent. The tricks of the trade are what seasoned practitioners pick up and will vary from person to person – to some extent they will differ because of areas of technology or client requirements and will always, in the end, be driven by experience. They can transform an acceptable patent into a good patent and provide many shortcuts that lessen the drafting burden. By highlighting some of these and the reasoning behind them, I hope I can at least accelerate the training process, and this is probably the best result the reader can expect from this book.

Another aim is to demystify the process.

INTRODUCTORY COMMENTS

Too often, drafting an application is identified as the most difficult thing we do – which it is, and the work is put off as too taxing – which it need not be. Inventing is not slowing down, and increasingly patents are being viewed as commodities to be traded in the invention marketplace. So, the workload is going up and with that we have to accept drafting as a vital yet everyday part of our practice.

Drafting is and always has been an international practice. A patent application prepared in one country could end up in many jurisdictions and languages, but is fettered by the fundamental and universal rule that you can’t add information to it. From decades of experience, this author has learnt a lot about practices across the globe and continues to marvel at just how unified the system really is. A patent drafted for the European Patent Office (‘EPO’) tends to meet with high regard around the world but there are always improvements available and they are touched on here where possible, together with short sections on practice points for the other ‘IP5’ jurisdictions – US, Korea, Japan and China – written by local specialists. As a result, this book should serve for European practitioners looking outward as well as Rest of World practitioners looking to factor in how we approach drafting here before the EPO.

It would be impossible to learn drafting just from a hypothetical discussion such as this setting out how to do it. Practical experience has to be involved as the best way to learn the business. You will not start this book never having seen a patent and finish it being able to draft one but, with any luck, the point at which it becomes an intuitive skill will be brought a little closer.

2. WHAT IS A PATENT, AND WHO CARES?

What is a patent?

Nobody likes a monopoly except the person who owns it. Most developed economies are anti-monopoly and have various procompetition powers to undo the damage that monopolies are considered to inflict. One area where powerful monopolies are allowed is that of intellectual property. Even here, though, a monopoly does not flourish unchecked; various strict controls have been put in place to ensure that monopolies continue to be a precious and comparatively rare commodity. Probably the most powerful intellectual property right of all is the patent, and the checks and balances that have been put into place by the authorities largely determine the form that the patent has to take.

Part of the power of a patent is that it is a ‘pure’ monopoly, meaning that a third party can transgress unwittingly, for example infringing without any knowledge that someone else has already made (and patented) the invention. The power is not limitless: it is important to remember that the patent is also purely an exclusive right. Although you can stop other people working your patented invention, you may not in fact have the right to work it yourself, and this is where some interesting cross-licensing possibilities open

up. Even so, it is a powerful tool requiring monopoly-blunting measures to protect the public.

In return for allowing the patentee to prevent other people performing the patented invention, two particular requirements have been put in place that must be met before a patent can be granted. First of all, the patent must tell the public what the invention is and how it is performed, i.e., it must be delimited and it must be ‘sufficient’. As a result, the store of human knowledge is increased. In something of a twist, however, the public are also informed what they cannot do: this is the scope of the claim defined in the patent. Because of the limited duration of the patent, long after the monopoly has ceased, the underlying new technical information continues to benefit the public, and, before that, at least they know where they stand.

The second requirement for a patent to be granted is that it should only reward creativity. Originally, going back hundreds of years, patents were given as a favour or for payment in relation to areas of technology or commerce irrespective of whether they were new or old. The modern system, however, only rewards actual inventions with patents. In other words, the patentee must have added

something to the public domain, usually in a non-obvious way, to merit grant of a patent.

One of the main goals for a patent attorney is to define the scope of the patent to cover the full extent of the creative effort. And one of the main games played in the prosecution (patent granting) process lies in the conflict between the patentee, who wants this as broad as possible, and the Patent Offices charged with granting the patent, who want to keep it narrow, and away from what has already been put into the public domain. This can be expressed simply as the requirement that the patent must relate to an invention. In practice, the goal is to strike ‘the balance’ between as broad useful protection as the patentee can get, and that which would trespass on the public domain. As one observer has put it, the patent claims must cover ‘all of the invention, and none of the prior art’.

Long before we get into detailed legal analysis of the statutes and conventions governing the form of patents, therefore, the basic requirements for the constituent parts are already defined by public policy considerations. In particular, the principal components are governed by the ‘payback’ demanded by the system; the quid pro quo for the monopoly.

First of all, a description is required, setting out how the invention is performed, increasing the store of human knowledge and hence benefiting the scientific community at large. Secondly, the patent includes claims that define how far the monopoly extends. The claims define the invention and perform the dual task of telling third parties what they cannot do, and defining the creative contribution made by the patentee. The claims, therefore, are the part of the patent that is specifically designed to strike ‘the

balance’ in a beautifully elegant way explored at length later.

The art of drafting – or crafting – patent documents has developed over the last 150 or so years to a fine one where legal, commercial and technical considerations are juxtaposed to get the balance between the patentee and the public just right. The drafting of the patent claims is the most unnatural part, requiring the patent attorney to navigate ‘invention space’, a place where patent attorneys seem to reside comfortably. Indeed, drafting claims is generally viewed as the single most important thing a patent attorney can do. They are what many of the qualification examinations are based on and they form the cornerstone of prosecution, licensing and litigation. But the drafting of the description also poses its own challenges and has perhaps attracted less discussion in the literature than it deserves. Indeed, as the attorney’s experience increases, the claims get easier – the description remains a taxing job.

In practice, the patent attorney is faced with more than the comparatively simple public policy considerations underlying the drafting of a patent, also having to contend with sheaves of statutes, conventions, guidance notes and, of course, the case law. One of the greatest difficulties when learning the process is the suspicion that there is simply too much to know and that the welter of requirements pulling in different directions and sometimes seemingly conflicting with one another simply cannot all be met. So, the process becomes confusing and daunting. There are indeed many things to remember, and many ducks to get into rows but the requirements can, in fact, be codified into a manageable set. The astonishing thing is that, once you have boiled down the myriad legal

requirements, the technical issues (in the sense of the technology of the invention itself) and the huge range of potential commercial considerations into this manageable set, then in fact all that we see is that the patent simply has to strike ‘the balance’. The process comes full circle and we see that you just have to get the claim to cover the invention as broadly as possible without spreading into the public domain. One of the main intentions here is to shift away from teaching drafting in the conventional manner – based on what not to do – and to present instead some positive guidance deriving from this manageable set of propositions.

Who cares?

The starting point for this analysis is to establish the manageable set of requirements, identifying and simplifying in particular all of the relevant legal and commercial considerations. One good way of doing this is to ask: who cares? What parties are affected by, or have a relevant interest in the patent? Having identified the right people, and worked out what they want, the issues that need to be addressed emerge and these can be condensed into the manageable set, which then condenses further into ‘the balance’. The technology underlying the invention is less of a concern at this fundamental level and so the discussion in the majority of the following chapters is at a very general level. However, different areas of technology do present their own quirks, and in many cases considerable bodies of practice have evolved in specialist areas. A few of these areas are touched on briefly towards the end of the book, though each could spawn a volume of its own. The same basic conclusions and approaches, however, apply across the entire patenting arena.

The people we have to keep happy

During its life the patent will pass through the hands of many interested parties. At the beginning, the inventor and, where appropriate, their employer company will be closely involved in the original drafting of the document. Once it is filed as a patent application it will be examined by at least one and often many different patent officers in respective jurisdictions. After it has been published, and especially after it has been granted, potential licensees, competitors and infringers will take a keen interest in the patent document as it may well dictate what they can or cannot do, or at the very least what they must or need not pay. When disputes arise over these questions, the patent will also be looked at by the authorities, be they national courts or national or regional Patent Offices and maybe one day supranational courts, although that day seems a long time coming.

All of these interested parties can essentially be divided into two groups: the validity people and the infringement people. The validity people include the Patent Offices, courts, and similar tribunals whose job it is to ensure that the patent is sufficient, relates to a patentable invention and so forth. The infringement people include those whose commercial activities may be affected by the existence of the patent, including competitors, potential licensees and, increasingly, investors in and valuers of companies holding the intellectual property.

If we can tailor the patent to deal with the relevant needs of all the relevant people then it should be a good patent. Of course, we want it to be different things to different people. For the validity people we want the patent to be entirely sufficient and with the strongest

WHAT IS A PATENT, AND WHO CARES?

possible claims in patentability terms – mega inventive. For the infringement people, we want the patent to be barely valid (and grudgingly at that) and carry as little enabling information as possible (ideally none) but we want the claims to be as broad as can be and to catch all imaginable activity.

The interesting thing is that even addressing the requirements for a strong patent from this broad perspective we see that the need for ‘the balance’ is stark. A patent drafter has to walk a tightrope between the legal issues surrounding the validity of a patent and the commercial issues surrounding the question of who and what will infringe a patent, and there is a clear relationship between legal considerations and validity on the one hand and commercial considerations and infringement on the other.

Of course there are crossovers between the two. Although infringement is primarily a commercial consideration, the statutes define in significant legal detail what acts may comprise infringement in addition to setting out the nature and scope of infringement litigation itself. Furthermore, there is a huge body of case law surrounding the question of how to interpret claims and assess their scope, which is an essential issue in any infringement action.

On the legal side, there are some subtle crossovers with commercial aspects as well. As an example, before grant of the patent, many Patent Offices address the question whether a claim is ‘clear’, and often this question boils down practically to identifying whether a third party could, in the future, assess whether they infringed or not.

But the simplest way of navigating the myriad facets of the drafting process is to continue down the division between the

legal, validity aspects on the one hand and the commercial, infringement aspects on the other, if only to see how they meld back together in the finished patent product. So, we start with a general look at who the relevant parties are and what is relevant to them before moving on, in later chapters, to a more detailed analysis of what this means in practice.

The validity people

Dealing firstly with the validity people, and of those, the ones who typically get their hands on the patent documents earliest, we meet the Patent Offices and, in particular, the examiners or examining divisions dealing with a pending patent application. The job of a Patent Office is to make sure that a patent application meets the requirements of its local law for grant of a patent. There is a debate as to whether a Patent Office should act as the referee – ensuring that there is fair play and everyone follows the rules, or the goalkeeper, stopping all unpatentable inventions and only allowing the patentable ones to trickle past. It is fair to say that most jurisdictions take the former approach, namely ensuring that the patent application meets the relevant legal requirements and allowing grant if this can be shown satisfactorily. However, the approach can vary between individual examiners and it may be the case that some prefer guarding the net to carrying the whistle.

In any event, the main points of examination include whether the invention is patentable, whether it is sufficiently described, and whether it is clear and supported. To a large extent the examiner is not particularly interested in whether the resulting granted patent is commercially applicable. For example, Patent Offices will grant patents

WHAT IS A PATENT, AND WHO CARES?

covering telecoms networks spanning multiple territories even though these are practically difficult to enforce, or to ‘second medical use’ patents which are difficult to police. Examiners tend to focus on the technology; even though most Patent Offices will grudgingly consider commercial evidence and issues during the examination process, this is principally carried out to explain why the claims relate to a patentable invention rather than to ensure that they provide the strongest protection available from a commercial perspective.

Similarly, post-grant tribunals such as the courts, the European Patent Office Opposition Divisions and in some cases higher tribunals at national Patent Offices – for example in the US the re-examination and inter partes review fora – also look at the validity of a patent but from a slightly different perspective. In many cases, the post-grant tribunals examine the validity of the granted patent on the basis of a subtly different set of criteria than those used by Patent Offices prior to grant, for example addressing obviousness differently as discussed in more detail later. In addition, although the basic question of patentability is intended to be an objective one, validity is often far more hotly debated in post-grant proceedings simply because, inevitably, there are significant commercial imperatives at play. This will often mean that additional prior art is unearthed either as a result of extensive and costly searches beyond those carried out by Patent Offices, or because of competitor knowledge of prior uses, which a Patent Office simply would not have access to. Furthermore, in many jurisdictions, expert evidence concerning the state of the art is taken into consideration before post-grant fora, which would simply not be available or

cost effective for a Patent Office to invoke during the examination process. This can, in some instances provide a higher hurdle for maintaining validity post-grant than was met by the patentee in obtaining the patent in the first place and the prior art is often coupled with argumentation from a party attempting to revoke a patent that is more vigorous and sometimes more ingenious than that what is required from a Patent Office examiner.

Whatever the differences and discrepancies between the standards applied by the pregrant and post-grant validity people, however, all of them need to be borne in mind when putting the patent together in the first place. This does raise the interesting question of whether one should draft a patent to the (arguably) lower patentability standards of the pre-grant authorities or those of post-grant tribunals. In the end this is a decision for the patentee. However, given the predictability of pre-grant procedure against the comparatively rare post-grant precedents, and the fact that a broad granted patent is immediately a useful commercial tool, most patentees are content to go for a granted patent and accept the risk of the court rethinking validity in the relatively unlikely event of a challenge. Like everything, this has its exceptions; in the world of drafting standards-essential patents (SEPs) all a patent has to do is read as closely as possible onto the standard, for example, but it is rare that the target is as specifically defined as this. Certainly, as long as the patentee has not been hiding anything, the courts are comfortable with starting from a well-examined patent and most patent attorneys draft their cases accordingly, taking the view that it is as much their right to get a broad patent granted as it is for a Patent Office to block it.

Another validity person is of course the

lawyer or patent attorney for the infringement people who may well be retained to review and establish the strength of the patent at some point. Whether that specialist is aggressive or conservative, ingenious or restrained, however, the best they can eventually do is to give an opinion as to what view the authorities will take on patentability and then vow to fight the case as strongly as possible. So as far as drafting the patent application is concerned, these third-party lawyers do not really count as validity people – you just have to assume that whoever looks at it from this perspective will be sensible and know what they are talking about. In the world of IP, there are not many specialists whom that excludes.

The infringement people

Next up, we look at the people who are affected commercially by the patent, the infringement people. The primary target for the patentee in this respect is third parties whose acts the patentee wishes to control or prevent using the patent, that is licensees and competitors. With the current recognition of intellectual property as a potentially incredibly important business asset, financiers and investors are now just as interested in the scope of protection afforded by patents. But both are effectively interested in one thing: how much does the patent cover? As a result, the patent as drafted, through its claims defining the scope of the monopoly, should define the invention as broadly as possible. The invention should be defined in such a way that all possible acts performed in relation to the invention infringe, for example, sale, import, use and (although this is not formally defined as an infringing act) download. Where half of the claimed

invention is carried out in one jurisdiction and the other half in another jurisdiction, it is necessary either to turn to complex legal argument to catch the infringer, or to wait for a development of case law or international law that is, as yet, not even on the horizon. Hence the patent should take into account territorial considerations, not only ensuring that the patent covers as many jurisdictions as is possible and is cost effective, but also that it drills down to acts performed in a single jurisdiction. Of course the patent should cover every form of the invention, whether it be made by the patentee, licensed to third parties or potentially used by the competition.

Post-grant tribunals will also look at infringement and will be the final arbiter of whether or not infringement has taken place, as well as what remedies are provided to the successful patentee in those circumstances. But those tribunals are effectively looking in this respect at the question of how the claimed invention should be interpreted according to their preferred interpretation doctrine and, in particular, whether its scope is broad enough to catch an invention. This is especially the case for borderline infringements, which are, of course, the ones that tend to go to court in the first place. When drafting the patent, although there are various mechanical tricks that can be used to strengthen this position, basic good drafting practice should provide the strongest foundations for a successful finding in the courts in such borderline cases. Theoretically, this should ensure that there are no borderline cases, just clear-cut ones.

It would be difficult explicitly to tailor a patent such that interpretation doctrines were applied favourably; the courts would probably see through such an attempt in any event. Ideally, the well-drafted patent

should catch an infringement squarely and should not need the courts to exercise complex legal tests to assess whether or not the claim encompasses a borderline case. If that were always true, of course, there probably would be no court actions and many more licenses. In reality, a patent should be drafted to catch the invention, and not with any intention of having to rely on the courts to stretch the meaning of the patent to catch infringements. The system, after all, is entirely centred around the invention – as the contribution to the state of the art, and as the thing the infringer wants to gain unfair value from. But the drafter should be resigned to clever litigators making things a little less straightforward.

CONCLUSION

In summary, the interested parties can be divided into those who are concerned with the legal aspects and those who are affected by the commercial aspects. On the legal side, the influences are principally narrowing, that is to say, they tend to drive the scope of the claim down until it is patentably distinguished from the prior art. However, the commercial influence is very much a broadening one – the patentee wants the patent to cover everything possible. The patent attorneys have to find the balance between these extremes and provide the patentee with the broadest tenable claim. Later chapters explore this impossible balancing act in more detail.

WHAT IS A PATENT, AND WHO CARES?

3. ORIENTATION

The approach taken in this book is to consider the legal and commercial considerations behind the patent system in some detail before discussing how this impacts on the practical exercise of drafting a patent. Although it is aimed principally at people who are within the patent system wishing to learn about or brush up their drafting, there may be some readers who are not familiar with the patent system in any detail either because they are completely new starters in the profession or because they are outsiders with curiosity. This chapter is designed to provide some background at a fairly general level to some of the concepts discussed later in the book.

The chapter can also be used to a certain extent as a glossary of many of the terms that habitually appear in the patent. Despite the pedantry required to be a patent attorney, we have done our best not to favour precision of terminology here where it adversely affects comprehension. So, for example, the term ‘patent’ is used quite often even though sometimes ‘patent application’ is strictly meant, the term ‘description’ is used fairly broadly and so forth. If it is vital, the correct term is used, if it is less important then the

context should make clear exactly what is meant and if it is not important, well, it is not important.

THE PATENT

A patent is a monopoly right typically lasting for 20 years allowing the patentee to stop infringers. Patents are granted country by country although there are some regional systems in place. A patent specification includes a description setting out the invention in detail together with claims that define the scope of protection. In most jurisdictions a patent application is examined in a ‘prosecution’ stage before it can be granted to test whether it is patentable in the light of the prior art, that is, information which was in the public domain before the application was filed. After grant, the patent can be used to stop infringers from copying the invention in the relevant jurisdiction but it can also be attacked by third parties on the basis, among other things, that it does not relate to a patentable invention. All of these aspects of the life of the patent need to be taken into account during the drafting process to make sure that the patent is resilient.

The exact nature of the tests for patentability varies between jurisdictions, but the following summary is reasonably generalised and generally applicable.

The basic requirement for patentability is that the invention should be novel and be non-obvious, or as the Europeans would say, involves an inventive step over the prior art.

Novelty simply requires that the invention is different from what has been done before, whereas inventiveness is a higher hurdle –the novel difference must be non-obvious, or introduce some kind of advantage. One way of approaching inventiveness is to assess whether the invention solves a problem with the prior art by virtue of its novel, different features. Whatever the exact test, to introduce objectivity this question is assessed from the viewpoint of the skilled person, someone who knows the field of the invention but does not have any inventive capacity themselves, and it is assessed based on the information that would have been available to the skilled person at the original, ‘filing’ date of the application.

A patent has two principal parts: a description and claims.

The description

The description sets out the relevant prior art that the inventor is aware of and the problems with it and then describes an embodiment and implementation of the invention, which should solve the problems with the prior art. The description must describe the invention in enough detail that the skilled person could put it into effect, i.e. it must be ‘sufficient’ or ‘enabling’. As a result, it is typically fairly detailed. It is not possible to introduce additional subject matter after the application is filed as this would give rise to an ‘added matter’ objection.

The claims

The description does not define how broad the patent coverage is. This is achieved by the claims, which are clauses defining the invention in terms of its product or process features and which are typically the most skilled part of the patent drafter’s job. The claims include at least one main or ‘independent’ claim that is the broadest expression of the invention followed by ‘dependent claims’. The dependent claims refer back to the independent claim, incorporating by their dependency all of its features and setting out additional preferred or optional features. The claims typically cover one or

Example: Binoculars patent description

An inventor visits you having come up with the idea of binoculars, frustrated with having to squint into a telescope and only getting a mono image. The description of the patent will therefore start by describing telescopes and the disadvantages associated with them such as being uncomfortable to use and only providing an image to one eye. The description will then talk about binoculars, describing the basic lens arrangement, for example, perhaps the focusing system and the manner in which the two sets of lenses are mounted to provide stereo viewing.

Example: Binoculars patent claims

In relation to the binocular invention described in the preceding example, the main (independent) claim might recite ‘a far-field image magnifying system comprising a first and second magnifying element mounted adjacent to one another’. This would be numbered as claim 1. A dependent or sub-claim to the focusing system might be provided as claim 2, reciting ‘a system as claimed in claim 1 further comprising a common focusing element associated with both magnifying elements’. Other dependent claims might relate to adjustment mechanisms for adjusting the spacing between the eyepieces and so forth. These are all apparatus claims. If, for example, there is a particularly clever way of manufacturing or operating the binoculars, then method claims will additionally be available directed to the steps involved.

both of two categories: a product (‘apparatus claims’) and/or a process (‘method claims’).

The claims define the extent of the invention and so are assessed when infringement is considered. In particular, an alleged infringing item is compared with the wording of the main (independent) claim to see whether it shares all of the features in which case it infringes. Specifically, the independent claim is focused on: if it is infringed then the case is won; if it is not infringed the dependent claims cannot be either as they inherit all of its features. Sometimes it turns out that the independent claim is not as all-encompassing as originally thought.

As the claims define the invention, they are also compared with the prior art to assess whether there is patentability, initially during the patent-granting procedure. The fact that they govern the terms of engagement for both validity and infringement is the essence of their elegance, and means that the invention is the invention, whomever you ask.

PATENT-GRANTING PROCEDURE

The basic procedure in obtaining a patent is very similar around the world and various international systems exist meaning that a single patent application can proceed to examination or even to grant in multiple

Example: Review of the Binoculars patent claims

A competitor comes up with a far field optical device that has a single set of lenses in series and a prism positioned to split the image and hence provide a far field image to both eyes (please suspend all optical knowledge for the purpose of this example). Looking at the previously proposed claim 1 of the binocular patent, it requires two optical imaging components adjacent to one another that are not found in the competitor’s monocular arrangement such that the patent is not infringed, at least in the absence of convoluted arguments about the interpretation of the claim wording.

countries. For the time being we will consider a patent obtained in a single jurisdiction. Once the patent application has been drafted it is filed by depositing it with the relevant authority (usually a Patent Office) and becomes a ‘patent application’ (sometimes referred to as ‘patent pending’) until a patent is granted for it. It is assigned a filing date that is then treated as the cut-off date after which information placed by any party (including the patent applicant themself) in the public domain is not treated as prior art.

Typically, the patent application is searched – in particular the Patent Office looks for prior art relevant to the claimed invention. Simultaneously, or subsequently, the patent application is examined. Here the examiner specifically compares the invention as defined in the independent claim with the prior art and informs the patent applicant whether the claimed invention is considered to be novel and inventive over the prior art or not. There are various other objections that can be raised which are explained in more detail in later chapters. This process can take several years from the original filing. An important

procedural element is the ‘claiming priority’ process whereby an application filed in a single country can be considered filed in most countries in the world as long as, within a year, further steps are taken in relation to the other countries of interest.

Although a riveting topic, as using the priority system to help spread out the drafting process is risky it is not examined in detail here except where mentioned explicitly; typically, one should draft as though it does not exist. Similarly, a review of filing strategies such as using regional systems or the Patent Cooperation Treaty (‘PCT’) is not required; we just need discussion of how they examine patent applications at the substantive level, and there is plenty such discussion to come.

Argument during prosecution

If the examiner’s initial finding on patentability is unfavourable, there are various opportunities open to the patent applicant. First of all, they can argue the case if they disagree with the examiner’s assessment. For example, if the examiner has misunderstood the prior art or applied the inventiveness

Example: Binoculars patent prosecution – argument

The examiner states that given that telescopes are well known it would have been obvious to get two and mount them adjacent one another, hence arriving at the claimed features. The attorney counter argument would follow the patentability structure: ‘the claim is novel because there is no disclosure in the prior art (a telescope) of mounting two telescopes adjacent each other. This novel feature solves the problem of comfortable viewing, and it would not have been obvious to do this with known telescopes because of their cumbersome nature/the practical difficulties.’ Given that the original claim is rather broad, one might have sympathy with the examiner’s position, but we do love a good argument. A bad argument would have been ‘if it is so obvious, why has no-one done it before?’ If you think about it, that could be argued for any invention that meets the novelty requirement and so doesn’t add much

test incorrectly, the applicant can respond by setting out the counter-case in the hope of persuading the examiner to change their mind and, sometimes, this works.

Amendment during prosecution

The alternative approach is to ‘amend’ the patent application. The term ‘amendment’ is one patent attorneys use all the time; usually this comprises rewriting at least the main claim to introduce additional features from the patent application that are not found in the prior art and which provide an inventive step over it. Those features can be taken from dependent claims or from elsewhere in the patent description; they cannot be newly introduced material though as this will be impermissible as adding subject matter. The amended claim is submitted together with an explanation of why it is patentable. This is often termed a limitation of the claim because the addition of extra features to a claim limits its scope; any competitor product or process must now include the additional features as well if it is to be found an infringement.

USING THE PATENT

Patents can be used in various ways. First of all, they can be used to stop infringers. If a competitor starts, say, selling an infringing product then the patentee applies to the courts to stop the infringement. Usually this results in complex litigation in which two main issues are considered: whether the alleged infringement actually falls within the scope of the claims, and whether the invention defined in the claims is patentable. Alternatively, the patentees may wish to license out the patent – in other words the patentee gives a third party the right to carry out acts in relation to the invention such as making it, selling it,

Example: Binoculars patent prosecution – amendment

During examination of the binocular patent application, a fixed-focus binocular disclosure is found as prior art during the Patent Office search. The examiner writes to the applicant or their patent attorney pointing out that claim 1 is not novel as all of its features are found in the prior art disclosure. There is little room for argument and so the patentee files a response including an amended claim 1 rewritten to incorporate the features of claim 2 as follows: ‘a far-field image magnifying system comprising a first and second magnifying element mounted adjacent one another and further comprising a common focusing element associated with both magnifying elements’. The amended claim now recites a set of features that is not found in the prior art and which, furthermore, solves the problem with the prior art that it can only be used to view objects at one distance satisfactorily. The response will carry corresponding argumentation. However, the claim is now more limited – competitors selling fixed-focus binoculars will no longer infringe the eventually granted patent whereas they previously would have. Only competitors selling variable-focus binoculars will infringe. Of course this makes perfect sense. The patent system should not allow the patentee to obtain a monopoly on products which were already in the public domain – the prior art – but only inventive (non-obvious) improvements over them.

importing it and so forth. Typically, this will not be for free – for example a royalty may be paid by the third party to the patentee. A patent can also be a defensive asset and have an effect the patentee may not even be aware of; even though no infringers are making products including the invention, that may be because they had to find a way around the patent which will typically have required legal advice and design around costs, and if the patent is particularly useful, may still mean an inferior competing product.

Bear in mind also that a patent often provides the first tangible value associated with an invention. Long before a product is being made embodying the invention a patent can add value – for example, it can be sold or it can be used as collateral or guarantee of monopoly to raise funds for a company intending to manufacture or sell the product.

The possible commercial uses of the patent are as important in deciding what the claims look like as the issues of patentability. The patent claims should cover as many potential commercial implementations of the invention as possible. For example, the claims may cover not only the product but the way it is made and the way it might be used by the patentee or competitors. If there are multiple areas

where the invention could be implemented then the claims may also reflect this, which will enhance its defensive properties and also its licensing potential. The exercise of making the patent claims commercially useful is limited only by the ambition of the patentee and the requirement that the claimed invention should be patentable.

CONCLUSION

Becoming a patent attorney typically takes several years and things are not quite as simple as presented above. However, the guiding principles remain that the patent description should allow the invention to be put into effect and that the patent claims should define the scope of the monopoly as broadly as possible but without being so broad that they describe anything that cannot be considered to be inventive. Unfortunately, it is important to master the detailed legal and commercial considerations before being able to draft confidently even if, eventually, many of these considerations become intuitive and are seldom consciously addressed by the drafter when preparing the patent application. In other words, it is not a good idea to skip the next foundation chapters and go straight on to the practical ones!

4. THE LEGAL REQUIREMENTS

Despite efforts at regional and global harmonisation, the legal requirements for the form and content of patent applications continue to differ in varying degrees between jurisdictions, and to capture every subtle variation would be a daunting task. Fortunately, however, to a large extent the basic requirements are very similar and so here we examine the general legal requirements flagging some notable ones as we go.

The best place to start is with a quick review of what the different ‘validity people’ look at, again bearing in mind that the point is to see how the drafting of a patent is affected by all of this. All of the different people look at slightly different things with some areas of significant overlap and some discrepancies, and it is useful to highlight these if only to glean some comfort that the set of legal requirements is a manageable one.

SUMMARY OF THE LEGAL REQUIREMENTS

The Patent Offices

Turning firstly to the Patent Offices and their examiners in the context of their role as granters of patents in an allowable form, the main requirements they look at are as follows:

(1) Does the claim cover a patentable invention?

(2) Is the description sufficient/enabling?

(3) Are the claims supported by the description?

(4) Has the specification been amended during or after prosecution to introduce subject matter not present at the date of filing (‘added matter’)?

(5) Are the claims clear and concise?

(6) Are the formal requirements met?

(7) Are the claims in unity?

Of these, some are more significant than others, and some merely have to be borne in mind during the drafting process in case future actions make them relevant. For example, it is clearly desirable to ensure that the patent relates to a patentable

invention (1) and that this is reflected in the claims. It is vital that the patent as filed should be sufficient (2) (the ‘enablement’ requirement in the US), that is, that the skilled person could put the invention into effect based on the description, as this almost certainly cannot be remedied later without, impermissibly, adding matter in contravention of (4). Attention needs to be paid to whether the claims are supported by the description (3) (in the US, ‘written description’), that is to say, in general terms, that the scope of the claims is not unreasonably broad in view of the extent of the description. As subject matter cannot be added later on (4), it is vital to ensure that any information that the patentee may wish to rely on at some point during the life of the patent should appear in the document as originally filed. Similarly, it is worthwhile ensuring that the claims are clear and concise (5) in the originally drafted patent application. However, of all of these, only sufficiency (2) and the scope for adding matter (4) are inescapably determined and interlinked at the time of filing the patent application. It is not permissible to introduce new subject matter for any reason – whether to strengthen the claims or to render a previously insufficient patent insufficient – the information must be there at the outset. This practice is particularly strictly applied in Europe where any change to a patent document must be rigorously and convincingly explained to the authorities. If, on the other hand, the claims are considered during examination to relate to unpatentable subject matter, or to be unclear or lack support, this can often be dealt with by amendment of the text of the

claims during prosecution as long as any such amendment does not introduce added matter.

The other two issues the Patent Office will typically look at are formal requirements (6), for example incorrect scientific units, page layout and so forth, and the question of unity of invention (7), which is raised in different forms in different places. In relation to the first of these, it is extremely unlikely that any error on this point is not remediable and so this aspect is not discussed here. In relation to unity of invention, that is, whether or not the claims relate to a single invention or multiple inventions, although this is a ground of objection, it is easily dealt with by amendment during the life of the patent application once again.

The courts

The courts, when assessing validity, look at the possible grounds of revocation or invalidation, which, for courts of EPO contracting states (at least for European Patents) are as follows (repeating/ continuing the numbering above):

(1) Do the claims cover a patentable invention?

(2) Is the description sufficient/enabling?

(4) Has the specification been amended during or after prosecution to introduce subject matter not present at the date of filing (‘added matter’)?

(8) Have the claims been broadened since grant of the patent?

(9) Was the party to whom the patent was granted entitled to grant?

Of these, the aspects that will always be

taken into account during drafting are, once again, sufficiency (2) and providing scope for amendment, i.e., avoiding ‘added matter’ objections (4) later in the life of the application or patent. All of issues (1) to (5) are looked at in detail below and it is worth also discussing briefly claim broadening (8) and its relationship with added matter, but entitlement is not a topic that need be discussed here.

Other authorities

Another authority worth mentioning specifically is the European Patent Office who can deal, in parallel with or alternatively to national courts, with patents centrally in post-grant opposition

Table: Summary of validity issues

proceedings. The grounds available here (using the numbering again) are:

(1) Patentability

(2) Sufficiency

(4) Added matter

(8) Claim broadening

Once again, therefore, the issues are fairly similar; the EPO just hands back entitlement matters to the relevant national jurisdiction. Before looking at some of these legal requirements in rather more detail, for the purposes of clarity set out below is a table summarising the validity issues of interest to the various tribunals discussed so far.

THE LEGAL REQUIREMENTS IN MORE DETAIL

Other than some formal differences, most jurisdictions require that a patent application includes a description, claims, drawings and abstract.

For example, the European Patent Convention (EPC) states at Article 78:

Requirements of the European patent application:

(1) A European patent application shall contain:

(a) a request for the grant of a European patent;

(b) a description of the invention;

(c) one or more claims;

(d) any drawings referred to in the description or the claims;

(e) an abstract…

The parts that are of concern during the drafting process are, in particular, the description, the claims and the drawings. There are some terminology issues here. For example, in some jurisdictions it is stated that an application must contain a ‘specification’ and that the specification contain a description and claims. Here, we will tend to use the word ‘description’ when referring to the substantive written part of the patent document that is not the claims. We will also talk about the ‘specific description’ as the component of the description that describes in detail the actual structure or operation of one or more embodiments of the invention. The manner in which the claims and description are formulated is saved for a later chapter and so, having dispensed with this basic terminology requirement (every patent attorney should be

careful with their definitions), we can now look at the substantive legal requirements set out earlier in this chapter in more detail. We start by looking at the issues specifically affecting the claims – patentability, clarity/ conciseness and unity of invention.

ISSUES RELATING TO THE CLAIMS

Do the claims cover a patentable invention?

This is, of course, the central question that will almost invariably be asked whether granting or attacking a patent. It is a question that has different implications in different jurisdictions not least because although it is apparently simple, it is loaded with meaning as we shall see shortly. It is always a difficult question because it typically settles around the question of inventive step/obviousness, i.e., the question, ‘would it have been obvious at the date of filing a patent application to have come up with the claimed invention?’

Although this question is generally formulated objectively it must in reality always have a subjective element and is not only dealt with differently between jurisdictions but even intra-jurisdiction between, for example, the Patent Offices and the courts as touched on earlier. Despite all of this, for the purposes of drafting a patent application, it is probably most important to have a consistent and reasonable idea of how the test ‘is it a patentable invention’ might be applied. If you feel that your drafted patent meets this test albeit with room for plenty of argument, then jurisdictional variations can, in many ways, be disregarded until they are actually applied.

Exclusions to patentable inventions

One aspect that can be important when deciding to proceed in a certain territory is whether, irrespective of patentability tests, a concept can be patented at all.

For the majority of jurisdictions, certain areas of creation are not even accepted as being inventions or susceptible to coverage by the patent system, such that the novelty/nonobviousness tests are redundant. Other areas may be banned as being contrary to public interest or plain immoral.

Europe has a fairly full set of such exclusions and we will consider some of them briefly here. Looking at the European Patent Convention (‘EPC’), Article 52 states:

Patentable Inventions

(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information;

(3) Paragraph 2 shall exclude patentability of the subject matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject matter or activities as such.

The first thing to note is the well-documented omission of any definition of the word ‘invention’. Patent attorneys like their definitions, law drafters clearly do not. Instead we are told what is required for a patentable invention: it must be new, inventive and capable of industrial application. We are also told what an invention is not – at least in Europe – it is not a discovery, a method for doing business, a programme for a computer and so forth. But we don’t know what an invention is, except that is the thing in a claim! Luckily it seems never to have mattered much; maybe the lawmakers knew what they were doing.

As a practical point these exclusions have been whittled away over time relying on the qualifying words ‘as such’. Most of the activity has been in the area of software and again, practically, if the software is implemented in a technical area – a control technique or improved operation of a computer, say, then the exclusion will not be involved. The topic of excluded subject matter would be the subject of its own book; it is enough to say here that you should look out for the problem and advise the inventor of the potential risks if their invention falls in this area, and that you should be aware that there are some jurisdictional variations so that there may be inventions that meet the requirements elsewhere.

An example of a restriction that does not always apply outside Europe, and notably has no parallel in the US, is found under Article 53 EPC. Whereas methods for treatment of human or animals by surgery or therapy, and similar diagnostic methods may be inventions, patents will not be granted for them. However, from a practical viewpoint once again, the corresponding apparatus is

not excluded, and the patent should be drafted accordingly. We will not look at the morality and other exclusions in detail here. It is always an interesting question to ask why the patent system should trouble itself with morality. Certainly, it will often be the first port of call because a new technology comes to a Patent Office before it is seen anywhere else, but it is still a strange owner of ethics. Anyway, that’s philosophising not drafting!

With all of that said, we concentrate here on the two primary issues of novelty and inventive step/non-obviousness. The questions of lack of industrial capability, the exclusions to patentability and the identification of aspects that are not considered to be inventions are important matters, but potentially overcomplicate the situation at this stage and vary between jurisdictions. Again they may determine more where to file a patent application rather than what to file. For now, therefore, we look at the two big ones:

Novelty

Once again the exact definitions of novelty vary somewhat but the basic test is ‘was the invention publicly available before the application was filed?’

Other than the US practice of grace periods or ‘sale bars’ (whereby certain disclosures are considered not to be public domain even though they preceded the date of filing an application), most jurisdictions take the same basic approach – an invention must not have been in the public domain when an application for a patent was filed. Unsurprisingly, there has been much case law in this area examining issues such as when a disclosure can be considered to be confidential, and whether a disclosure is ‘enabling’, that is whether it was in fact

possible to derive the invention from what was put into the public domain or whether it was, for example, a ‘black box’ disclosure, and even here practices differ as to the effect of a disclosure which was in the public domain but not reverse engineerable. Again, as far as drafting a patent application goes, these issues are largely academic other than in deciding whether there is merit in filing an application at all in view of prior activities. Also the detailed legal tests set out in the case law for assessing novelty, while providing useful guidelines, turn out not to be particularly relevant in day-to-day practice.

Far more important, and largely overlooked in the case law is the mechanistic approach that tends to be applied at least by the Patent Offices, and which should be closely followed during the drafting process. We will come back to this mechanistic approach when we look at drafting claims in more detail, but the principles are simple.

The invention is defined in the claims of a patent as a set of integers comprising features or steps that the invention has. If a single prior art disclosure (for example, an earlier public written description, or sale or use of something relevant) demonstrates every one of the integers in the independent claim, then the claimed invention is not novel. If, however, there is any feature in the claim that was not in that single disclosure, however trivial, then the claimed invention is novel. If there is more than one distinct prior art disclosure (for example, a sale of one product by a first company and of a different product by another company) then the test is applied independently to each disclosure. To be novel, the invention set out in the claim must have a feature not disclosed in the first prior art instance and a feature not disclosed

in the second prior art instance even if those distinguishing features are different from one another. So even if the two disclosures, between them, include all of features of the claim, the claimed subject matter is still novel as long as it is individually novel over each of them.

What the case law does not really show is how simple the test actually is, nor how rigorously it should be applied, but the mini algorithm above suffices as a test applicable irrespective of jurisdiction. Of course, once it has been applied, a far more difficult question comes up. We may have identified our novel feature but it may be entirely trivial, or it may be a natural extension to combine two prior art instances to come up with all of the features of the claim. In this case, we now have to assess whether the claim is inventive, i.e. whether it would have been obvious to add the distinguishing feature to a single document or to have combined two documents including all of the features between them to arrive at the claim.

Inventiveness/non-obviousness

Inventive step is dealt with in the EPC in Article 56 as follows:

Inventive Step

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art...

By way of comparison, in the US, 35 USC 103 states:

(a) A patent for a claimed invention may not be obtained… if the difference between the claimed invention and the

prior art… would have been obvious… to a person having ordinary skill in the art.

Once again, different jurisdictions have different expressions of the inventive step test and different interpretations of how it should be applied, but a consistent aspect of it is that the invention should not be ‘obvious’. If there is a lot of case law on what novelty means, there is an even greater amount on what obviousness means addressing questions including ‘how obvious?’ and ‘obvious to whom?’ Remembering that we are reviewing the legal requirements with an eye to preparing draft patent applications, a detailed discussion comparing the various approaches is not important. What is important, once again, is to identify a consistent test that we can apply.

In fact the question of inventiveness can be approached from two angles. Looking at it from a positive angle, the issue is whether the claimed features give rise to an unexpected advantage. Looking at it from a negative angle, inventive step is available if the invention is ‘non obvious’. So, for example, if there are reasons not to combine two known teachings, then an inventive step may be available as the combination is non-obvious even though there is no particular advantage attached. This latter angle tends to be weaker and seems seldom to arise in practice because some sort of advantage can almost always be formulated. Indeed there seems to be little point in getting a patent for something with no advantage. From hereon in, we will look at the more positive issue of whether a set of features in the claim provides a benefit. Many approaches have been adopted – does the invention have a ‘surprising advantage’,

does it fulfil a ‘long-felt want’, does it provide ‘commercial success’ does it ‘solve a problem’?

Typically, however, the test may be formulated, it boils down to establishing whether there is an advantage attached to the novel feature that extends beyond the natural and expected consequences of incorporating that feature.

Example: Motorbike mudguard patentability

If it was known to provide mudguards on bicycles but not on motor bicycles, then a claim to a motor bicycle mudguard would be novel but not inventive as it just stops mud splashing, as one would expect. If, however, the mudguard, in a certain position provided aerodynamic effects that only arose at the type of speeds attainable on a motor bicycle, then an inventive step might be available – at least when the claim is directed to a motorbike in conjunction with the specific advantageous configuration of the mudguard, or if the relevant features of the mudguard can be defined in a claim.

the problem solution approach to ensure its general applicability, but the fact that it can be successfully and sensibly applied across pretty much all technologies suggests that it’s a winner. When you are trying to work out how to formulate your patent application in the first place it additionally provides a straightforward tool for assessing the strength of the case and the scope of the claims and, as discussed in more detail in later chapters, rather a useful skeleton for structuring the patent document as a whole. Importantly, if you can apply the comparatively strict test successfully, the claim is probably good for most jurisdictions even if the exact formulation of inventive step argumentation will have to vary.

Perhaps the simplest and most repeatable approach to assessing inventive step is the problem – solution approach favoured by the EPO. Its supporters like the fact that you know where you stand with the test and certainly it is a good way of explaining inventive step to inventors who are unfamiliar with the patent system. Its detractors have argued that it is overly mechanistic, requires hindsight or simply cannot be applied to all cases, but it has proved its merit over 40 years now, and is widely accepted. Certainly the European Patent Office has had to stretch

In essence the problem-solution approach firstly requires that you identify the closest prior art. This, in itself, can represent a moving target. When the test is applied during examination of a patent application or a third party attack, prior art may well be cited against the invention that may not have been available to the patent attorney at the time of drafting the original patent application. But the EPO is pretty rigorous –they want a single closest prior art document, not various options. At the drafting stage, identification of the closest prior art is usually straightforward because the inventor has a very good idea of what came before and why the invention is better than it. Indeed it is worth pressing the inventor to try and identify the closest prior art as this can help pin down an elusive invention, and to try and pin them down to a single instance, as the EPO would, for the same reasons.

Given this single piece of prior art as a starting point, the next step is to identify what the problem is with it and what features of

the invention solve that problem. This, again, is straightforward at the drafting stage – the inventor tells you what extra thing they have done compared with what people used to do and why it is better. Mapped to the strict EPO test, you identify the distinguishing feature over the prior art and its technical effect.

As far as the drafting process goes, you probably have enough information now as the EPO then requires a formulaic step of defining a problem in terms of modifying the prior art in order to achieve the technical effect. The last step is also less helpful in drafting given the slightly circular final question ‘would this extra thing have been obvious’, which is of course the question this test is designed to circumvent. Trying to address this in the specification would stand a risk of making the invention look more rather than less obvious and highlights that there is an inescapable element of hindsight in this approach (and basically all inventiveness tests) in that it is assumed the inventor started from the most relevant possible disclosure rather than with a blank sheet.

In practice, one simply takes the view that if a solution has been provided to an existing problem, ie a technical effect has been identified then there is at least a reasonable argument for inventive step and leave it there. Indeed, at this stage, it becomes clear that the problem-solution approach is the same as identifying an unexpected advantage. There is little difference between the statement ‘the claimed invention has an advantage over the prior art’, ‘the distinguishing feature of the invention has a technical effect’ and ‘the claimed invention solves a problem with the prior art’ – it is principally a matter of terminology and, in practice, the way arguments are formulated before the relevant

jurisdictions. The benefit of the problemsolution approach is that it seems just a little more rigorous. Also, because it is so attractive to inventors as a clear-cut explanation of how to use inventive step, it often elicits more useful information from them than merely seeking an explanation of why their invention was ‘not obvious’.

The bicycles/motorbike example discussed above shows how, sometimes, it requires careful thought to fit the problem-solution approach to a set of circumstances to best reflect the reality of the inventor’s dilemma.

Example: Problem-solution approach applied to the motorbike mudguard

The first step is to identify the closest prior art. Is it a bicycle with mudguards, the problem with being that a bicycle does not go very fast? Or is it a motor bicycle without the mudguard, the problem being that it spatters the rider with mud? The most favourable selection would be to start with a motor bicycle. The problem is solved by incorporating a mudguard with the required shape. We argue that this is a non-obvious solution because, rather than slowing down the motor bicycle because of drag, it transpires that, at the appropriate velocity, the mudguards, in fact, improve the aerodynamic performance and allow that elusive additional five miles per hour. Another way to present the argument would be to say that a problem with known motorbikes is that of drag, which is solved by providing cowlings around the wheelswhich, fortuitously, prevent mud spattering too.

The test is an artificial one. But it is difficult to conceive of a test that addresses the purely subjective question of inventiveness/ non-obviousness in any objective way that is not artificial, and this is the best approach this author has seen.

Are the claims clear and concise?

As far as the claims are concerned, the one aspect that all jurisdictions are concerned with is that of patentability and, although other considerations arise, this aspect must always be the central one. However, other objections which can be raised against claims, in particular by the pre-grant jurisdictions –typically Patent Office examiners – are equally important in assessing how to draft a claim in the first place and, indeed, substantially more difficult to deal with. In particular, ‘clarity and/or conciseness’ of the claims is tested before grant of a patent and causes real

problems, in many cases, for people learning to draft patents. Usually, it is easy to spot what the invention is, at least in broad terms. The inventor has told you what the prior art is, what the invention has that is different, and why this provides an improvement. They have not, however, told you how to make your claim clear and concise. That’s definitely our job. It makes sense to move on to this aspect, but with the initial observation that, once again, we find that once we have decomposed the requirements a little, all we require is that the claims strike ‘the balance’.

Conciseness

Turning firstly to conciseness, this is an objection principally directed in Europe to reducing the number of claims, in particular the number of independent claims in the same category. For example, where the patent attorney has taken multiple stabs at

Example: Escalator patent claims – conciseness

The inventor has come up with idea of an escalator comprising a set of moving steps on a continuous belt. The patent attorney is not too sure whether to call them ‘steps’ or ‘passenger supports’. So they put in separate independent claims for each. The first one recites ‘a moveable stairway comprising a plurality of steps on a moveable belt’. The second one recites ‘a moveable stairway comprising a plurality of passenger support elements on a moveable belt’. These are clearly two expressions of the same concept with slightly different wording which, at least in Europe, would give rise to a conciseness objection. The objection can be easily dealt with by selecting one of the two claims and removing the other or tying it in as a dependent claim, For example, claim 1 might read ‘a moving stairway comprising a plurality of passenger support elements on a moveable belt’. Claim 2 might read ‘a moving stairway as claimed in claim 1 in which the passenger support elements comprise steps’. Sometimes it may be desirable to keep options open or even muddy the water for third parties and special considerations may apply in jurisdictions such as the US where the approach is different in this respect. But don’t use a scattergun approach as an alternative to having at least one claim you’re willing to stick by; you may not be able to add it later.

the definition of an invention by providing multiple independent claims each with slightly different, slightly non-overlapping wording, a conciseness objection can be raised requesting that the attorney settles on a single claim and, indeed, we see a lot of this in Europe. At the drafting stage it is probably not a consideration that would be at the forefront of the drafter’s consciousness. This is partly because the drafter should be trying to do the best possible claim anyway rather than having six goes at passable claims. Conciseness is becoming a global issue, however, as claims fees are now a significant feature in a number of territories. For example, in both European and US practice the fees are a practical barrier to filing too many claims that will tend to drive the patent attorney towards conciseness anyway.

Clarity

Turning to clarity, a useful treatment of the provisions as understood in Europe is found in the Guidelines for Examination of the EPO at Part F, Chapter IV.4, where a huge amount of space is devoted to the topic, reflecting how complex it can be. But two quotes from that section sum up the principal concerns irrespective of jurisdiction. Firstly: ‘the meaning of the terms of a claim should… (be clear)… from the wording of the claim alone’, which might be termed self-containment. Secondly: ‘as a general rule, claims which attempt to define the invention by a result to be achieved should not be allowed…’ termed here, for reasons that will become apparent, free beer. The remainder of the opus largely provides examples illustrating one or the other of these two considerations. One other major topic is touched on, namely the requirement to recite the ‘essential features’ of the invention in the claims. Arguing this

point has become a cottage industry at the EPO and in this author’s view this is because essential features are not a matter of clarity. Of course, a clear claim should include the essential features, but what those comprise is governed – before the EPO as any other authority – by the ‘balance’ between defining the invention from a legal and commercial perspective. The ‘essential features’ point is touched on later, but like so many of the complexities around claim drafting, a well drafted claim will automatically include the essential features, all the essential features and nothing but the essential features.

Self-containment

First of all, then, the claim should be selfcontained. What this means, in broad terms, is that a third party, holding the patent in one hand and the infringement in the other hand, should be able to read the claim, look at the infringing product or parts thereof corresponding to the claim, and work out from that alone whether or not it infringes.

This has various facets. At one level this means that the claim words themselves should not require recourse to the remainder of the patent to work out what they mean. This is not an absolute requirement but most patent attorneys would, presumably, rather have a claim that is infringed on the face of it, rather than requiring detailed and lengthy argument in court about the interpretation of individual terms. As discussed later, when it comes to claim interpretation, the Protocol to Article 69 EPC which governs this point and which binds national courts does permit resolution of ambiguity by reference to the reminder of the document. As also discussed later, it is best practice to forget this when drafting.

Moving to the second facet this test

becomes more interesting. Not only should individual terms make immediate sense, the infringer should be able to work out whether or not there is infringement without inferring additional features into the claim.

Example: Clarity of claim to ‘transversely mounted’ engine – self-containment

The claim is directed to ‘an engine’ and recites that ‘the engine is transversely mounted’. The infringer must therefore look at their own engine in isolation, without, for example, any of the other parts of the automobile attached. As a result, they cannot work out whether or not the engine infringes because it is not mounted in anything, let alone transversely mounted. In other words the claim has been defined relative to something that is not there, i.e. the vehicle, and is not self-contained. To overcome this, the drafter should either have claimed a vehicle including an engine transversely mounted therein, or identified features of the engine enabling it to be transversely mounted and which would also appear in the infringement. In that latter case the claim would have been self-contained because the infringer, with the alleged infringement in front of them (i.e., just the engine), would have had all the information required to establish whether or not the claim was infringed. This is one example of ‘claiming on the shelf’ – the claim should cover what is in the shop/ warehouse.

Example: Clarity of claim with relative terms – selfcontainment

Another, rather simpler example, is the use of relative terms like ‘thin’ or ‘horizontal’. If a claim recites ‘an engine with a shaft, wherein the shaft is thin’, then again the infringer does not have enough information to work out whether the shaft in their engine is thin or not because they do not know what ‘thin’ means in the claim. If the shaft is defined as ‘horizontal’ then the infringer can evade the claim by selling all of their engines turned on end. Again these problems can be overcome by making the claim self-contained. For example, the term ‘thin’ can be defined as a specific dimension or range of dimensions, or a comparatively and relevantly ‘fat’ part of the engine can also be defined in the claim which the shaft is thinner than and the two parts respectively described as ‘comparatively fat’ and ‘comparatively thin’. This is determinable just looking at the engine in isolation. In the case of the term ‘horizontal’ then again the claim can be directed to a vehicle in relation to which the engine’s or component’s orientation can be defined. Again, claim it on the shelf.

Another manifestation of this requirement is that the claims should stay in their category – further reasons for this are discussed later. But an ‘apparatus’ claim to a product should only contain ‘apparatus’ features and integers, and a method claim only ‘method’ features and integers.

A good approach is to draft an apparatus

claim, for example, as though the apparatus in mind was switched off.

Example: Clarity of claim reciting moving parts –switch it off

A claim might be (badly) drafted to an engine ‘in which two parts rotate in opposite directions’. An infringer, looking at an infringing engine with the ignition switched off, could argue that it did not infringe because the parts were not rotating in opposite directions or indeed at all. In other words, the claim did not contain enough information for it to be compared directly to the infringement. The argument might fail, but why invite it at all? The additional information would not be much – the claim could simply say that the parts are arranged to rotate in opposite directions when switched on. Alternatively, the claim can indicate that the parts are rotateable in opposite directions, which is the case even when the engine is switched off – as it would be on the shelf.

manifestation of the clarity requirement is that it provides the only instance in which the Patent Office has any interest in the question of infringement. The Patent Office generally speaking are only interested in the narrowing, patentability aspects and have absolutely no duty to ensure that the patent attorney obtains commercially useful protection for the client, only to ensure that the claim meets the requirements of novelty, inventive step and so forth. Here, however, the Patent Office is effectively ensuring that the claim makes sense from an infringement perspective. In particular, they are making sure that third parties can work out whether or not they infringe, and this perspective can be helpful in arguing the point. This leads us inevitably to the conclusion that once again all we are trying to do is strike the balance in the claim.

Free beer

So, often for a claim to be self-contained you need to think ‘on the shelf’. This means that a claim has to be directed to the specific entity the drafter has in mind as though it were sitting on the shelf of a shop ready for the infringer to pick up and compare with the claims, stripped of all additional features that the drafter might have wished were in the claim – the automobile and so forth. In addition, the product is switched off when it is on the shelf, again ensuring that the terms of the claim are appropriately self-contained. What is interesting about this first

The second aspect of ensuring that a claim is clear is to ensure that it does not (other than in exceptional circumstances) claim the result achieved by an invention. This makes sense if we start from the first principles of patentability and the EPC definition is particularly helpful: patents are granted for inventions that ‘are new and which involve an inventive step’. In other words, the invention, defined in the claims, must be novel. Hence, all of the novel features must be recited in the claim. However, the invention only needs to ‘involve’ an inventive step. The inventive step is the advantage achieved or problem solved or useful result of the invention. So the law effectively says that the physical features of the invention must be in the claim, and that they must result in the associated inventive result. In practice this can be summarised as ‘novelty lies in the

Example: Aeroplane patent claim – claiming the novel features, not the result

The prior art is aeroplanes with no moving parts on the wings. To steer them, the pilot has to shift their weight around the cockpit, which is uncomfortable, imprecise and dangerous. The invention is to add flaps to the wings. The claim recites: ‘a flying vehicle having substantially rigid wings with moveable elements thereon for altering the aerodynamic characteristic of the wings’. Then, in arguing patentability, the argument would run ‘there is no disclosure in the prior art of a flying vehicle having substantially rigid wings with moveable parts on them for altering an aerodynamic characteristic. Therefore, the claimed invention is novel.’ Continuing the argument: ‘furthermore, because of the provision of the moveable parts altering the aerodynamic characteristic, the aeroplane can be steered very simply by moving the moveable part appropriately’. The novelty lay in the claim – i.e. the recitation of flaps. The inventive step only appeared in argumentation – there is no need to recite specifically in the claim that the flaps/ moveable parts allow steering of the aeroplane.

claim, inventive step lies in the argument’, and we look at this mantra again later. This is borne out in practice when the attorney is arguing for the patentability of a claim. First of all, when dealing with novelty, it is necessary to point out those features in the claim that are not found in a prior art document. Once this has been done, the next job is to explain why those novel features result in an advantage over the prior art. This is a matter of argument – the advantage achieved does not itself have to be recited in the claim, it is merely necessary to explain how the novel features give rise to those results and hence involve the inventive step.

Going back to the issue of clarity, therefore, objection may be raised when the claim is defined only in terms of the result achieved. In other words, that part which would normally form the inventive step argument is actually recited in the claim, rather than the feature that gave rise to it. This is sometimes termed a ‘ free beer’ claim as it merely recites what you want to achieve

(for example, free beer) not how you achieve it (many patent attorneys would like to know this).

Example: Aeroplane patent claim – free beer

The prior art is a fixed, static winged aircraft and we have identified that flaps provide improved steering. However, the claim reads ‘a flying vehicle having wings, in which the vehicle is easier to steer’. The invention is defined in terms of the result achieved rather than the manner in which it is achieved, i.e. by the provision of flaps and it is therefore unclear.

The question arises: Is there any logic behind objections of this nature? Surely a claim that relates to a result that has not been achieved before is patentable. This is an argument that, on the face of it, appears quite strong but first principles once again show

that there is a problem with it. In the case of the example given, most pilots of the prior art aircraft, if asked whether they would prefer a more easily steerable vehicle, would probably rub their shoulders ruefully and say ‘of course’. In other words, merely raising the possibility of a more easily steerable aircraft is obvious – a ‘mere desideratum’. But if you asked the pilot how they would make the aircraft more easily steerable then they might stop rubbing their shoulders and start scratching their head. The idea of providing flaps to allow improved steering is not obvious and so if we include wording relating directly to the provision of flaps in the claim, suddenly it relates to patentable subject matter.

In terms of the ‘ free beer’ clarity objection, therefore, this can effectively be viewed as an inventive step objection. In many cases the result to be achieved is obvious – cheaper manufacturer, easier steering, faster processing, greater output or whatever. So a claim directed purely at the result will be correspondingly non-inventive. It is how the result is achieved that usually involves the invention and the corresponding features need to go into the claim, providing the novelty to which inventive step arguments can, later on, be attached.

As an aside, it should be noted that sometimes it is only possible to define an

invention in relation to the result achieved and many Patent Offices will allow claims of this nature if they are the only recourse, although it requires a pretty unusual set of circumstances.

This example crossed over to the selfcontainment issue – the authorities showed that the invention was defined in such a way that third parties could still establish whether their product would fall within its terms.

In terms of drafting the patent claim, it is highly desirable, therefore, to ensure that the novel features that give rise to the inventive results find themselves in the claim rather than the inventive results themselves that can be posted elsewhere in the specification and, later on, relied on or possibly introduced for the first time in argument with the Patent Office. And coming back, as ever, to ‘the balance’ it becomes clear that the second facet of the clarity objection – free beer – is in fact no more than a patentability objection that a claim merely cites a desideratum rather than the manner in which that desideratum is achieved – i.e. it is not inventive.

Clarity, then, is one of the most complex and confusing aspects that needs to be taken into account when drafting a patent claim but yet again boils down to a mix of infringement – self containment, and

Example: ‘No fume’ ashtray – claiming by result

In a case in the UK nearly 100 years ago, an inventor came up with a particular shape of ashtray which meant that, once a cigarette butt was thrown into it, smoke could not escape. The only way to define the invention was in relation to the result achieved and a claim of this nature was allowed. This was a court case involving a sample that is still to be found in the author’s offices – viewable by appointment (but no smoking).

validity – free beer and essential features –considerations such that it should simply fall out of consideration in a well drafted claim that strikes the correct balance.

Are the claims in unity?

This objection arises when two independent claims are considered to relate to different inventions. In Europe this means that an independent apparatus claim can co-exist with a corresponding independent method claim (new product together with how it is made/used), but two independent claims in the same category relating to two different new products or two different new methods would not be permitted. Conversely, in the US, it is common to see granted patents with either multiple independent apparatus claims to different expressions of the invention or multiple independent method claims, but not both. Generally, unity can be dealt with fairly simply during the life of the patent application by filing ‘divisional’ patent applications for the extra inventions such that multiple independent claims should be viewed as tools to be used rather than barriers at the drafting stage. Indeed, it will often be desirable to have multiple claims in a new patent application that will not meet the unity requirement. Given that a nonunity objection effectively states: ‘there is more than one invention in the claims’, it will be seen that this can often be important – the inventor may have had multiple inventions all of which they wish to cover in a single case. And as every patent attorney knows, a single new product can often involve multiple inventions. At one level this can be fairly clear in a large, complex product such as an automobile. However, even a comparatively simple product may

involve multiple inventions even though each of those inventions seems to relate to a similar set of features.

Where a patent application contains multiple independent claims to different inventions then most Patent Offices will only search the first invention unless additional fees are paid, and will only allow a patent application to proceed to grant in relation to one of those inventions. The others have to be deleted, relegated to dependent claims where possible, or, if the additional inventions are important, put into a separate divisional patent application. However, dealing with the objection in any of these ways is straightforward. Strategically, therefore, it is usually advisable to cover multiple inventions in a patent application, keeping the options open for divisional applications later on as appropriate unless the patentee wants to lay out the expense of multiple patent applications from the outset, for example for the purposes of building an impressive looking portfolio, to attract investment without having to go into the

Example: Automobile patent –multiple separate inventions

An inventor, rather impressively, comes up with an entirely new automobile. It has a new kind of wheel, a new kind of engine and a new kind of suspension. Each of these is clearly a separate invention. The claims might include an independent wheel claim, an independent engine claim and an independent suspension claim and, if they did, a non-unity objection could be expected.

subtleties of divisionals, etc. It is also worth noting that, in many jurisdictions, once a patent is granted it cannot be attacked for non-unity. This means that if the Patent Office misses a non-unity objection then the patentee can have two patents for the price of one, as two inventions are included in the same patent and the patent cannot be revoked purely on that basis. The strategy becomes ever more attractive, but there is a limit. In theory the applicant could (disclosure permitting) collate their year’s inventions, say, and file them all, however disparate, in a single annual case. This is not barred anywhere though Patent Offices might find ways to do so. And it would defer (but only defer, not avoid) official fees. But even if disclosure timings pemitted this approach, the administrative burden of tracking all the concepts in a single document would be extremely tricky, and it would be impossible to track all of the concepts usng the Patent Office databases. Don’t try it; stick to one application per related set of concepts!

The manner in which multiple inventions can be identified and characterised in separate independent claims is looked at

further later in this book. It is enough to know for now that it is a possibility, and one that should be considered seriously.

As a final point, in Europe it is important to distinguish between the non-unity objection and conciseness. Both can be raised against multiple independent claims but in a different context. Whereas conciseness applies to multiple independent claims all relating to the same invention, non-unity relates to multiple independent claims relating to different inventions.

With the exception of ‘support’, which is dealt with later in this chapter, the main legal criteria attaching to claims have now been examined – patentability, clarity, conciseness and unity. Thus, one of the two fundamental parts of the patent has largely been dealt with. The other is the description, and here two principal legal requirements apply, sufficiency/enablement and added matter.

Example: Tea strainer patent – multiple interrelated but separable inventions

The invention is an improved tea strainer for retaining tea leaves when tea is poured from a teapot into a cup. Conventional strainers include a perforated base or mesh but the apertures, because of their circular or square shape, tend to let some leaves through and also drip when the strainer is left on a surface after use. Imagine (as with many of these examples, let faith outweigh science) that it is found that cross-shaped holes retain the leaves better while forming big enough apertures for an acceptable flow of liquid. In addition, the elongate nature of the perforation prevents unwanted dripping. Despite its simplicity, there are two potential independent inventions – to a strainer with cross-shaped holes (the holes could be short and fat) and to a strainer with elongated holes (the holes need not be cross-shaped).

ISSUES RELATING TO THE DESCRIPTION

Is the description sufficient/ enabling?

The basic rule is that the application must disclose the invention in a manner sufficient to enable it to be carried out by a skilled person. Clearly this aspect of the law is the one designed to make sure that the patentee fulfils their part of the contract with the public, namely adding to the stock of human knowledge. It would not be fair, for example, if the patentee claimed an invention but did not explain how to put it into effect.

Example: Insufficient chemical compound patents

The invention relates to a new chemical compound that is defined in the claims. However, the patent as a whole does not explain how the compound can be formulated – for example, it does not set out the various temperatures at which certain steps must be carried out to arrive at the compound. When the patent runs out, a third party tries to reproduce the compound but cannot. So, for 20 years, they have been excluded from making the compound and, thereafter, still cannot do it because the patent was not sufficient.

The person who should be able to put the invention into effect is the ‘skilled person’ previously encountered, for example, in assessing inventive step. This skilled person knows about the field of the invention but is of ordinary skill – they do not necessarily

have any inventive capacity themself. This makes the sufficiency requirement a little less stringent as a certain amount of knowledge can be imputed to the skilled person. However, it is always extremely risky to cut corners on the description as an insufficient patent is generally irremediable after filing – subject matter cannot be added subsequently to an application as discussed in more detail below.

As a result, the sufficiency requirement is rather an unnerving one – how much information needs to go into the patent? At one extreme, giving so little information that even with detailed and lengthy experimentation the invention cannot be performed is clearly dangerous. On the other hand, giving every imaginable piece of information, down to the name of every specific tool or material required may well be unnecessary and even give away trade secrets unnecessarily. We look at formulation of the description in more detail later on in the book, but a useful guideline is to treat your inventor as the ‘skilled person’ and ensure that they are confident that they could make the invention work given the description that you draft.

Added matter

Turning to ‘added matter’, this is particularly strictly applied in Europe where Article 123(2) EPC says:

Amendments

The European patent application or the European patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed.

The added matter test is notorious for the different interpretations it attracts in different

jurisdictions. The underlying principle is clear. The content of a patent application should be fixed in time at the date of filing. If the inventor forgot to say something, or has thought of something subsequently, then they cannot change the existing patent application but have to decide whether the new idea could itself qualify as an invention over and above the existing one. This provides a significant level of certainty for third parties – they know that the patent application cannot be extended beyond what was in the initial filing. Of course where the initial filing was 150-pages long, this still leaves significant room for manoeuvre, but it can be capped.

A straightforward observation is that in Europe added matter is applied very strictly and objections are raised to often very minor changes whereas in the United States the provisions tend to be construed liberally and surprisingly significant changes can be made. For the drafter creating a patent for the world, therefore, the safest approach is to ensure that the strictest jurisdictions are satisfied as a result of which the more liberal ones should equally be dealt with.

Before considering the relevance of added matter provisions to the drafting process, therefore, it is worth looking at how the European Patent Office deals with added matter. The EPO Guidelines for Examination Chapter H, Part IV 2.1 state that the skilled person should not be ‘presented with information which is not directly and unambiguously derivable from that previously presented by the application’.

In some cases application of the test is clear cut, for example where the patentee wants to introduce new information that simply was not there at the outset.

Example: Added matter in patent to a key

The inventor has come up with a new kind of key that has a pointed end allowing improved insertion into a lock. They subsequently realise that it would be even better if the key were coated with a low-friction material. They cannot introduce this subsequently. This could be a problem, for example, if prior art were discovered that disclosed the idea of a pointed key but was made of a highfriction material and the inventor wanted to redefine the invention to get around this – they would have to look for another amendment, or file a fresh application to any undisclosed improvements.

The added matter provisions can be more subtle than this in various ways. Where, for example, a patent application describes different embodiments of an invention each claimed separately, it may not be possible to pick out a new combination of a subset of features from the embodiments if that combination was not explicitly contemplated on filing. This would certainly apply in the case of rewriting the description to incorporate such a new combination. However, it could also apply to a newly worded claim directed to that combination. In particular, the objection would be along the lines that it is impermissible to ‘cherry pick’ features from different embodiments and combine them. Even if there were a teaching that the embodiments generally could be combined, this would typically mean at best that all of the features of all of the

embodiments should be combined unless there is a specific teaching allowing further refinement.

Example: Added matter –‘cherry picking’ in patent to an umbrella

An inventor has come up with the idea of the umbrella. In a first described embodiment the umbrella has a long rigid shaft with a handle at the bottom and rigid spokes pivoted at the top and running to the periphery of the umbrella fabric. In a second described embodiment the shaft is telescopic and the spokes are jointed at their centres and hence can be folded compactly. A first independent claim is directed to the first embodiment with a rigid shaft and spokes. A second independent claim is directed to a telescoping shaft and jointed spokes. In Europe, the inventor would not be allowed, in the absence of clear cross references at filing, to put together a composite claim, for example, to an umbrella having a rigid shaft and jointed spokes or conversely to an umbrella having a telescopic shaft and rigid spokes.

Intermediate generalisation

A further insidious instance of the added matter objection is the prohibition of ‘intermediate generalisation’. This is the case where, for example, there is a broad independent claim followed by a narrow dependent claim. The broad independent claim turns out not to be novel over some cited prior art such that amendment of the

claims is required. There is no disclosure in the prior art of the subject matter of the narrow dependent claim such that incorporating it into the main claim would give patentability. However, the patentee does not want to be this limited and would prefer a main claim of a scope somewhere in between the original main claim and the original dependent claim as they have identified that this ‘intermediate’ claim would still be patentable over the prior art but would be commercially more useful. It might seem that this should not present a problem; given that the amended claim will be narrower than the original independent claim, forming a subset of the original claim and covering a reduced ange of potential infringements – how can it be adding matter? The answer is that it is considered to be adding matter because the information content of the application as a whole has been increased. The amended intermediate claim is directed to subject matter that was not found in the application as filed as a specific combination. As a result, the proposed amended claim is not ‘clearly and unambiguously derivable’ from the application as filed – the attempted intermediate generalisation adds matter.

Oddly enough, the added matter provisions are more forgiving in the area of broadening of claims. There is no de facto prohibition of broadening of claims prior to grant of a patent, as long as any such broadening does not add matter, and the basic test is ‘does the broadened claim add information to the application over the original content?’. In view of the desirability of certainty for third parties this may seem surprising – how can a granted patent actually cover more with its claims than the original filed patent application? The basic answer to this is ‘when it is clear from the application as filed that such an extension

Example: Added matter –intermediate generalisation in bouncy shoe invention

The inventor has developed shoes with coil springs in the heel. Claim 1 of the corresponding patent application recites ‘footwear comprising resilient biasing means in the heel’. Claim 2 recites ‘footwear as claimed in claim 1 in which the means of resilient biasing comprises a coil spring’. Prior art is found which discloses a shoe with a leaf spring in the heel. This deprives claim 1 of novelty as a leaf spring is ‘resilient biasing means’. Claim 2, however, is distinguished and it turns out that the coil spring gives a surprisingly increased bounce. Accordingly, amendment of claim 1 to incorporate a coil spring could give patentability over the prior art. However, the inventor recognises that in fact any compression spring – for example a block of rubber – would also give the surprising bounce. But a claim to ‘footwear comprising a compression spring in the heel’ is not a permissible amendment. Even though a ‘compression spring’ is a subset of ‘resilient biasing means’ there is no disclosure in the application as filed, specifically, of a ‘compression spring’ other than a coil spring. As a result, only broad claim 1 or narrow claim 2 is permissible –anything in between is an intermediate generalisation, for example covering the untaught combination of footwear with a rubber block.

of the scope was contemplated’. So if, say, the patent application as filed contained statements making it clear that certain features are only optional, and those optional features are found in the main claim on filing, then it may be possible to remove them during prosecution on the basis that – while this makes the claim broader – it was always clear that the invention was not limited to the feature.

Example: Added matter –removal of claim features in jack hammer patent

The invention is a pneumatic drill or jack hammer and the claim recites ‘a pneumatic drill having a reciprocating drive, a drill bit and at least two handles projecting from the sides’. The specification states ‘although the jack hammer may have two handles, it may alternatively have any number of handles or alternative grips or indeed no handles or grips’. Accordingly, prior to grant, and recognising that the recitation of handles in the claim is an unnecessary limitation, it would be permissible to amend the claim to recite ‘a pneumatic drill comprising a reciprocating drive and a drill bit’ (i.e., deleting the reference to two handles). The claim is broader now because more things infringe it (pneumatic drills with and without handles, whereas previously only pneumatic drills with handles infringed) but a claim of this specific scope was directly and unambiguously derivable from the application as originally filed such that the amendment is permissible.

In terms of the effect that the added matter provisions have on the drafting process, the

first point to note is that the restrictions do not apply only to a newly filed patent application –added matter only relates to amendments made after filing. The relevance, therefore, is this: the patent application should be drafted with a view to providing basis for amendments later on. Taking into account the various scenarios set out above, in the simplest case all possible information that may later be needed should be incorporated. If at all possible it should be incorporated more or less in the form in which it might be used as an amendment later on. For example, appropriate dependent claims should be added.

In addition the description should be detailed enough to fulfil this aim. At more subtle levels, where it is possible that combinations of features from separate embodiments may be important, then those combinations should be explicitly recited, bearing in mind that the mere statement ‘any feature can be combined with any other feature from any other embodiment’ probably will not be enough. Going back to the claims, intermediate generalisations should be actively considered – if there is a broad claim and a subsequent narrow claim, might there be one or more claims in the middle forming a sort of inverted pyramid? As far as claim broadening is concerned, all features that are optional should be clearly identified as such. Ideally they would not appear in the main claim anyway, but a practice such as this is good to develop. And the relationship of the dependent claims with the independent claim should be thought through carefully to cover as many discrete combination options as possible.

All of these considerations are looked at in more detail later in this book.

Are the claims supported by the description?

The last substantive requirement that needs examining in this section is that of ‘support’: the requirement that the claims be supported by the description (the US equivalent is ‘written description’). The reason that it is dealt with last is two-fold. Firstly support is peculiarly related both to the claims and the description and so fits in both categories neatly, even more so than added matter. Secondly, support is commonly confused with both sufficiency and added matter such that it is useful to look at those first to see where ‘support’ fits into the picture.

Even if people did not confuse the requirement for support with other requirements, it is a particularly difficult concept to understand. This is partly because it simply does not arise often in practice and partly because, when it has and the courts have got their teeth into it, they have themselves highlighted its inter-relationship at least with the concept of sufficiency – see the Biogen v Medeva decision, for example.1 In particular, they have had to do this in jurisdictions such as European courts where ‘lack of support’ is not a ground of attack post grant such that only if there is a corresponding lack of sufficiency can objection be raised.

At a simple level, the fact that the claims have to be supported by the description means that the claims and description should relate to the same thing. If the claims recite features that are not found in the description then they are not supported.

The concept of support becomes rather more difficult at the next level where, in effect,

1. Biogen Inc v Medeva Plc [1997] R.P.C. 1; (1997) 38 B.M.L.R. 149, HL

Example: Bat and ball patent – support in description for claim wording

A patent application relates to a child’s toy comprising a bat and a ball attached to the bat by a piece of elastic. The description recites the following possible shapes for the bat: circular, oval, square. Claim 1 recites ‘a children’s toy comprising a bat and a ball attached thereto via an elastic string’. Claim 2, dependent on claim 1, recites ‘in which the bat is one of square, circular or oval in shape’. There is a further claim 3, also dependent on claim 1 which recites ‘the bat takes the shape of an animal’. Claim 2 is supported by the description. Claim 3 is not. However, this can easily be remedied by incorporating appropriate wording into the description that the bat can also be animal shaped. (It could for example be shaped like a bat, but this would raise complex issues of interpretation.) Anyway, this does not add matter because the claims themselves provide basis for the ‘animal-shaped’ wording.

the test becomes ‘is the scope of the claims merited by the extent of the description?’ As stated by the English Patent Court in Schering Biotech’s Application:2 ‘the word support requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed’. Because the objection of lack of support does not tend to come up often, people seldom need to think about it, although it is more common in some areas of technology than others.

There is a clear relationship between support and sufficiency/enablement although

they are handled distinctly in the law. One way of remembering the distinction is to treat sufficiency as principally a description-led consideration, i.e. the description must give enough information to put the invention into effect. On the other hand support is, in a sense, led by the claims. For instance, are the claims broader than is merited by the description? There is also sometimes confusion between ‘support’ and ‘added matter’, but this is rather more straightforward. In order for an amendment after filing of a patent

Example: Chemical compound invention – claims unsupported

A description relates to a certain sub-set of chemical compounds having a set of advantages. The claim relates to a super-set of the chemical compounds not all of which share those advantages. An objection of lack of support may be raised as the invention may not necessarily work across the whole of its scope in the light of the description. Again this can usually be remedied by amendment, simply by limiting the scope of the claim to the specific sub-set of compounds.

2 Schering Biotech Corp’s Application, Re [1993] R.P.C. 249, Ch D (Patents Ct)

application not to add matter, information must have been available in the application as originally filed. Confusion then arises because of lax terminology: unfortunately, sometimes people say that the amendment was ‘supported’. This is a purely semantic problem – what people mean is that the amendment ‘had basis’. As a rule of thumb, by using the term ‘basis’ in this context the confusion can be avoided – only use the term ‘support’ when you mean ‘support’ and not in relation to whether an amendment adds matter.

In terms of preparing a patent application, support is typically less of a concern than sufficiency as, quite often, a lack of support of objection can be remedied either by inserting unsupported claim wording into the application by amendment of the description, or by subsequently restricting the scope of a claim appropriately. Accordingly, creating a patent document with unsupported claims is less likely to have a terminal effect but of course the requirement should be borne in mind.

Other issues

In terms of the considerations applied by the granting authority, i.e. the Patent Office, all of the substantive issues have now been examined. As a footnote, there are of course formal requirements to be met as well that vary from jurisdiction to jurisdiction. For example, some jurisdictions (the EPO for sure) require reference numerals from the drawings in the claims, or that the claims be put into two-part form comprising a preamble having those features of the claim common with the closest prior art document and a characterising portion including the novel features. Suffice to say here that formal

requirements of this nature can always be dealt with subsequent to filing such that they should not hold up the drafter unnecessarily.

The courts

So far, the patent has not even been granted. We have seen various objections that can be raised against a patent application prior to its grant which need to be accommodated during the drafting process. But the challenges do not end once the Patent Office has washed its hands of the patent. Patents can be opposed or revoked in many jurisdictions and on various grounds after grant as well and although there is some correspondence between the pre-grant and post-grant areas of objection, it is not a perfect match. Turning firstly to courtdriven revocation proceedings, recapping in Europe – both for national courts and the Unified Patent Court (‘UPC’) – five grounds are available:

• the patent does not relate to a patentable invention;

• the patent includes added matter;

• the patent has had its claims broadened since grant;

• the patent is insufficient; and

• the patent was granted to the wrong person (‘entitlement’).

General treatment of legal requirements by the courts

Of the available grounds, patentability, sufficiency and added matter are already familiar. In theory they are treated exactly the same irrespective of whether they are being handled by the Patent Office or a court, but in practice there can be differences. The differences certainly appear

in jurisdictions such as the UK where a fairly exhaustive adversarial procedure is entered into in court proceedings. Taking the example of patentability, all of the same criteria apply – the invention should not relate purely to excluded subject matter such as (in Europe) business methods, computer programs and so forth. The invention must also meet the requirements of novelty and inventive step/non-obviousness. However, as touched on earlier the case tends to be rather harder fought – the fact that a case has been mounted at all suggests that it is of sufficient commercial importance that both parties are willing to invest in it. In the case of patentability, therefore, it may well be that additional prior art is found following on from a party’s own knowledge or detailed searches and investigations – far beyond the prior art that would be found by the kind of searching that most Patent Offices will carry out. In jurisdictions that rely heavily on cross-examination, much more significance is likely to be attached to statements by witnesses explaining how and where they saw a prior art instance, even if that instance was not documented. Even though there may be no evidence of an actual written disclosure of the invention, such a witness statement will carry significant weight. As a result, new novelty attacks will often be mounted postgrant based on information that would not have been found by a Patent Office.

Treatment of obviousness by the courts

Perhaps an even greater concern is that obviousness may well be treated differently by the courts. Whereas a Patent Office works through thousands of patents a year and applies fairly mechanical tests in relation to obviousness – usually looking at technical advantages of technical features – the courts will often delve into obviousness in far more detail and on a case-by-case basis. They may also have much more expert evidence available to give an indication of exactly what would or would not have been obvious to the skilled person. As a result, patents for inventions were found entirely patentable at a Patent Office may be revoked by the courts in the same jurisdiction even without additional prior art, but based on additional evidence of obviousness. Certainly there is a tendency in some jurisdictions, including the UK, to find cases considered entirely patentable by Patent Offices and granted accordingly, unpatentable. The difference can be seen from an examination of the ‘Windsurfing/Pozzoli test’. 3 Because expert evidence is always part of the proceedings the test effectively starts with the common general knowledge rather than a specific prior art instance, and assessing whether the claimed modification would be obvious. This simply isn’t possible with the resources and time available to Patent Office examiners.

Conversely, in some jurisdictions the courts are open to rather more ingenious arguments in favour of inventive step. Once again this may be based on evidence of what the skilled person was actually doing at the priority date,

3. Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59; Pozzoli SPA v BDMO SA [2007] EWCA Civ 588

why there may have been strong dissuasion to pursue certain avenues rendering those avenues inventive, or other evidence of technical prejudice might have driven the skilled person away from an invention. All of this is theoretically available before grant as well, but parties seldom have the time, money or inclination to push a case to this level of detail. There have even been cases where patents have been won to a certain extent on non-technical points. For example, where a product that might otherwise seem technically obvious can be shown to have enjoyed enormous commercial success as a result of its technical features, then as long as those features are novel, the commercial success may in some circumstances impart inventive step as well. In terms of drafting a patent, the different approach taken by the courts is perhaps of no more than background interest. In view of the strict line often taken in revocation proceedings on patentability, however, it is perhaps worth reflecting that if patent attorneys only advised pursuing patents that they knew would stand up in court, there would be far fewer patents around. It is more realistic – and indeed more feasible – to draft a patent with an eye to the more mechanistic approach to patentability adopted by Patent

Offices, but the patentee has to be aware that even a granted patent may be subjected to yet stricter tests. It is also useful to recall that a patent does not need to be tested in court to be useful – investment decisions, licensing negotiations and standards pools are just three examples of areas where the existence of patents brings great clarity. In the end, as long as the patent attorney does their best to draft the best patent, its eventual strength will be determined by how good the invention is, not how good the drafting was.

Treatment of sufficiency and added matter by the courts

In a similar manner, both sufficiency and added matter are subject to the same law and approach – at least in name – before the post-grant authorities and the pre-grant authorities. As regards sufficiency, once again significantly more evidence of whether a patent is workable or not can be expected that may cast an alternative slant on the matter. As regards added matter, it is probably fair to say that many courts would not be as willing as Patent Offices to entertain amendments to claims based on terms previously only found in the description such that care should be taken when constructing dependent claims, a far more acceptable source of potential amendment.

Treatment of claim broadening in the courts

On a related topic to added matter, one previously available route is closed down post-grant, namely claim broadening. In other words, if a granted claim has a feature that the patentee subsequently decides is undesirable, it cannot be removed, even if it is clear from the description as filed that the undesirable feature was purely optional. Accordingly, even if removal would not comprise added matter, it would be prohibited as it comprised claim broadening.

The underlying purpose of the post-grant prohibition of claim broadening is to provide certainty for third parties. In particular, third parties should be able to look at a patent on the day it is granted and conclude that if they do not infringe it then they can proceed without worrying about subsequent changes to the patent. In effect, just as the contents of the specification are fixed in time on the day

Example: Railway track patent – claim broadening

A patent is granted claiming a new railway track shape, reciting ‘a railway track comprising a metal rail having an internal flange…’, with certain additional features relating to the shape of the flange. The description makes it clear that in fact the rail could be made of any material, not limited to metal and the patentee decides after grant that they want to remove the limitation that it is made of metal. Even though this would not comprise added matter, as it is clearly and unambiguously derivable from the application as filed that the nature of the material the rail was made from was not essential to the invention, the amendment is impermissible as the claim would be broadened by it. In particular, the broadened claim would now be infringed not only by metal rails having the flange formation but also similar rails of any other kind of material.

of filing, the contents of the claim are fixed in time at the date of grant.

Treatment of entitlement by the courts

In terms of its effect on the drafting process, the post-grant claim broadening provision is again probably of little importance other than to help comprehend the exact scope of the added matter provisions. Of even less import is the issue of entitlement unless, at the time of drafting, you are aware of potential entitlement issues. Generally there is little that can be done in drafting a patent application to accommodate possible future entitlement issues. Indeed it would be likely to reduce the quality of the patent application if any such attempt were made, although if specific circumstances were apparent at the time of drafting these should be taken into account, for example if the contribution of a specific individual could be identified, separated and excised.

Grounds not available after grant

In Europe, there are some pre-grant objections that are not available post-grant. For example, lack of clarity cannot be raised as an objection against a granted patent. Given that the clarity requirement can be decomposed into an infringement-style issue and a validity-style issue, potentially claritytype problems can sometimes be dealt with via one or other of these avenues.

It is also not possible to attack a granted patent for lack of support. However, when the relationship between support and sufficiency was been explored, for example in Biogen v Medeva in the (then) House of Lords in the UK,4 some parallels were identified such that lack of support was relied on to the extent it overlapped with insufficiency. In terms of the scope of this book, analysis at this level would be academic.

Another non-available ground is non-unity and at a practical level the fact that non-unity of invention cannot be raised post-grant is useful because, as discussed above, it means that if you do slip a patent past the Patent Office with two separate inventions in it then

you get two patents for the price of one that no one can do anything about. Not that any attorney would ever try that…

EPO OPPOSITIONS

One other jurisdiction of particular importance in Europe should be touched upon, namely the EPO Opposition Divisions and, subsequent to that, Boards of Appeal. As an alternative, or in addition to national or UPC revocation proceedings, an opposition can be mounted against a European patent within nine months of the date of its grant. The opposition is raised at the European Patent Office and, if successful, knocks out the patent across Europe, rendering it in that respect more powerful than national revocation proceedings, which need to proceed country-by country.

The grounds of opposition are a subset of the grounds of revocation. The patent may be opposed if:

• it does not relate to a patentable invention;

• it has added matter;

• it is insufficient; and

• implicitly, if the claims of the patent have been broadened post-grant.

So while it is worth noting that opposition proceedings rely on a slightly different set of grounds (notably excluding entitlement), the same considerations generally apply at the drafting stage. Perhaps the main point worth mentioning is that the EPO seldom relies on cross-examining such that documented prior art instances would tend to be more persuasive than witness statements. Also the EPO tends to be less adventurous in relation to inventive step arguments, concentrating on purely technical arguments and seldom

taking into account arguments, for example, regarding commercial success in support of inventive step.

CONCLUSION

Apart from clarifying the rather complex web of potential objections before various jurisdictions, the analysis in this chapter supports the recurring theme that, in practice, the legal requirements distil down to a rather simple set of criteria. In essence, the description needs to contain more rather than less, rendering it more likely to be sufficient and provide basis for later amendments without adding matter. The claims need to relate to, and recite the novel features that involve an inventive step that can be explained, if required, by argument based on advantages expressed in the description. At the fundamental level there is more but not much more. At the detailed level there is plenty, but all comprising refinement of the basics.

Interestingly almost all of the considerations when approached from the legal angle are narrowing ones in relation to the claims. As long as a claimed invention is novel and inventive it does not matter how novel or how inventive. The authorities would be perfectly happy with an enormously inventive, horribly narrow and generally uninfringeable patent. Only because this is likely to be unsatisfactory commercially do we have to fight for more scope.

Even so, this tends not to be the aspect of drafting that causes the most problems. As we have seen above the trickiest area that commonly arises in practice and certainly that raises its head during the initial drafting process is the requirement that the claims be clear. Even here, however, half of the

The legal requirements – checklist:

The patentability requirements considered by the Patent Office and Courts are:

1. Does the claim cover a patentable invention?

2. Is the description sufficient/enabling?

3. Are the claims supported by the description?

4. Has the specification been amended during prosecution to introduce subject matter not present at the date of filing (‘added matter’)?

5. Are the claims clear and concise?

6. Are the formal requirements met?

7. Are the claims in unity?

Of these, clarity is the most difficult to understand, but can be boiled down to two requirements:

• The claim must be self-contained – a third party should be able to determine infringement from the claim itself with requiring external context.

• No free beer – the claim should recite the features that give rise to an inventive (advantage) – not the advantage itself.

test for clarity is effectively an inventive step test, that the claim is not a ‘ free beer’ claim, merely claiming the advantage achieved – a desideratum – rather than the manner in which it is achieved. The other limb of the clarity requirement is the only instance pre-grant where the authorities take infringement issues into account at all, and effectively requires that the claim should be self-contained so that the infringer can work out, from looking at the competitor’s product or process and reading the claim without reference to external elements, whether infringement is there or not.

Claims that strike the correct balance between a patentable invention and useful commercial protection, therefore, should meet all of the criteria applied by the authorities although so far the balance is rather tipped

towards the narrowing legal influences of the patentability requirements. To redress that balance we need to remember that the patent is a business tool and therefore wants to be as broad as possible in its scope, and the next chapter looks at the people sitting on the other end of the see-saw.

5. COMMERCIAL CONSIDERATIONS

Looking at the business side of the patenting process, the goal is to carve out as much protection as is available for the patentee allowing exclusion or control of third-party activities over as broad a range as possible. As a result, it is not only necessary to define the core aspects of the invention, but the invention must also be covered in all of its forms. To claim the invention broadly, the essential features should be listed in the claim and each feature should individually be defined as broadly as possibly. To identify all of the forms in which the invention can be protected it is useful to look at the patentee’s activities and those of its competitors. What does the patentee sell? What does the patentee make? What aspect might the patentee want to license? What activities might third parties want to do?

APPARATUS (PRODUCT) AND METHOD (PROCESS) CLAIMS

One of the fundamental distinctions is between apparatus (product) and method (process) claims. Very often, where the jurisdiction permits, a patent will have independent claims in both categories – for example an apparatus claim relating to

the physical features of the product and a method claim relating to the way in which the product is used and/or the way in which the product is made as appropriate. Already the net is widening as a patent with claims in these categories allows control over parties selling the product, using the product and operating a process for making the product. These, in conjunction with typical legal definitions of infringing acts, create a powerful position. In addition, there are numerous specialist types of claims covering, for example, ways of using medicines or computer program products – all of which are part of the armoury of a patent attorney creating a commercially useful patent.

CLAIMING THE PRODUCT AT THE CORRECT LEVEL

At another level the invention can be thought of as a hierarchy of components, the patent attorney having to work out where, in the hierarchy, to direct the claim. For example, a spark plug is part of an engine that, in turn, is part of a vehicle. If the invention lies in a new type of spark plug, then a claim to the spark plug, to the engine including the spark plug, or to a vehicle including the

Example: Cement mixer invention – apparatus and method claims

The inventor has come up with a new kind of cement mixer that is designed to rotate in an unusual way. In order to form the components that impart the special rotational movement, a new manufacturing process is involved. When the cement mixer is used, the constituent materials are fed into the mixer in a certain order which, in conjunction with the unusual rotational movement, makes extra strong cement. The patent includes claims to the cement mixer and possibly the new components, the way of making the cement mixer components and the way of making cement using the cement mixer. In addition to being able to stop manufacturers and retailers from making/selling the cement mixer, the patentee can also close down the factory fabricating the cement mixer and can even stop companies using the cement mixer from making the cement itself. As a result, the patent can be used at almost every point of the supply chain and, importantly, can be enforced in certain strategic jurisdictions to great effect, potentially reducing the cost of obtaining/litigating the patent.

engine including the spark plug would all be equally patentable by virtue of the novel and inventive feature of the spark plug. The patent attorney needs to identify the smallest component down the hierarchy that possesses the inventive features and direct at least one claim there. As a result, whatever else the infringer is doing, they infringe at least that claim.

Jurisdictional issues

Treating the invention like a nested set of Russian dolls, therefore, the patentee has to decide which doll to claim bearing in mind not only what they do but what third parties might do. This is of particular relevance in view of the territorial nature of patents. Patents are infringed by activities in a single jurisdiction. A US patent is not infringed by

Example: Spark plug concept – claiming the right part of the product

The best way to understand this principle is by looking at what happens if it is not applied. In the case of the new spark plug invention, the patent attorney decides to have a single claim to a vehicle including an engine and the novel spark plug. The claim is novel and inventive by virtue of inclusion of the features of the spark plug. However, an infringing company makes only the spark plug which they then sell on to an automobile manufacturer to build into their cars. The spark plug manufacturer can point to the patent and assert that they do not infringe it as they do not make, sell, use, etc, a vehicle including an engine including their spark plug, but only the spark plug on its own. Although most laws embrace such activities as infringement in certain circumstances, this is simply an additional hurdle that the patentee must overcome to show infringement. If there had been a claim reciting ‘a spark plug (having the inventive features)’ then this initial hurdle would not exist.

someone carrying out activities in France and will not be infringed until some product of those activities arrives in the US. Even in Europe, until the advent of the Unified Patent Court (‘UPC’) infringement has been a country-by-country matter despite the existence of a European patent system, so that infringement must be dealt with in each of those countries alone. While the position changes with the UPC, the need to treat a patent claim on a per jurisdiction basis will remain best practice

Once again, therefore, the drafter has to decide where in the invention hierarchy the claims should be pointed, bearing in mind that the patent must be drafted to be infringed by activities in one country alone. This can be the case even if equivalent patents exist in two countries in which, between them, the whole invention is performed. In the case of the spark plug scenario above, where the spark plug is made in one of the patent countries and the vehicle is made in another patent country but they are assembled together in a third non-patent country, then there is no ‘direct’ infringement in either patent country and the patentee would have to rely on more complex legal doctrines to find infringement. This problem is particularly acute with distributed systems – for example inventions including a client-server set up where the client computer and server computer are in different jurisdictions, in which case it is desirable to have separate claims to each of the client and server computers, or more generally, to activities at each node in the transaction.

INTERPRETATION OF CLAIMS

Where an infringer has done anything other than exactly copy a competitor product

Example: Remote transaction patent – performed in multiple jurisdictions

An invention relates to a new kind of secure transaction between two computers. Each computer carries out novel encryption/decryption steps during the transaction. A claim of the type ‘a computer system comprising client and server computers carrying out a secure transaction using… (the encryption/decryption steps)’ would not be directly infringed by a computer network where the first computer was in one jurisdiction and the second computer was in another jurisdiction. Ideally two claims would be provided, the first being ‘a client computer carrying out various encryption/decryption steps’ and the other being ‘a server computer carrying out the various encryption/ decryption steps’ together perhaps with a full system claim.

they may try and run an argument of noninfringement if they are caught. Usually this is based on shades of interpretation and lengthy discussions of the meaning of various terms in a claim. This is another debate that principally makes lawyers happy to the exclusion of anyone else. The manner in which claims are interpreted differs from jurisdiction to jurisdiction. In the US the ‘doctrine of equivalence’ is applied to assess whether an infringement is an equivalent to a claimed invention if it is not identical. In European national courts the approach is similar although as infringement is dealt with by national law the application of the doctrine

Example: Door lintel patent—interpretation of ‘vertical’

One of the most famous case in British history from this perspective is Catnic v Hill and Smith, 1 which went all the way to the (then) House of Lords. The patent claim was to a lintel (a beam above a window providing structural support so that the wall above does not break it) having a ‘vertical’ member. The infringement had a member that was not quite vertical but achieved all the same effects. Only after hearings at the High Court, the Court of Appeal and the House of Lords was infringement found on the basis that, although the infringement did not have a vertical member, it served the same purpose. ‘Purposive construction’ has survived in one way or another through every iteration of the constructing tests formulated since. As far as the patentee was concerned, the correct conclusion was arrived at, but they cannot have been happy with the legal costs incurred in getting there. It is easy to do things with the benefit of hindsight, but if the claim had said ‘substantially vertical’ then infringement may have been found more cheaply!

differs subtly from state to state. This is despite the fact that all Contracting States are governed by Article 69 EPC and its protocol mentioned above that states that the extent of the protection is determined by the claims, the terms being interpreted between a first, narrow extreme comprising ‘the strict, literal meaning of the wording’ and a broad extreme where the claims serve ‘only as a guideline’. The protocol further contemplates equivalents but only in general terms – leading to the slightly different interpretations between jurisdictions.

Every attempt to govern exactly how to interpret a claim is doomed to failure because the task is simply indefinable. The English courts have formulated a succession of approaches converging on an ever-closer

implementation to the protocol to Article 69 EPC where each feature was tested to see whether it was an immaterial variant in relation to the invention, arriving at the Supreme Court Actavis2 decision with an explicit expression of a doctrine of equivalents. The details are not necessary here; the most important point is that the drafter has to understand the impact of legal claim interpretation techniques on the claim drafting process. The impact is this: the patent attorney should do their utmost to ensure that the lawyers never need to apply claim interpretation tests as the existing claim wording should cover all infringements without any doubt or ambiguity. The legal interpretation tests are only there if the patent attorney has failed in their task. This is not to

1. Catnic Components Ltd v Hill & Smith Ltd (No.1); sub nom. Catnic Components Ltd v Hills & Rutter [1981] F.S.R. 60; [1982] R.P.C. 183, HL; reversing; [1979] F.S.R. 619, CA (Civ Div); reversing in part; [1978] F.S.R. 405, Ch D

2. Actavis UK Limited and others (Appellants) v Eli Lilly and Company (Respondent); Eli Lilly and Company (Appellant) v Actavis UK Limited and others (Respondents); Eli Lilly and Company (Appellant) v Actavis UK Limited and others (Respondents) [2017] UKSC 48 On appeals from: [2015] EWCA Civ 555 and 556

dismiss the efforts of the patent attorney – for every clever patent attorney there is a clever infringer and a devious lawyer ready to design around and misinterpret a claim respectively. Claim interpretation issues arise in the vast majority of patent cases despite the patent attorney’s best efforts. We should nonetheless strive to draft a claim that is directly, literally infringed.

It is simple to exhort the drafter to do a good job as a result of which the complex legal tests will not be needed because any infringement will fall slap bang into the claim. It is significantly more difficult actually to draft such a patent. But the most important thing to do is to ensure that the patent captures the generality of the invention rather than one particular way of putting it into effect. Then, if a competitor takes the invention, in whatever form, they infringe the claim. If they do not take the invention then they do not infringe the claim and the inventor should not be upset because their invention has not been taken. This elegant logical construct wobbles, however, when it meets the practical problem of using words from our finite vocabulary to capture a purely intellectual concept, namely an invention, and falls over altogether when the lawyers get involved.

Definition of Infringing Acts

At a slightly more academic level, the law sometimes draws a distinction between the ‘extent of the invention’ and the ‘scope of the monopoly’. For example, according to s.125 of the UK Patents Act the extent of the protection afforded by the patent is determined by the claims that are then interpreted using the various legal tests described above. The scope of the monopoly, on the other hand, refers to the types of

activities that a patent can be used to prevent and which tend to be of more importance during the initial drafting procedure.

In the UK, the UK Patent Act defines the scope of the monopoly in section 60 (1) and (2) as follows:

Infringement

(1) a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say –

(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise.

(b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;

(c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.

(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without consent of the proprietor, he supplies or

offers to supply means, relating to an essential element of the invention, for putting the invention into effect…’

Example: Infringing acts in packet routing invention

An inventor has come up with a new way of routing packets of data on the internet between routers. This involves a physical apparatus in the form of a router, steps performed at the router for making routing decisions and a piece of software carrying the instructions for performing those steps. Infringing acts could include creating a piece of router hardware in which the software is embedded, or selling or importing it (making/selling/ importing the product), carrying out the relevant steps (using the process) and creating, importing, or selling the software. The last of these could include both putting the software on a carrier (‘machine-readable medium’) or making it available remotely for download. Claims need to be formulated to cover all of these acts and might include: ‘a system for carrying out the routing steps…’, ‘a method of carrying out the routing steps…’; ‘a computer/machine readable medium comprising instructions for implementing the method…’ together with claims to individual per-jurisdiction components of the network ‘a router…’ As more countries introduce charges for too many claims, it becomes more costly to reflect all of the possible commercial expressions of the invention cheaply, which is a matter for negotiation with the person paying the bills.

These requirements are common across Europe and the general definition of infringing acts is common worldwide covering, as it does, just about everything you could do with an infringement. These are also the requirements that provide more information about how the claims should be formulated – pushing the invention from an undefinable concept to a product that can be made, sold, imported and so forth or a process that can be used. These provisions make it clear that the principal things that need to be captured are physical manifestations of the device such as a product or apparatus, or physical processes such as a method of manufacture or a method of use. Accordingly, once the infringing acts have been identified, all the appropriate claims and claim types can be put together.

Direct product of a process claim

Two further interesting points come out of the definitions of infringement. The first is that protection for a process extends to certain acts in relation to any product ‘obtained directly by means of that process’ so if a patent claims a method of making a product – even if it does not have claims extending to the product itself – some protection may still be available against third parties making, importing, or selling that product. It would not, however, be good practice simply to rely on the method claim. If there is a possibility of a product claim then this should be pursued as well. This is for various reasons. First, it removes the requirement to show that the product was made directly by the process and indeed covers all products of that type whether or not made by the process. In addition, the courts have laid emphasis on the word ‘directly’ in the product-by-process provision. For

example, in Pioneer Electronics v Warner Music3 the UK courts found that a claim to a process for making a master CD did not cover CDs that were made from a mould taken from one of several replicas of the master CD. In particular, the courts held that sale of the master CD itself might have infringed a claim to a process for making a master CD but that the non-master copies, while coming from a product made by the claimed process, were not directly obtained by the process. However, most jurisdictions will not accept a claim of the form ‘A product made by the process of…’ unless the product features are specified and independently meet the patentability requirements. But at the drafting stage, it’s worth a try!

Contributory infringement

Secondly, the scope of the monopoly also embraces acts in relation to products or processes even where they do not match all of the terms of the claim in some circumstances. In other words, even though the extent of protection of the claim does not embrace those products, they may still be found to infringe under the doctrine of ‘contributory infringement’. So far, we have been looking at what might be termed ‘direct infringement’, that is, acts carried out in relation to products or processes that include all of the features of the claims. However, s.60(2) of the UK Act above, and similar provisions in Europe and in many other territories, embrace the possibility that infringement may occur in relation to ‘means essential for putting the invention into effect’. In other words, even if an infringement does not include every feature of the claim, if it is enough to make

Example: spark plug –contributory infringement

The invention is a new kind of spark plug but the only claim in the patent recites ‘a vehicle including an engine having the spark plug including (the novel features)’. An infringer makes the spark plug but sells it on to another party who puts it into an engine in the vehicle. As a result, the spark plug maker is not a ‘direct’ infringer as they do not make a vehicle including an engine including a spark plug. However, they may be a ‘contributory’ infringer on the basis that the spark plug comprises an essential element of the invention for putting the invention into effect. Given that the spark plug is where the invention lies, this argument may have strength. However, it is necessary to prove that it is an ‘essential element of the invention’. If there had been a claim specifically to the spark plug including the novel feature then this additional hurdle would not have existed and infringement could have been found more easily.

the invention work it may infringe. This does not extend to ‘staple products’ but only essential features of the invention. In other words, it is possible to infringe a claim even if you do not have all of the features, as long as you can prove that what you do have comprises essential features. As a result, there may be a way around some of the scenarios above, where a vehicle was claimed rather than the spark plug, although once again

3. Pioneer Electronics Capital Inc v Warner Music Manufacturing Europe GmbH [1997] R.P.C. 757; (1997) 16 Tr. L.R. 266, CA (Civ Div)

it takes more work, and more expense, to prove contributory infringement than direct infringement.

CONCLUSION

As far as the patentee and inventor are concerned, therefore, the object of the patenting exercise is to obtain as broad a patent as possible in terms of the features of each claim, and to cover all of the possible commercial implementations of the invention in multiple claims. If the patent system were driven only by the patentee, without paying attention to the interests of the third party, therefore, all patents would be unimaginably broad and would cover everything. (As an aside, they would also exclude all information regarding how the invention was put into effect so that, even after the patent died, third parties could not start making the invention.) The patentees, therefore, sit firmly on the other end of the see-saw from the legal patent granting authorities but the system as a whole ensures that the broadening influence of commercial interests is mitigated by the narrowing influence of third party fairness, to strike the balance.

Commercial considerations

– checklist:

 To be commercially useful, the patent claims must cover as many potential infringements as possible

 Various issues therefore need to be taken into account:

• Is the invention an apparatus or method (or both)? .

• Has the invention been claimed at the correct level? .

• Has the invention been claimed in a single jurisdiction? .

• Have all possible infringing acts been covered?

6. THE BALANCE

A brief recap and look ahead is in order.

THE LEGAL AND COMMERCIAL PEOPLE

Recapping, the people who are concerned with patents fall into two principal categories: those who grant or review patents – such as Patent Offices and courts; and those who own or infringe patents. The grantors are generally interested in legal issues that are narrowing whereas the owners are concerned with commercial issues that are generally broadening. Both sides of the equation are fairly complex and, in particular, any number of legal considerations are involved in deciding whether a patent should be or should have been granted. However, they boil down to a few simple issues and it turns out that a patent that is drafted to strike a balance between obtaining a commercially useful broad claim and a legally valid narrow claim tends to be a strong one. All the other complex considerations are attended to if this basic aim is pursued. So far the simple statement that ‘a patent that strikes this balance will be a good one’ is not of great commercial use to the drafter. The reason we have gone into so much detail about the legal and commercial considerations is simply to show that once

resolved they are not as difficult as they might seem and that most of them are dealt with automatically by the experienced drafter. The next task is to discuss the drafting process in more detail with a view to it becoming intuitive.

THE PURPOSE OF THE PATENT DESCRIPTION AND CLAIMS

In later chapters the structure of a patent is examined in detail and it does indeed have multiple components. However, in practice, there are only two parts of the specification that are required to meet the contract between the patentees and the public, the description and the claims. Bearing in mind that the contract represented by a patent gives the inventor a monopoly as long as they define that monopoly and provide technical information to the public about how to implement the invention, the purpose of the description and the claims in reality can be seen immediately and it is only these two parts that are looked at in any detail or legally tested.

The purpose of the description is to provide sufficiency, support and basis for amendment. The first of these requirements, sufficiency, is that a third party reading the

patent document could put the invention into effect. In addition to the description, we must provide support for the claims both by providing a discussion of all of the features that appear in the claims and describing the invention in terms commensurate with the scope of the claims. Finally, given that subject matter cannot be added to a patent application after filing, all the information has to be in there at the outset, so a comprehensive specific description gives the best option for revising the claims later on by introducing subject matter from the description without adding matter.

The purpose of the claims is to define the scope of the patent so that third parties know what they can and cannot do, both in terms of identifying the essential features that will be found in any infringement, and in ensuring that each of those features can be clearly understood. The claims are also the part of the patent where patentability lies. In particular, it is the claims and not the description, that are tested for novelty and inventive step. As a result, it is the claims where, eventually, the balance is struck between commercial and legal considerations.

The description

Looking at the description in a little more detail, without spoiling the suspense too much it can be sub-divided into two parts that can go by various names but are termed here the introduction and the specific description. Taking the introduction first, its inclusion and form in patents is in some ways more a matter of custom than law, although some aspects are of some importance in practice. A large portion of the introduction is a discussion of relevant prior art and, in particular, the drawbacks with that relevant prior art. The

benefit of this approach is that it establishes the challenge facing the inventor at the filing date of the patent application, which is the date at which the question of novelty and inventive step is considered. In effect, by explaining the prior art and the problems with it, the reader of the patent is given all the information that the inventor would have had at the relevant time, which is helpful in making a real-life assessment of how inventive they had to be to overcome the problem. In fact, the reader may have more information than the inventor as identification of the closest prior art might only have occurred with knowledge of the invention; this hindsight aspect is unavoidable in an objective system as discussed elsewhere. Given the prior art, and the rather useful clue as to what the problems were with it, the reader of the patent could well stop and ask themselves how they would have overcome those problems. In practice, people often go straight to the claims and so are armed with hindsight when deciding whether or not the invention was obvious – they know what it is; the claims define it. Even though most people tend to cheat in this way, and notwithstanding the built-in constraints of an objective system, it is good practice to view the purpose of the introduction as being to set up the prior art and problem as though the reader were the inventor faced with the difficulties and charged with overcoming them.

The introduction is artificial for various other reasons. Firstly, it is effectively a piece of advocacy that the drafter uses to present the invention in its best light. After the patent application is filed the searches carried out by the Patent Offices more often than not reveal yet more relevant prior art so that, during examination of the patent application when

Example: Bicycle chain patent – introduction

The inventor has come up with a bicycle using a chain between the pedals and the wheel rather than putting the pedals directly on to the wheel. This means that there is far more flexibility in the structural design of the bicycle and also allows a gear ratio to be implemented. In that case the introduction to the patent application would cite prior art bicycles having pedals mounted directly on the wheel and discuss the disadvantages that this entailed in positioning of the saddle relative to the wheel and the need to pedal furiously or have an enormous wheel to get any speed up. There the introduction ends. Presented with this information and no more, the seemingly straightforward approach adopted by the inventor is perhaps not so obvious – what would you, the reader, have done faced with this problem? The best the drafter can do is to strip the reader of hindsight and see if the reader is as clever as the inventor.

providing the most repeatable and most consistent approach to assessing invention that anyone has come up with.

issues of patentability are raised, the patent attorney may have to change direction quite radically in formulating novelty and inventive step arguments. But to state that this aspect of the application is artificial is not necessary to detract from it. The patent system as a whole is artificial. Again, it is the legislator’s best attempt to provide a system that objectively assesses the totally subjective question of what qualifies as a patentable invention. Perhaps, rather than calling the approach artificial, a better word is formulaic, the formula applied

The other substantial portion of the description is the specific description that sets out in more detail examples or embodiments of the invention. The fundamental legal requirement is once again sufficiency; the skilled reader – i.e., someone who knows the technology – must be able to read the description and put the invention into effect relying on their background knowledge to fill in any gaps. It is desirable to make sure that those gaps are smaller rather than larger as a patent can be attacked for insufficiency at any time. Beyond that, the requirements of support and added matter must be considered. In order to provide support, there must be some correlation between the description and the claims and, in particular, if the claims are enormously broad and the description has one absurdly narrow embodiment (it can be more subtle), then a lack of support could entail, although this is more common in the chemical, pharmaceutical and biochemical fields than in other areas. At a practical level, the specific description provides a ‘repository of desperate amendments’, that is to say, if all of the claims are found unpatentable over newly introduced prior art, there may still be an opportunity to introduce additional novel and inventive features into the claims from the specific description without ‘adding matter’.

The claims

Turning to the claims in a little more introductory detail, typically there will be at least one main or independent claim and various dependent claims referring to it. The purpose of the main claim is to define the

invention in terms of its essential features, which should provide novelty. The advantages achieved by the invention should arise as an inevitable result of those features even though those advantages do not have to be expressed in the claim itself; the invention is not the result achieved but the manner in which it is achieved, and this should be reflected by the claim.

Drafting of the main claim – which can often be only a few lines long – is the single most important skill of the patent attorney as it is within these few precious words that they have to satisfy patentability considerations, clarity considerations, and commercial considerations while maintaining semantic

and grammatical elegance. The dependent claims are then additional, preferred or optional features to which the invention is not limited but to which it could be if it turned out that the broad expression in the main claim were not novel or not inventive in the light of prior art.

CONCLUSION

We have seen how the principal parts of the patent document are driven by law, practice and commercial requirements. The only thing that remains to be explained after all of this, is how to draft a patent and the next chapters provide a practical guide.

7. THE DESCRIPTION

The development of the various components of the description has been driven partly by the law and partly by custom, largely sensibly into a reasonably strict and universally applicable structure even if it does not avail itself of modern technology as discussed later in this book. The differences that remain arise for various reasons. For example, different countries have slight variations in their approaches and, because drafting a patent tends to be a fairly solitary and, during postqualification, a largely unsupervised process, different individuals undoubtedly develop their own idiosyncrasies. However, it is usually the case that a patent drafted in one jurisdiction will meet all of the substantive and most of the formal requirements in most other jurisdictions and so here we talk about a basic template. It is particularly important to be aware that the form of a patent application differs much more significantly between different types of technology, with the difference between, say, a patent in the area of chemistry and that of mechanical engineering being noticeable.

Here we deal with the more traditional form of patent specification found in technologies such as mechanical

engineering for various reasons. Firstly, many of the drafting examinations are based around inventions of this nature. Secondly, patenting in relation to most technologies has developed along the same lines as those in mechanical engineering drafting. Thirdly, the principles applied in this field are highly transferable to other areas such that it provides the best foundation. A brief discussion of other technologies is found in later.

In summary, the principal components of the description can be separated into a first half comprising an introduction and a second half comprising a specific description.

THE INTRODUCTION

The introduction is structured like this:

• Title

• Field of the invention

• Discussion of prior art features

• Discussion of prior art problems or disadvantages

• Statement of invention – recitation of the features of the claims

• Explanation why these features solve the problems with the prior art

• Recitation of the drawings captions.

When it comes to drafting patents you cannot be too paranoid. You cannot overestimate the opportunities a competitor may see for designing around. You cannot begin to guess what bizarre prior art may come up and accidentally anticipate what you thought was a perfectly clear-cut claim. You should give in to all those fears but in a controlled manner. A good patent is characterised by unfettered –but well-structured – paranoia. A good patent, as we shall see, also tells a story. The first half of it is manifested in the description. We take each of these parts in turn.

The title

A simple approach for the title is for it to correspond to the introductory clause of the claim (sometimes this is termed the ‘name’ of the claim). Certainly, the title should be anodyne and no more limiting than the claim. This is because in some jurisdictions such as the US almost any part of the patent is used to interpret the scope of the claims. It is also because in some jurisdictions such as the UK, patent applications filed there are immediately searchable for a limited amount of information including the title, the applicant and the date of filing even if they are not fully published for 18 months. As a result, a descriptive title can give away a lot of information to a competitor. Why not use just the name of the claim, e.g., its opening noun.

Field of the invention

The next part of the introduction is often termed the ‘field of the invention’. This is where a little more information is given as to the area of industry in which the invention lies. It is questionable how much weight should be attached to this part of the introduction when it comes to interpreting the claims, but even so it is worth ensuring that the field of invention is thought through as it could be argued, for example, that from the definition of the field of the invention information is provided about the nature of the skilled person, which, in turn, can

Example: Roller skate patent –field of the invention

In relation to the roller skate patent, it would be quite acceptable to recite, as the field of the invention, that ‘the invention relates to roller skates’. If the claim started ‘a roller skate comprising first and second pairs of wheels mounted on respective axles…’ then the field of the invention could be similarly worded, ‘the invention relates to roller skates for example of the type having first and second pairs of wheels mounted on respective axles’.

Example: Roller skate patent – title

Let us venture once more into science-fiction – please don’t experiment with the madeup technology in the next few examples. Your inventor has come up with a new kind of roller skate. Existing roller skates have fixed pairs of wheels, one at each corner of the foot, making steering difficult. Your inventor has recognised that if each pair of wheels are on an axis that can pivot then manoeuvring is much easier. Assuming the claim begins ‘a roller skate…’ then the title can be the same.

impact on both interpretation of the claim and identification and analysis of prior art. One approach is to use the ‘preamble’ of the claim – the first few words or if as discussed below it is drafted in the EPO ‘two-part form’ the features common with the prior art at the start of the claim. This is by no means a hard and fast rule but again, usually, less is more.

The prior art

Now comes the discussion of the prior art. Various issues arise in this respect including which prior art to talk about, what to say about it and how much prior art should be discussed. As remarked in previous chapters, a good way to decide on the contents of this part of the introduction is to try to set the scene for the examiner or court considering patentability of the invention. Patentability is assessed by looking at the prior art at the filing date of the application through the eyes of the skilled person and identifying how problems with the prior art were solved or disadvantages overcome. As a result, the prior art section should identify the prior art that best demonstrates the problem overcome by the invention as set out in the claims. It is not necessary to discuss every known piece of prior art and quite often it is enough to discuss a single piece of prior art. Usng the European Patent Office concept of the ‘closest prior art’, the disclosure which ‘constitutes the most promising starting point for an obvious development leading to the invention’ might be selected legitimately and usefully. Yes, this could in reality involve hindsight but that is inescapable, the key is to go no further in the prior art discussion, mirroring the EPO approach.

Sometimes the drafter agonises about a piece of prior art that is so close that it makes

the invention look weak. If there is prior art this close then the inventor should of course be considering whether filing a patent at all is worthwhile – it could well be unethical to file a patent application to a claim which is known not to be novel and most jurisdictions will eventually catch a patentee who knowingly obtains an invalid patent and may, for example, restrict the remedies available to them. In the US the duty of candour requires that all relevant prior art be brought to the attention of the authorities. In other jurisdictions the fact that such a patent was obtained may come out in evidential or disclosure proceedings and may be used by the courts as a reason to exercise their discretion not to allow amendments such that the patent is incurably invalid. (You wouldn’t come out of this too well either if you knew the backstory – do not permit this situation to arise).

Moving to cases where the prior art is quite close but there is an argument of novelty then it is perfectly legitimate for the drafter to put forward the best case in relation to that prior art that will also give a feel for the strength of the patent in the longer term.

Example: Roller skate patent –discussion of the prior art

In the case of the roller skate invention the relevant prior art is fairly clear cut – roller skates with fixed axles. The discussion of the prior art might run ‘known roller skates include first and second pairs of wheels on fixed axles. However, in order to steer those skates the wearer has to re-distribute their weight which can affect balance and restrict manoeuvrability.’

In some instances it may be necessary to cite more than one piece of prior art, in particular where the invention is of an incremental nature, improving on a preceding arrangement. For example, in that case it may be useful to understand why the preceding arrangement itself was an improvement in order to put the invention into context. It will be seen that there is a linear feel to such an introduction as it effectively talks about the developmental stages allowing the present invention to be understood.

In addition, judicious use of the prior art can potentially help bolster a sufficiency argument. If information is presented in the introduction, then surely this suggests that this level of background is so well known to the skilled reader that there is no need to explore it in full detail in the rest of the document. But beware – only use this as a last resort argument; make sure that the description is sufficient in its own right anyway – just in case.

Remembering that the purpose of the introduction is to identify the challenge the inventor faced, it is not often a good idea to cite multiple prior art documents, especially

where they are what might be termed ‘parallel’ prior art documents – the invention effectively lying in combining aspects of two prior art instances to arrive at the invention.

Choosing which one of the two to cite is perfectly permissible in patenting. There is no question of novelty as neither specific instance of the prior art discloses all of the features of the invention. The question becomes one of inventive step. If it would be an unusual choice to combine the teachings from the documents because they are from different fields or mutually inconsistent, then inventive step may well be present, especially if, in combination, the two components are surprisingly effective.

Reciting both of the prior art instances in the introduction, would therefore tend to give the invention away and indeed make it look obvious (an unfair level of state-sponsored hindsight, basically). Far better to select the closest one of the two from which the problem solved by the invention can be understood and leave it there – the ‘closest prior art’. If it is important to understand the other piece of prior art for the purposes of explaining how the invention works in sufficient detail,

Example: Door spring patent – discussion of multiple prior art instances

The inventor has realised that doors with springs fitted, while being useful for example as fire doors, tend to slam quickly and can be hazardous to the user. The invention lies in associating a damper with the spring to slow the door slamming action down. In that case it is useful to understand the context – doors need to close quickly and automatically, but not so quickly that they can catch fingers, etc. As a result, the introduction might deal with the prior art in a linear fashion: ‘it is known that it is desirable for doors to close automatically (prior art 1) and to that end spring loading has been associated with doors to provide such automatic closing (sequential prior art 2). However, existing spring loading arrangements can cause the door to close quickly which can be hazardous to persons using the door.’

then this can be introduced in the specific description as background to enable the skilled reader to better understand how to put the invention into effect. This is not an artful way of dressing up the invention, but a legitimate presentation of the situation the inventor found themself in before they came up with the invention and is a direct reflection of the problem solution approach. The inventor can be presumed to have known about the closest prior art document but part of their invention was to realise that it could be combined with a different teaching to come up with the invention. As a result, the mere act of selecting the other teaching comprised an inventive step. So simply to recite it boldly in the introductory section in conjunction with the closest prior art is an unrealistic reflection of the challenge faced by the inventor.

The introductory section is not an opportunity to list the entire state of the art which the inventor should have been aware of, it is to represent the starting point from which the inventor arrived at the invention.

One of the most important points to remember in drafting the discussion of the prior art is that, given that it is reflecting the challenge facing the inventor, the discussion should not give the invention away. The discussion should end with an identification of the problems or disadvantages associated with the prior art but such problems can be expressed in different ways, some of which make the solution seem entirely obvious. Once again, expressing the problem or disadvantage in such a way as to illustrate how neat the solution is does not constitute artful drafting. Put another way, expressing the problem in

Example: Roller skate patent – selection of prior art to be discussed

Going back to the pivoting of roller skates, it turns out that the use of pivoting axles between pairs of wheels is well known in go-karts, and a similar miniaturised mechanism can be used to great effect on the roller skates. There could well be patentability here; the dynamics involved in designing a go-kart are significantly different from those in roller skates, not to mention the relative dimensions involved such that the combination is not obvious. In drafting the patent application, the introductory section would almost certainly start with roller skates as the closest prior art – they are a more likely starting point for roller skate design than a go-kart after all. There should be no need also to discuss go-kart axles in the introductory section – the difficulty the inventor had in improving roller skates was to find how to make them more manoeuvrable. The inventive step was to recognise that the kind of pivoting axles found in go-karts could be incorporated. So if go-kart axles were discussed as well, an unrealistic picture would be presented of what the inventor had to do to arrive at the invention as it would be suggesting that it would have occurred to anyone that relevant teaching could have been found in the rather disparate world of go-karts. In the specific description, reference might be made to go-kart axles if the detail is similar in order to strengthen the sufficiency of the patent application. The great Sir Robin Jacob has opined on the team of skilled persons; that is beyond the scope of this book but a roller skate designer and a go-kart designer would be a pretty odd team.

such a way that the solution is immediately apparent is, in effect, yet again inadmissibly applying hindsight to the situation. What needs to be done is to identify the difficulties that were faced in general terms – this is where the inventor started from. Leave the reader on tenterhooks as to where the inventor ended up.

Example: Roller skate patent – expression of prior art disadvantages

In the case of the roller skates, the disadvantage with fixed-axle roller skates could be expressed as ‘a problem with existing roller skates is that the axles are not pivotable so that steering is very difficult’. This does not make the solution (making them pivotable) surprising and generally invites an attack of obviousness. In fact, putting oneself in the shoes – or roller skates – of the inventor at the filing date, all they knew was that, when they skated around, they had problems turning corners and generally manoeuvring. Accordingly, the state of the art conundrum might better be expressed as ‘a problem associated with known roller skates is a lack of manoeuvrability’. This is a more realistic reflection of the problems associated with the prior art and makes it clearer just how little guidance the inventor had for dealing with the problem. That they recognised that providing pivoting axles was a solution no longer looks such an obvious step. The introductory section has now put the invention in the proper context with post de facto knowledge stripped away, illustrating just how much hindsight blights the assessment of inventiveness.

Object clauses?

Patent practices change and patent attorneys change and there are some aspects of the patent specification that have slipped out of fashion, including the portion of the introduction that traditionally followed the discussion of the prior art, namely the ‘object of the invention’. Older patents will often be seen with statements such as ‘it is an object of the invention to provide a cheaper/lighter/quicker product’, largely anticipating the improvements achieved by the invention. This has given rise to problems in some jurisdictions where patents have been held not to be valid if they did not achieve all of the expressed objects. As a result, more non-committal expressions have begun to appear, such as ‘it is an object of the invention to avoid or mitigate the disadvantages set out above’. In other words, the invention does not have to achieve much to meet its objects. In fact, if you look at a lot of patents drafted over the last decade, object clauses have disappeared, without any objection from Patent Offices and no concern expressed, to the best of the author’s knowledge, by the courts either. There is some logic to this. So far all of the components of the patent specification have had some purpose, be it setting the field of the invention or identifying where the invention started from.

Given that, as discussed below, the advantages of the invention will typically be set out elsewhere in the specification, there seems to be little need for an object clause. Certainly there seems to be little point in having a clause that is the same in absolutely every patent application for no other reason than tradition – and only seems to cause trouble.

The statement of invention

Next comes what is often termed the ‘Statement of Invention’. This is another part of the patent description for which a current legal requirement is difficult to identify but which still appears as a matter of custom. This section of the patent is not to be confused with the claims that actually define the invention. However, traditionally, it would mirror the wording of the claims more or less exactly other than in minor presentational detail.

Example: Image display patent – statement of invention

Where claim 1 recites: ‘an image display comprising a plurality of individually activatable pixels’ and claim 2 recites ‘an image display as claimed in claim 1 in which the pixels are multicoloured’ then historically the statement of invention might have read: ‘According to the invention there is provided an image display comprising a plurality of individually activatable pixels. Preferably the pixels are multi-coloured.’ Importantly, words such as ‘preferably’ or ‘optionally’ or some form of conditional wording would be applied in relation to the subject matter of dependent claims to make it clear that they are not essential to the definition of the invention.

the length of the document, and attendant page and translation fees. Also, from a practical drafting point of view, it avoids problems with redrafts of patent applications prior to filing. However, care should be taken not to forego the principle of the statements of invention altogether. One school of thought is that the statement of the invention is ‘there for the judges’. Bearing in mind that the discussion of the prior art has been written to set the scene for the invention, identifying the problems with the prior art and reflecting the challenge that was faced by the inventor in overcoming those problems, the reader is on tenterhooks as to how the problem is solved. So we want to tie the claims in with the solutions they provide to the problems identified in the prior art section. This however does not need to be dealt with in the statements of invention – appropriate comments can be made anywhere in the specific description although, ideally, they will appear earlier rather than later. Further, in the US, we are seeing a shift of this function out of the introductory section, so as not to prejudice interpretation of the claims for various reasons. In terms of ease of reading the document and ‘telling the story’, clearly it is useful to have the answers following on closely from the questions asked in the discussion of the prior art. We suggest therefore simply saying ‘the invention is set out in the claims’ here, for form’s sake, and using an ‘overview’ section – discussed further below, to tell the story, amongst other jobs.

This facet is also disappearing. There is zero point repeating the claims word for word. Patent offices are happy to accept a simple statement along the lines of ‘the invention is set out in the claims’ as meeting the support requirement. This simple alternative is attractive from the point of view of reducing

The drawings captions

The next part of the description effectively provides a transition from the introduction to the specific description by way of an introduction to the drawings. The first part of this is a piece of boilerplate text but one

that has a purpose – providing a readily recognisable and well accepted way of identifying the relevance of the drawings. Typically, it will read something like:

‘Embodiments of the invention will now be described, by way of example with reference to the drawings of which…’

This is followed by a listing of the figures together with brief descriptors. The descriptor is typically fairly innocuous but can be important in identifying when a figure is a view from a certain direction, a cross-section and so forth.

Example: Roller skate invention drawings captions

The figures comprise a view of the underside of the roller skate and a close up of one of the pivoting axles showing the differential. So the captions might read ‘Fig 1 is a perspective view of the underside of a roller skate according to an embodiment; Fig 2 is a view of an axle of the roller skate of Fig 1.’ Bear in mind that sometimes, especially in the US, drafters prefer not to use terms such as ‘embodiments of the invention’ simply because they prefer the words ‘invention’ not to appear in their patent at all. This is fairly remarkable given the point of the patent system but stems from concerns that, terms like this can be used to interpret the scope of protection irrespective of what the claims say.

THE SPECIFIC DESCRIPTION

Overview section

Yet a further refinement is to start the specific description with an overview section. This can principally be used to achieve two goals.

The first of these is to help put the remainder of the specific description into context and generally improve the readability and comprehensibility of the specific description. Just as the prior art section sets the scene for assessing the strength of the invention, the overview section sets the scene for the basic structure of the remainder of the specific description. It can describe in summary the main features of the claimed invention and the way that it works, highlighting the principal advantages or solutions to the problems posed in the prior art discussion, and can be quite brief – taking up one or two paragraphs altogether. This can be especially beneficial for providing the context for a very complex draft – pushing the story on. This approach demonstrates neatly the distinction between how novelty and inventive step are dealt with. As discussed above, novelty lies in the claim that recites the features that give rise to the advantages associated with the invention. The advantages or solutions themselves (i.e. the inventive step involved in the invention), are raised in argumentation in support of patentability. Typically, these will appear during the examination procedure when the Examiner requests justification of patentability of the claim and so the overview is effectively a rehearsal of the inventive step arguments.

After this we get into the real meat of the invention itself.

The second benefit of an overview section is that it can be used to tie the terms used in the claim, which can sometimes be broad, with narrower terms used in the specific

description – providing an indication of how broad the claim terms are. There can often be a discrepancy simply because the claim, by its nature, needs to use broad terms like ‘first member’ or ‘resilient biasing means’ whereas the specific description, to make it readable, needs to use more plain English such as ‘shaft’ and ‘spring’ respectively. The overview section can be used to link these terms, stating, for example, ‘a first member such as a shaft’, ‘a resilient biasing means such as a spring’ and so forth. Alternatively, and particularly for the benefit of jurisdictions like the US, clear indication of the breadth of meaning of a claim term could be helpful in subsequent interpretation of the claim scope. Jumping ahead slightly, it is worth using this section as a glossary of broad terms in the claims where elucidation might help and making sure that each one is dealt with. This is good practice, and potentially important for jurisdictions like China where such linking is explicitly preferred.

A further inestimable benefit of the overview section is that when the drafter returns to the document, for example during prosecution, they can quickly re-discover what the invention was about. It is worth writing the overview with this in mind, when you might only be returning to it four years, and 200 drafts, later.

Unfortunately, often during search or examination of the patent application, new, more relevant prior art is identified than that cited in the introduction. This happens a lot and Patent Offices will typically accept new inventive step arguments as long as they are based on technical effects that are at least derivable. It is surprising how often the amendment is a refinement of the original concept and the overview section often retains its relevance. However, the safest approach is to identify as many advantages or technical effects as possible linked to the features that give rise to them within a patent application and make sure that all of these are reflected somewhere in the specification, giving optimal basis both for finding novel features that can be relied on in an amended main claim, and providing full access to corresponding inventive step arguments.

After the overview, we start describing the technology in earnest.

If the claims in a patent application are the most intellectually demanding part to prepare, then the most time-consuming part is almost certainly the specific description and this can become the greater challenge for the experienced drafter. There are few rules governing the specific description other than the legal requirements that it provide

Example: Roller skate patent – overview

Following on from the roller skate example above, where the problem was identified as the restricted manoeuvrability of existing fixed axle roller skates, the claimed solution might be broadly expressed as the provision of ‘respective pivoting mountings’. The the overview might read: ‘In overview, pairs of wheels are provided on respective pivoting mountings, for example pivoting axles, significantly improving manoeuvrability.’ This takes the judge off their tenterhooks, links the broad claim wording (‘mounting’) to the embodiments (‘axle’) and reminds you a few years later what it was all about.

Example: Roller skate patent – more overview

The roller skate invention has a further advantage in that a differential is provided between the wheels on each pivoting axis, reflected in a dependent claim to: ‘a roller skate as claimed in claim 1 in which a differential is provided between respective wheels in each pair’. Then the overview might continue ‘where a differential is provided between respective wheels in each pair, yet further enhanced manoeuvrability is achieved’.

sufficiency and support and the practical requirement that it may have to provide basis for future amendments. Even so, a commonly adopted basic structure has evolved. Usually at least one embodiment needs to be described in appropriate detail. Where there are multiple embodiments it is permissible in most jurisdictions just to rely on one exemplary embodiment as it is the job of the claims, not the description, to define the scope of the monopoly. However, in practice, it is wise to incorporate as much of the information that the inventor has given you as possible, just in case it is necessary to rely on it later on to overcome patentability objections by amendment without adding matter.

This does not mean that absolutely everything the inventor tells you should go in – discernment has to be applied. Trade secrets are tricky to keep and from a validity perspective one should err towards inclusion, but where there is tension each piece of information available should be assessed to see whether it is required for either providing potential basis for amendment later on, rendering the patent sufficient, or ensuring that the claims are appropriately supported. Where there are multiple embodiments, it is preferable to find the most economical way of incorporating all of the information. For example, where additional embodiments effectively form various incremental

improvements on a main embodiment then it may be enough to concentrate on the incremental difference in the additional embodiments rather than reiterating the whole of the main embodiment. Alternatively, however, the different embodiments may be entirely different facets of the same concept such that they need to be treated individually. In that case it is important to deal with each embodiment with the same level of care and detail. If it turns out that one of the later embodiments is of particular importance, but exhaustion overtook the patent attorney such that it was dealt with only sketchily, then it may turn out to be difficult or impossible to obtain appropriate protection directed specifically to features of that embodiment. This is just one area where the professionalism and paranoia required by the drafter of a patent is important – any aspect of every invention could turn out to be vital and has to be given equal weight. The professionalism should extend further to ensuring that the specific description is presented in a well-written, easily understandable and comprehensible manner.

Sufficiency

The sufficiency requirement itself dictates a significant amount of the form taken by the specific description. It has to be detailed enough that the skilled reader could perform

the invention from what is described although routine trial and experimentation is permissible. In reality, not much might be needed – many inventors seem comfortable expressing their invention in its totality in a couple of sentences. So why are patents so long? For a start, the inventor may be rather more knowledgeable than the imaginary skilled person. Even if not (although maybe don’t tell them that) in practice, given that sufficiency is grounds for revocation or opposition in many jurisdictions, it is advisable to incorporate more – rather than less – information even though the patentee would invariably prefer not to give any more away than absolutely necessary. Care has to be taken because it is basically impossible to remedy an insufficient patent application without adding subject matter which itself is impermissible.

A good starting point for the drafting patent attorney to consider is how they would carry out the invention given an appropriate laboratory or workshop as this often highlights areas where more information is needed. As a general rule, this is the area in which the patent drafter needs the help of the inventor more than any other. The patent attorney is the expert on writing claims once the inventor has generally pointed them towards the invention. However, the patent attorney is not the ‘skilled person’, but merely has to represent what the inventor – the closest available approximation to the skilled person, can tell them. When patent attorneys have to draft a 20-page patent specification from three lines of text provided by the inventor – and that is not uncommon – they often take the view that they effectively had to do the inventing themselves. This is not quite right – the invention probably was from the

inventor, but the patent attorney had to create a sufficient description. This kind of role reversal is, quite simply, dangerous although sometimes it has to be done.

Added matter

Added matter considerations also dictate quite a lot of how the specific description should be drawn up. First, all of the information provided by the inventor should be included with the provisos above. But it may need rewording or expanding. he specific description provides a vital reservoir of terminology that can be introduced into the claims either in the form of additional patentable features or allowing clarification of terms in existing claims. This can be useful, for example, where there is a risk that existing claim wording may be found objectionable for lack of clarity or could be interpreted in such a manner as to render it not novel. Of course, this should not happen, but in reality, some things are difficult to claim. [See, ‘Example: Turbine blade invention - verbal definition of drawings’.

The ‘words make pictures’ test

Generally, the description makes reference to the drawings and uses reference numerals appearing in the drawings to aid understanding. In this case it is a good idea to consider the names that will be given to the features in the drawings at the outset and ensure that reference numerals are attributed to each of those features. This can also help in tying the claims in more closely with the specific description that can be helpful in showing that the claims are supported. However, it is important not to rely on the drawings at the expense of the text. As a first good discipline, do not simply replace

Example: Turbine blade invention – verbal definition of drawings

The inventor has come up with a new kind of turbine blade that is of a certain curvature that means condensation runs to the centre where it can be easily drained away. Shapes are always difficult to claim and so you decide that you will use functional wording of the type that is not usually permitted unless there is no better way, for example ‘a turbine blade having a curvature such that, upon rotation of the blade, condensation runs to the centre of the blade’. Whether this will be acceptable will be a matter for argument with the Patent Office as to why this is not a free beer claim, or, if it is, it is the only way of defining the invention. As a backup, you may wish to have dependent claims. It may also be worthwhile, however, doing your best to define verbally the curvature in the specific description, perhaps using mathematical formulae, for example ‘the curvature is generally selected so as to ensure that condensation is drawn to the centre of the blade upon rotation. In particular, the curvature may be defined by a formula…’ Then, if problems do arise with the existing claim wording the formula can be incorporated into the claim.

nouns with numbers – say ‘a wheel (32) rotates on an axle (34)’, not ‘(32) rotates on (34)’. In normal practice, a picture may be worth a thousand words, but in the world of patents you cannot incorporate pictures into claims and more generally the ‘words make pictures’ test should be applied. Hence, as originally propounded by legendary postwar commentator Eric Micklethwaite, the description should be written as though the drawings were not there and such that someone could effectively reconstruct the drawings from the text alone. Generally, this is a good discipline as it makes sure that an appropriate level of detail goes into the specific description, but it is particularly useful if, later on, an aspect from the specific description needs to be incorporated into the claims to provide patentability. In that case it is much easier to show basis for the words introduced into the claim if they correspond exactly to the words already in the description rather than to argue that they are clearly and unambiguously derivable from

that which, previously, was only shown in the drawings. In fact, at least before the EPO, the latter approach is currently basically impossible.

Structure of the specific description

Going beyond the aspects of the specific description driven by legal and practical requirements, a basic structure has grown up that permits a well formulated specific description to be consistently provided. A reasonable aim is that such a specific description should be easily comprehensible, sensibly constructed, and a pleasure to read. Well, readable.

There is an argument that a badly written description can cause problems for third parties because they simply cannot work out what the invention is and so cannot rule out its being relevant. There are, unfortunately, many such patents around – not usually written badly on purpose but often suffering from translation problems or from having

Example: Roller skate invention – the ‘words make pictures’ test

In the case of the manoeuvrable roller skate, in particular in relation to discussion of the differential on the pivoting axis shown, say, in fig.2, the description should not simply say ‘the differential is shown in more detail in fig.2’ and then move on to another topic. Imagine, for example, that prior art was found where there was a differential but of a different and inferior kind to that contemplated in the invention. Where the prior art had some form of sliding mechanism whereas the invention used a gearing mechanism, if the description merely said, effectively, ‘look at the drawings’ then it would be extremely difficult to identify text to go into the claims to distinguish the invention. It might be desirable to introduce wording such as ‘the axle comprises first and second axle portions coupled via first and second gear portions to provide a differential mechanism (and probably rather a lot more)’. Would this wording be clearly and unambiguously derivable just from the drawing? Would it be adding matter just to pick out those parts of the drawing and not everything else shown in it, all of which is presented as having equal importance in the drawing? At the very least significantly more argument would be required and there could be potential for a third-party objection to added matter after grant in opposition or revocation proceedings. If, on the other hand, that wording had simply been inserted in the application in the first place in the part of the description relating to fig.2, then no such argument would be required.

been drafted in a rush for various reasons. In fact, the patentee will typically be so unimpressed by such a messy draft that the drafter will not get more work, and the case may well not make it to grant, but anyway there is little point writing a book about how to draft patents badly and so we will not pursue this approach further!

If a good specific description, on the other hand, should tell a story then a simple, robust approach is to treat the specific description in much the same way as school children are taught to write up chemistry experiments, starting with the apparatus, going on to the method and finishing with the result. In terms of the specific description, this makes a lot of sense – first of all the integers of the product are named and described and their structural relationship defined, after which

the manner in which the features interact and, in particular, the manner in which the apparatus operates is set out. Finally, to the extent that the inventive advantages associated with the various features do not fit naturally into the structure already, the advantages of the invention can be highlighted once again. This is also neat because it mirrors the product/ process delineation in the claims; infringing acts fall into either the category of acts in relation to a product (making, selling, importing) or acts performed in relation to a process (using the process, selling products of the process). Armed with this simple formulation a good specific description can be written. It is vital to be rigorous about the approach as it is easy to slip from a discussion of an embodiment into a discussion of the way

in which the embodiment actually works. Sometimes the context may demand this, but generally speaking this can mean that the vital aspects of either the product or the process are not described in detail because they are, frankly, forgotten. Again, this can give rise to problems later on if it is desired to amend to a specific product or process feature which, for various reasons, never made it into the description. The two aspects must be kept separate.

The five sofas

A refinement of this basic apparatus – method structure is the so-called ‘five sofas’ approach. In addition to the basic requirements of explaining the features and the way they operate, in practice it is often worthwhile mentioning even more fundamental points such as how the parts may be made or sourced, what they are made of and other basic information. Although it is not always necessary, it is the sort of detail that it is easy to introduce while drafting but equally easy to forget. Yet this level of detail will help evade insufficiency objections even in the most stringent jurisdictions.

It is also worthwhile revisiting the advantages achieved/problems solved by the invention to make sure that as many as possible are listed. It may well be that most have been dealt with anyway, but any habits the drafter can develop ensuring that these issues are consistently addressed must be good ones. It is also worth considering how to present them. The purpose is to provide fodder for a potential inventive step/nonobviousness argument – the EPO at least requires that any technical effect must at least be derivable from the application as filed; you can’t just make them up later. There is a tension there though – in the US there is a risk that by presenting a feature as ‘advantageous’ (or other laudatory term) it may be construed in trial as essential even if not claimed. This is semantic, however, and can be solved by terminology. A simple solution is always to recite the ‘effect’ of a feature

Yet another good habit is to ensure that consideration has been put into possible alternatives, enhancements or implementations of the invention. Could it be used in other fields? Could it have extra

Example: Roller skate patent – formulation of specific description

The specific description in relation to the roller skate starts by naming the various features and defining their inter-relationship (reference numerals are denoted by . . .); ‘the roller skate… includes a base portion… and an upper… for receiving the user’s foot. A first pair of wheels… and a second pair of wheels… are mounted on the underside of the base portion… Respective ones of each pair of wheels are mounted on opposing ends of an axle… The axle includes a shaft… extending perpendicular from its centre… and which has a ball joint… received in a corresponding socket… on the underside of the base portion… In use, when the user is skating and changes direction either by shifting weight or by twisting the foot, the axle pivots relatively to the socket proving additional manoeuvrability’. (Again. Don’t make these skates.)

or different features? Are there any features that are inessential or whose exact details are immaterial? Are there any particular sub-combinations of features from different embodiments that might be pursued? Could any of the method steps be performed in a different order? By answering this kind of question, a lot of useful information can be incorporated into the application that might otherwise have been forgotten. Basis may be provided before jurisdictions where added matter is applied strictly for subsequently broadening the claims – for example, if some features need to be removed from it and have been pointed to as being inessential. Basis can also be provided for introducing claims to combinations of sub-features of different embodiments not contemplated elsewhere and which, if presented subsequently otherwise, might be viewed as ‘cherry picking’ and hence added matter. By thinking around which features are essential or inessential and areas in which the invention might be implemented, often the claims may be rethought following a realisation that they are simply not broad enough.

None of these considerations is an absolute requirement, they are simply good discipline overlaying the sufficiency/added matter/support requirements and providing a content cross-check. But any structured approach that ensures this level of discipline is always applied is of great help to the drafter and allows them to relax and enjoy the drafting rather than worry that they might have forgotten something. It also helps with efficiency. You really shouldn’t have to say anything twice in the description. This is why the ‘five sofas model’ is helpful. The refined form of the specific description set out above can be summarised as:

• Structure – the detailed description of the apparatus;

• Operation – the way the apparatus works;

• Fabrication – detail of how the embodiment is made and what it is made of;

• Advantages – what the invention achieves; and

• Variants – other implementations or variations on the invention.

This spells, rather neatly, SOFAV – hence, for the lethargic Romans among the readership, five sofas.

CONCLUSION

All of these approaches are merely guidelines and some work better than others dependent on the context, in particular governed by the nature of a specific invention. The most important goals are to ensure that the description is sufficient, supports the claims and has as much information in it as available. After that, the ideal is to make the specific description as straightforward, comprehensible and authoritative as possible. A structure along the lines set out above should provide the discipline that allows this to be achieved, especially important given that you cannot un-omit information later. Bear in mind also that the inventor is more likely to judge your drafting skills from the specific description – which they are likely to understand well, than from the claims –which are in rather odd English and often seem incomprehensible to the layperson. As a result, a well-structured specific description is likely to earn the inventor’s confidence whereas a badly structured and written description may well suggest that the drafter did not understand the invention. Also bear in

Example: Roller skate patent – SOFAV structure

Having discussed the structure and operation of the roller skate, in the fabrication section the drafter might add: ‘It will be appreciated that the upper… and base portion… of the roller skate can be made of any appropriate material. For example, the base portion can be made of steel or another correspondingly rigid material. The wheels… may similarly be formed of any appropriate material for example a plastics material and mounted on the rollers… in any appropriate manner for example using ball bearings… in a race as will be familiar to the skilled reader. The various components can be fabricated and assembled in any appropriate manner’. This may not seem to add much but could support a counterargument in the unlikely event that insufficiency was raised against a disclosure at this level of simplicity.

The advantages section is an opportunity to ensure that all the advantages the inventor may have mentioned are covered. There is no need to repeat them; they only have to appear once to be usable, but there may be additional ones that got missed such as, say, an improved suspension characteristic.

In the variants section it could be pointed out that extra pairs of wheels could be added or that the wheels are of any size or that the upper can comprise a shoe or straps or that it does not really matter exactly what kind of pivot joint is used. Raising the question with the inventor can also be useful. They might say ‘well now you ask it would be a perfect setup to use on a suitcase too’ at which point you rip up the claims and start again.

mind that many patent attorneys spend a large proportion of their time drafting patents such that a structured approach, and the efficiency that it brings, will help the patent attorney get through the process as quickly and painlessly as possible.

If drafting the specific description is the most time-consuming task, however, it is not the one where the most thinking is involved, which honour is reserved for the claims. In practice, it is difficult to totally decouple the process of drafting the claims from drafting the specific description because they are so closely related in law, but the actual requirements and practices adopted are utterly different, as explored more in the next chapter.

THE DESCRIPTION

The description – checklist:

 The description is made of an introduction and a ‘specific description’.

 The introduction typically comprises:

• Title

• Field of the invention

• Discussion of prior art features

• Discussion of prior art problems or disadvantages

• Statement of invention – recitation of the features of the claims

• Explanation why these features solve the problems with the prior art

• Recitation of the drawings captions

 A good structure for the specific description is:

• Overview

• Structure

• Operation

• Fabrication

• Advantages

• Variants

8. THE INDEPENDENT CLAIMS

The claims are the trickiest bit of all. Typically, the new starter in the profession cannot draft claims and cannot understand how anyone ever could. After a while, they find that they can just about do it, but they cannot explain to anyone else how to do it. Eventually they can do it intuitively and fail to understand how anyone ever could not. As a result, the teaching of claim drafting is enormously difficult other than as a process of providing plenty of experience and supervision and, in particular, correcting errors. Indeed, what teaching there is usually centres around what one should not do rather than what one should do.

The difficulty of claiming

Funnily enough people tend to worry more about whether they can spot an invention at all from the wealth of information provided to them by the inventor, rather than whether they can subsequently claim it. Yet spotting the invention is often the easy part. Most non-specialists, when asked to identify the important part of a well-known invention, will immediately point to the same thing that a well-trained patent attorney would. The patent attorney’s skill lies in spotting every invention involved in the inventor’s

new product or process and, even more importantly, claiming it correctly. Indeed, one of the facets that distinguishes the patent attorney who has come to grips with claiming inventions is the ability to think in ‘invention space’. Where the lay person might look at a new product – say a pedal dustbin – and see something which opens and closes smoothly, the patent attorney would be looking at a novel catch assembly, a distinctive pedal operation, a clever configuration for sealing against odour and so forth – each being an invention that happens to be embodied in the same product.

Despite the difficulties inherent in learning how to define inventions using claims, once the legal and commercial ideas around the patent system as outlined in earlier chapters are understood, merely formulating a claim for an invention should be straightforward, because all it has to do is strike the balance. In particular, if an understanding of validity and infringement considerations is brought to bear, then all the appropriate requirements of the claim can be met. Obviously, it’s not quite that simple, and in practice as we’ve seen, it is not validity or infringement that tends to be most difficult for the drafter, it is the third and effectively only other requirement of the

claim, that of clarity. Clarity can take many guises but all of these simply cover underlying validity and infringement considerations such that the drafter should not even have to take clarity consciously into account when preparing a good claim.

So how can we put forward a practical, repeatable, positive approach to drafting claims? Again, the problem is that almost all of the steps the drafter goes through are intuitive, and they all tend to happen at once rather than being applied in any sequence, making it rather difficult even for the drafter to break it down – let alone explain it to a third party. There is a scene in the book London Fields by Martin Amis where the protagonist goes for an hour’s darts lesson. The darts teacher spends the first ten minutes explaining exactly how to hold the dart, the optimum stance, how to adjust one’s weight and so forth. For the other 50 minutes, as the

pupil keeps missing the target, the teacher shouts wildly ‘just get the *@! dart in the @?!* board!’ This is sometimes how it can feel when you are being trained to draft.

Basic principles

In this chapter the intuitive processes are broken down in rather more detail than the darts instructor managed, providing a repeatable set of steps. Eventually, and after experience, it is quite possible that the individual steps will be rolled up once again and become intuitive and effectively all performed at the same time – but first things first.

To start with, here are some catchy if somewhat nebulous principles, many of which we’ve touched on already:

• You don’t claim what you have, you claim what the prior art doesn’t have.

Example: Guitar-tuning knob invention – claim what the prior art does not have

The invention is an improved tuning knob for a guitar that has non-circular gear wheels, meaning that away from the optimum tuning position the strings can be tightened or loosened quickly, whereas towards the optimum tuning position more fine tuning is available.

Conventional guitars have simple circular cogs or gears. If you start claiming what you have come up with then there is a risk that you will think: ‘I had better mention the neck. Guitars always have necks. And the sound box – I had better mention the sound box. And the hole of course because otherwise the sound can’t get out…’ and so forth. It is easy to extend this to absurd levels and it is simply not good enough to say that you should be able to work out those features you need to name and those features you don’t. This is where simply stating that the claim must include the ‘essential features’ is unhelpful. If you approach the problem from the other direction, that is to say, what the prior art does not have, it becomes much easier. What the prior art does not provide is a guitar including tuning knobs having non-circular gears. This, appropriately dressed up, is what the claim should be directed to.

• You claim the invention, not the product.

• Novelty lies in the claim; inventive step lies in the argument.

• The claim should be self-contained.

• Your claim merely has to have an inventive step, not an inventive staircase.

These statements need putting into context.

You don’t claim what you have, you claim what the prior art doesn’t have

The first thing to do is to spot the invention, that is, to identify the inventive contribution or contributions made by the inventor. Even where the invention does not jump out immediately, the inventor usually can point you straight to it anyway. Later on, we will look at a rather more practical level at how to spot the invention and at this point we merely observe that, in fact – and indeed by definition – the invention is that thing that has not been thought of before – that is, the novel feature. This is what you claim – not so much what you have, but what the prior art does not have. In essence, then, this is a validity point.

You claim the invention not the product

One of the temptations in claiming an invention is to keep including additional features in the claims to deal with concerns that otherwise the claim ‘won’t work’ or some such problem. There is, however, no legal requirement that the claim should ‘work’. It has to relate to patentable subject matter, it has to be clear, it has to be supported by the description and the description itself has to describe how to put the invention into effect. The claim, therefore, does not need to have every feature of the actual product or

process arrived at by the inventor – just the relevant inventive bits. Looking at it another way, people are sometimes worried that the claim covers less ideal ways of putting the invention into effect. But surely this is a good thing – one would want to stop competitors getting round the patent with shoddy (and hence probably rather cheaper) imitations if they are nonetheless taking the invention. The drafter should not care if the claim covers rubbish infringements but instead should ensure that it covers all infringements irrespective of their quality. If they claim the invention and not the product, then they should achieve this, and will by definition be reciting the essential features in the claim. As a result this principle is largely centred around infringement issues although in practice it often rears its head as a matter of clarity.

Novelty lies in the claim, inventive step lies in the argument

There is no doubt that experience in handling office actions and, in particular, presenting arguments concerning patentability to Patent Offices is of great benefit to the drafter. This is because every claim is effectively written to form the basis for such argumentation. Probably the single most important thing that the experienced drafter does (and perhaps the most intuitive and least recognised), while the claim is being drafted, is to rehearse continually the patentability arguments that will one day be applied. In fact, I firmly believe that every experienced patent attorney has an inner examiner with whom they are always in dispute. This approach is the main filter by which the we decide which features go in the claim and which do not. If a feature in the claim does not appear in the patentability

Example: Guitar-tuning knob invention – claim the invention not the product

Going back to the guitar-tuning example, it can be seen that the principle of claiming the invention and not the product is another way of saying ‘claim what the prior art hasn’t got’. The invention is the non-linear tuning. The product is a guitar. If we claim the product and, for example, decided that we had to mention the hollow body having a hole, etc., then we would certainly be closer to stopping infringers from making poor infringements as well as good ones, but again this is not what we want to achieve. In fact, if we did claim the guitar with a hollow body, thinking that ‘it had to be in the claim’ because ‘otherwise the invention won’t work’, we would get ourselves into severe trouble with our inventor as manufacturers of electric guitars – which do not have hollow bodies or sound holes – would be able to take the invention without infringing. In other words, putting into the claim features that you think have to be there because they are in the product can be dangerous in some circumstances.

argument we would mount then it may well not be necessary. If, on the other hand, it is important to have that feature so that the inventive step argument would make sense, then it should appear in the claim. With the finalised claim, if the patentability argument works then the claim is alright; we know that there is novelty in the claim and we have satisfied ourselves that there is inventive step in the argumentation. In fact, ensuring that this check is applied deals with many of the validity-related aspects of the clarity requirement for claims. Repeating the test every time the claim is amended, which can happen frequently during the drafting process as the drafter mulls over how broad the claim should be, ensures that it is not amended at some point into something untenable.

The claim should be selfcontained

The commercial considerations in drafting a claim are effectively infringement issues but also deal with clarity problems in passing. For

a claim to be commercially useful it must be possible, with the claim in front of them, for the infringer to be able to look at the alleged infringing product and assess whether or not it infringes. It is equally desirable for the patentee that the infringer should be able to do this as otherwise the claim may not ward infringers off. Aspects of this have been termed ‘claiming on the shelf’, that is to say, claiming exactly what would appear in the shops or warehouses (at least in the case of a product claim) and we have seen this in earlier chapters. To recap, two typical problems arise. Firstly, a claim may be drafted that can only be infringed when a product is switched on. Secondly, it may be defined in such a way that it is not possible to work out from the alleged infringement on its own whether or not it infringes.

Many product-type inventions have moving parts, for example. In such cases it is important to ensure that the claim recites that they are moveable rather than moving as otherwise the claim will not be infringed

by a product when it is switched off. A more insidious problem arises when a claim defines a product in relation to some other entity that is not itself part of the claim. As a result, the infringer, having the alleged infringement ‘on the shelf’ in the absence of the other entity, does not know if they infringe or not.

You can never have too many examples: See, ‘Example: Shaver invention – claiming on the shelf’.

These examples demonstrate two important drafting principles in passing. First of all, the importance of the suffix – ‘able’ added to a verb cannot be overstated as a way of ensuring that you claim on the shelf. Secondly, choice of the ‘name’ or introductory few words of a claim are absolutely vital in making sure that the appropriate coverage is achieved.

Another way of looking at the ‘claim on the shelf’ test is to ensure that the claim covers what is made, or sold, or used. This is important because it should direct the drafter’s thoughts to ensuring that the clarity points mentioned above are adequately covered. However, it also provides a useful claim scope test. The claim should cover the smallest patentable component that may be made. Otherwise, if different parties make different components and they are assembled elsewhere, it may not be easy to pursue the individual parties at the start of a supply chain. A result of this is that it will be difficult to stop infringement at its true source.

Your claim merely has to have an inventive step, not an inventive staircase

Coming to the last of our general principles,

Example: Garden sprinkler concept – novelty lies in the claim, inventive step lies in the argument

The invention is a garden sprinkler where the water pressure not only forces water through the sprinkler’s holes but also causes the sprinkler head to rotate, which no one has thought of before. At the outset the claim reads something like ‘a sprinkler having a sprinkler head and a water pressure operated drive arranged to drive the sprinkler head between a plurality of sprinkling positions’. Later on, you decide that this is too narrow and that you want to catch people making devices just with the drive, but without sprinkler heads. There may well be a claim available, but you simply decide to delete the reference to the sprinkler heads so that the claim reads ‘a sprinkler having a water pressure operated drive’. This is still novel – the claim covers the different bit. But, when you rehearse your inventive step argument, things do not work so well. The argument should run: ‘the claimed invention is distinguished from the prior art because of the provision of a water pressure operated drive. The water pressure operated drive provides the advantage of moving the sprinkler head to different sprinkling positions to increase the area covered by the sprinkler’. If the sprinkler head is not in the claim then the inventive step argument simply runs ‘because of the provision of the water pressure operated drive, a water pressure operated drive is provided’. This is clearly less convincing. Put another way, you may be tempted to use words other than those in the claim when putting your inventive step argument together. If you have to do that, there’s something wrong with your claim.

it is necessary that the claim should be patentable, but it only needs to be patentable enough to satisfy the relevant authorities and no more. At the drafting stage we typically

want claims as broad as tenable and with that in mind a rule of thumb is to identify the broadest available claim that has a novel feature to which an advantage can be

Example: Shaver invention – claiming on the shelf

The invention is a new kind of electric shaver with a pair of rotating blades that come into contact with one another as they revolve so as to be self-sharpening. The claim recites ‘a shaver having first and second rotating blades sharpening one another as they rotate’. On your client’s instructions you swoop on a nearby retailer selling alleged infringements. There are indeed shavers of the type contemplated by the inventor lying on the shelf in the shop. However, they are switched off and so do not have rotating blades that are sharpening themselves. So there is no infringement.

In reality this is more of a poorly drafted claim than a major problem as clever lawyers can almost certainly find a way around this issue, but it would be far better practice not to have to get round the problem at all, for example by drafting a claim that says ‘a shaver having rotatable blades arranged to sharpen one another on each revolution’. Now this definition applies to shavers even when they are switched off.

In a second scenario, the shaver comes with a stand on which it can be placed. The stand holds the shaver in an elevated position and is slightly flexible, meaning that the user can press his face against the shaver and move his chin around to get a good shave without having to use his hands that can hence be employed in brushing hair, doing cuff links and so forth. The shaver and the stand are sold separately. The claim recites ‘a shaver flexibly mountable in a stand’. When you arrive at the shop you discover it sells the infringing shavers but not the infringing stands. So, when you pick up the alleged infringement, it is indeed the shaver, but it is not flexibly mounted in a stand and so does not infringe, again barring clever lawyers.

To deal with this problem there tend to be two approaches. It is possible to define the claim in such a way that you rely only on features of the actual infringement, for example ‘a shaver including a mounting portion adapted to allow the shaver to be flexibly mounted on a stand’. However, claims like this can sometimes continue to suffer from the problem that it is impossible to assess satisfactorily whether an alleged infringement meets this condition; would it be possible for a third party to work out from the shaver alone that it had a mounting portion meeting this criterion? The alternative is to rely grudgingly on a contributory infringement and view the shaver as an ‘essential element’ of the invention. In that case we need to think more carefully about the beginning of the claim and call it ‘a shaver kit’ or the like, ‘including a shaver and a stand in which the shaver is adapted to be flexibly mounted on the stand’.

attached. There is room for amendment at various instances later on if the claim turns out to be too broad, but the patentee will want as wide a scope of protection as available. It may be that the granted patent is of narrower scope, additional features having been added to the claim to render it patentable, and, at the drafting stage, it is the job of the description and the dependent claims to provide such fallback positions. The temptation to make an enormously strong patent in terms of validity must be avoided as the claims would necessarily be correspondingly detailed and correspondingly limited. All the claims require is an inventive step – not an inventive staircase.

Claim structure

Before delving into the practical aspects of drafting claims, it is worth revisiting the general structure first.

Claims can fall into two broad categories: method/process claims and apparatus/product claims. Method claims cover operations comprising one or more steps performed as part of, for example, a chemical process, software operation or a manufacturing process. Apparatus claims cover an actual

product or device. As discussed above, for clarity reasons at the very least, claims should be drafted to fall in one or other of these categories and not straddle both.

The broadest expression of the invention is represented in an independent claim usually numbered claim 1. Preferable or optional features are then set out in succeeding, consecutively numbered ‘dependent’ claims that explain their relationship to claim 1, for example ‘a method (or apparatus) as claimed in claim 1 further comprising…’ The claim set may include multiple independent claims each having its own set of dependent claims. Multiple independent claims may relate to product and process aspects of the same invention, for example ‘a machine for making something’ and ‘a process for making something (using the machine)’. Multiple independent claims may alternatively relate to different inventions. For example, independent apparatus claim 1 may recite ‘a machine having features (A, B and C)’ and independent apparatus claim 10 may recite ‘a machine having features (D, E and F)’. In many jurisdictions a patent will not be allowed with both of these independent claims and it will have to be split out into separate

Example: Shaver invention – claim what is made or sold

Going back to the shaver, if we want to ensure that the claim covers what is made it will be seen that a kit claim is less attractive. If the shaver is made in a first factory and the stand in a second factory then neither of them truly infringe the claim at source although attacks such as contributory infringement may be available. Instead a claim is only infringed where the whole kit is assembled. This kit may, indeed, only be in the user’s home. There is no question that this can give rise to problems in claiming, especially where one component does not really make sense in the absence of the other – it is up to the drafter to try and choose the strongest possible approach in the circumstances, weighing up these considerations.

‘divisional’ patent applications. However, it is entirely permissible to include multiple independent claims for different inventions at the outset and this can often give rise to cost savings because only a single case is filed. It is worth recalling what the claims are used for. The claim words have a dual purpose. First of all, the claims are used to assess patentability. However, the same claims are also used to assess infringement, which is why getting their wording right is such a balancing act. Make them too narrow and they will definitely be patentable, but will not have a broad scope because an infringement has to have a correspondingly large number of features to infringe. Make them broad and they will catch a lot including, unfortunately, the prior art, meaning that they are invalid. In particular, both validity and infringement tests are primarily directed at the independent claims.

Given that the claim is the core of the entire patent document and that the independent claim is in many ways the only claim that counts, how on earth can one cram all of the concerns and considerations that have been raised above and in the preceding chapters into a few lines of claim text? There are many ways of going about writing claims and most practitioners will develop their own structured or intuitive style through experience. However, it is interesting to note that most qualified patent attorneys would arrive in much the same place, albeit using different terms, when presented with the same invention such that the claims would be likely to be fairly similar in scope, probably because our inner examiners don’t differ that much. The practical approach that we now start looking at is, therefore, only one way of doing it, but is designed to be explicable, implementable and repeatable.

Example – claim structure

If claim 1 recites a product having features A, B and C and if the prior art includes a product with all of those features (or the features are an obvious modification of that prior art) then the patent is prima facie invalid. However, this can be remedied if, for example, a further described feature X is a non-obvious development of the prior art. In this case the independent claim must be re-written (amended) to include this feature as well. In other words, it is not enough that the granted patent has dependent claims that recite patentable features – the independent claims must reflect something patentable.

In terms of infringement, at least one independent claim must be infringed. In particular, it must be possible to compare the alleged infringement and identify that it has all of the features set out in the claims (for example, features A, B, C and X where the claim was amended as above). If the alleged infringement has additional features F, G and H this does not matter. Again it is the independent claims that matter for infringement as well and in fact this makes sense. All of the dependent claims include the features of the independent claim by definition – in fact they can be considered as a long version of the independent claim rewritten with the additional feature added on. As a result, if the main claim is valid then the dependent claim will be valid as well.

HOW TO DRAFT A CLAIM

One approach to preparing the independent or main claim can be summarised in the following steps:

1. Spot the invention.

2. Identify the novel feature.

3. Select the claim category (method or apparatus).

4. Name the claim (i.e. determine what words it starts with).

5. Identify the other features you need

6. Are there any more inventions?

7. Do a validity and infringement check.

The most important thing to remember throughout the process is that there is an invention which must appear in the claims –it is very easy to lose sight of this during the drafting process such that the final form of the claim does not actually cover what you originally had in mind. Always remember what the invention is. Always think through your inventive step argument while you are drafting to make sure that the claim remains directed to the right thing: you should have the novelty required in the claim, and it should include the other features necessary for arguing inventive step.

The pub test

The fundamental skill is to spot the invention and direct the claim to it. At the beginning of this chapter it is suggested that this is the easy bit and a historical example demonstrates this using a simple approach which has served the author well: the ‘pub test’, although it could equally well be termed the ‘café test’. Just to provide cultural background, the pub is an important part of British life and the pub conversation a healthy

index of common sense and public opinion. The test is good because it shows that the invention is usually what you thought it was in the first place and there is nothing very complicated about spotting it. Application simply centers around thinking how you would explain the invention in the pub (or any other appropriate venue you may have in mind). Typically, you might approach such an explanation by first outlining what was there before and what was wrong with it (the prior art and the attendant problems or disadvantages). You might then boast proudly that you have overcome all of these difficulties and, when asked why, explain the new, magic feature that cures all ills. In fact, not only does this help spot the invention but it also writes most of the patent specification for you, starting with a discussion of the prior art, going on to the problems attendant with the prior art and then identifying the feature that solves those problems. In terms of the claim, the magic new feature is the point of novelty which needs to be reflected in the claim and the way it solves the problems with the previous arrangements is the inventive step argumentation.

All inventions are like this. If you start from the right piece of prior art, that is to say, the thing over which you have your advantage, the EPO ‘closest prior art’ for example, it is easy to pinpoint what your invention is simply by looking at how you solve the problem with the prior art and what physical features do it. In the example above, the prior art is existing communication methods and the problem that of achieving long distance instantaneous communication. The novel feature is the provision of the two electrically connected transducers and the inventive step argument is ‘because the transducers mirror

Example: Alexander Graham Bell visits the pub

After his first successful demonstration of the telephone, Alexander Graham Bell visits the pub to celebrate. Pausing only to institute a blanket confidentiality agreement with everyone there, he falls into earnest conversation with the bartender:

Bartender: The usual, Mr Bell?

Mr Bell: Yes thank you, Selina, and one for yourself.

Bartender: Why thank you sir. Celebrating another one of your inventions are we?

Mr Bell: Indeed I am: it overcomes one of the great problems of our time.

Bartender: What’s that then?

(We now go into a discussion of the prior art)

Mr Bell: Well you know that, at the moment, if people are a long way away from each other and want to talk, they just have to shout very loudly? (Bartender nods) Well, I have come up with a way of communicating over whatever distance you like, practically instantaneously.

Bartender: Blimey. How do you do that?

(We now identify the novel features)

Mr Bell: Well. You put a magnet inside a coil of wire with electricity going through it and running through a long wire to another coil with another magnet in. When you talk it makes the magnet vibrate which makes the current change. The same current change happens in the distant coil which makes that magnet vibrate in the same way recreating the sound you made.

Bartender: That’s ingenious, sir. I must go and phone my mum and tell her about it…

each other’s activity, sound input at one end will be recreated at the other’. Mr Bell’s patent for the telephone, US174,465 granted March 7 1876, recites ‘a permanent magnet or other body capable of inductive action… (and) a closed circuit, so that the vibration of the one shall occasion electrical undulations in the other….’. So, it would seem that the test works perfectly satisfactorily for one of the most important inventions ever. Famously, the first complete sentence transmitted by Bell was ‘Watson, come here; I want you’. The

succeeding words, ‘shall we go for a pint?’ seem to have been lost in history.

Spotting the invention, therefore, really is easy and is best approached by keeping things as simple as possible. Drafting a claim is not necessarily so straightforward. The steps mentioned above will be looked at in more detail together with an example simple invention below. It is worth mentioning that sometimes it is the simplest inventions that are the most difficult to claim; many complex inventions comprise incremental changes

Example: Anti-drip tray invention – spot the invention

The invention is a new kind of tray for carrying cups of tea and coffee around, for example in an office environment. Often there is spillage so that when the tea or coffee cups are laid on the drinker’s desk they leave wet patches and/or stains (the cups, not the drinkers). The invention is to provide a rim to the tray with a covering of absorbent material such as towelling so that the base of the cups can be wiped dry before they are put down.

such that the novel features are inescapable and there is little latitude in how to claim them. (Interestingly the inverse seems to often apply for the description) With a simpler invention, defining the invention practically, and certainly broadly enough, can actually require more skill.

Spot the invention

If we consider the anti-drip tray invention, in terms of the pub test, invention spotting is easy – the provision of the absorbent edge around the tray means that a convenient surface is provided for wiping down cups avoiding the mess associated with prior art trays. How can we claim this?

Identify the novel feature

First of all we have to identify the novel feature. That again in this case is straight forward and falls out of the pub test as being the absorbent rim of the tray. Looking at it another way, this is what the prior art has not got.

Select the claim category

Now we have to select the appropriate category – should an apparatus claim or a method claim be used? In the present case, once again, this is straightforward – the invention surely needs a product claim. But it is always worth contemplating whether claims

of the alternative category could apply. For example, could we direct a claim to a method of carrying a cup on the tray and wiping the base of the cup on the absorbent rim of the tray? For pure patentability, the answer is probably yes; this would appear to be both novel and inventive in much the same way as the apparatus claim. However, when potential infringers of the method claim are taken into account, it can be seen that the claim would be of minimal benefit. Consider the relevant infringing act: using the invention. The only possible infringer would be the person carrying the tray – an individual at home or in the workplace. Accordingly, to enforce the patent it would be necessary to sue countless individuals, which would be unrealistic. So, the initial reaction, that this is principally a product patent, is correct; you can sue the importers, manufacturers and/or retailers for importing/making/selling the product respectively (amongst other infringing acts). Of course, if there was a clever way of making the tray, a method claim would be available for the manufacturing steps, and there is no harm adding the ‘method of using’ claim as a back up too

Name the claim

Next we select the vital first word or clause, in other words we ‘name the claim’. In addition to defining the scope clearly, this

also defines the element of which all other elements are a subset. In terms of scope, for example, we could call it ‘a carrying device’, ‘an apparatus for supporting vessels’, or ‘a tray’. There is never any harm in selecting the most straightforward name as long as it is considered carefully first, and here it is difficult to contemplate an infringement that was not a tray. In terms of defining the invention at the right component level, it is important that the claim start with the ‘lowest order’ element, the thing that contains all the other things. If we were to start the claim ‘a tray rim’ it would be not make sense to mention subsequently that it included a base – if that were required then the claim should start ‘a tray’; having ‘a base’ ‘and’ a ‘rim’.

Identify other features you need

We now need to identify the other features that need to go into the claim. The principle is that enough features should appear in a claim that it is distinguished from the prior art (novelty resides in the claim) and that a case for non-obviousness can be made (inventive step lies in the argumentation).

We choose therefore the other features that interact to provide the advantages that will be relied on in inventive step argumentation for our inner examiner. At this stage it is vital to remember that we are claiming the invention and not the product. A tray that is actually sold may have all kinds of other features that make the tray work better but which have no particular effect on the way that the invention works, i.e. the ability to dry cups on the edge. For example, handles are useful on a tray. Clearly they do not need to appear in the claim for the inventive step argument to work. Indeed reference would not be made in the inventive

step argument to the handle, which again is a good way of identifying non-essential features.

It is usually easy to identify features that are clearly non-essential to the invention if they are also clearly non-essential to the product. For example, trays without handles are well known such that it is clear that the handles do not need to appear in the claim. However, people often become concerned that there are some things that are absolutely essential for the product to work and cannot work out why they should not be in the claim. This can best be understood by reducing the situation to an absurd one. A tray will not work if the base is made out of a thin layer of tissue paper. The cups will fall through. Wetbottomed ones even more so. Yet the claims do not need to say ‘a tray having an absorbent edge and a base that is not made of a thin layer of tissue paper’.

The reason why people become concerned about features that they think are absolutely essential for operation is because they are, again, confusing claiming the invention with claiming the product. The persistent debate with EPO examiners about what the ‘essential features’ of the claim are often stem from this misconception. There are plenty of things that the product has to have which are immaterial for the invention. Going back to first principles, the novel feature is provision of an absorbent edge and the inventive step argument explains that because an absorbent edge is provided cups can be wiped and dried before they are put down on the desk. There is no mention of the material of the base or anything else. The invention is, by definition, what the claims say it is and so – looking at it the other way – the claims just have to set out the invention and nothing else. Once the drafter starts thinking in ‘invention

Going back to the pub/cafe test:

Barista (wiping all the drink rings off café table): What have you got this time?

Patent attorney: I have found a way of avoiding coffee rings on table surfaces if you are a wobbly tray carrier.

Barista: How do you do that then?

Patent attorney: The tray has a rim with absorbent material on it so that you can wipe the cups before you put them down.

Barista (rubbing lower back): Brilliant. I’ll have 40 please.

space’ many of the concerns about what else needs to appear in the claim disappear because they stop thinking about the product altogether and the ‘essential features’ appear automatically.

In other words the patentability argument would run: ‘we are distinguished from the prior art because we provide a tray with an absorbent rim. Because of the provision of the absorbent rim it is possible to dry the base of cups before putting them on to another surface.’ We need to remember that we only need an inventive step not an inventive staircase such that not every possible patentable aspect appears in the main claim, just the most important and essential one. For example, it may turn out that there is a certain kind of absorbent material that is particularly useful with hot liquids. Given that the mere idea of having an absorbent edge is in itself patentable, and the inventive step argument works, there is no need to introduce further aspects into the claim although, as discussed in more detail below, it may appear in the dependent claims. In other words, the claim already has everything we need and could be as short as:

A tray having an absorbent rim.

Are there any more inventions?

We need to carry out all of these steps for each claim category, but also for each invention – basically every non-fullyoverlapping combination of features that provide a technical effect. As a result, it is quite possible that the claim set will include multiple independent claims and as has been discussed above, this is no problem at the time of filing even though some tidying up may be necessary later on.

a) Other categories of claim

In the example above we have principally talked about an apparatus claim for the tray for the simple reason that this is the most effective way of obtaining useful commercial protection. In addition, however, there may be a method claim available to use of the product or a method of manufacturing the product, for example. We take a detailed look at drafting methods claims later in this chapter.

b) Multiple advantages/solutions

As a rule of thumb, there will be one invention per advantage unless those advantages are derived from identical features. Often this is fairly straightforward,

Example: Anti-drip tray – multiple separate, distinct inventions

In the case of our tray with an absorbent rim, the inventor has also identified that another problem with trays is obtaining a good balance. Accordingly, they have suggested putting a slideable counterweight on the underside of the tray to counteract the weight of the cups on it if they are bunched at one end. This solves a problem and the solution does not arise from the feature in the independent claims we discussed previously (provision of an absorbent rim). As a result, a separate independent claim along the lines ‘a tray having a moveable counterweight provided thereon’ could be included in the claim set.

where the inventions are genuinely distinct, but sometimes it is not so clear-cut where we have interrelated inventions.

The way to identify extra inventions of this nature is not to spend hours thinking about everything that might or might not be covered by certain types of claim wording, which is a rather backward-looking approach. Instead, one should be forwardlooking. First of all, identify each advantage. Then identify rigorously the physical features that give rise to each advantage and, if these can be separated out, claim them separately, although in some instances, the advantages cannot be separated out.

When we end up with multiple independent claims relating to different

inventions the question arises as to how they should be ordered. The numbering of the claims is not particularly important except that they will always be searched from the beginning and many authorities may refuse to carry out searches for later, separate inventions unless further fees are paid. Generally, therefore, one would start with the most important claim – the claim that corresponds to the most commercially important aspect of the product. In the case of the various tray examples, one would expect that the counter-weight version would be quickly relegated on this basis. Even so, the additional claims are worth keeping in. Within reason, they do not add significantly to the cost other than for official fees for

Example: Anti-drip tray – multiple separate, interrelated inventions

The inventor points out that the absorbent rim also has a cushioning effect such that if cups do slide along the tray and hit the rim they are less likely to be damaged or to topple over the rim. Does this need a separate independent claim? It does because the existing claimed feature that the rim is absorbent is not necessarily directed to the feature that gives rise to the cushioning. This would assume that anything that is absorbent also provides a cushioning effect – but the rim might be a porous hydrophilic ceramic, ie absorbent but rigid. Conversely, one could imagine a rim that was made of a non-absorbent resilient material such as PVC. So another independent claim might be available along the lines of ‘a tray having a resiliently deformable rim’.

Example: Anti-drip tray – non-separable inventions

The inventor informs us that any level of absorbency is useful in the tray rim. However, a particularly useful configuration is found with a certain range of porosity that gives surprisingly good absorbence. This is a further advantage but the physical features giving rise to it cannot be de-coupled from the more generic requirement that the rim is absorbent. As a result, following on from our original main claim, we would need to add a dependent claim reciting ‘a tray as claimed in claim 1 in which the absorbent rim has a porosity in the range… to…’

‘excess claims’. The patentee may not yet know what is going to be the main selling point of their product and may want all avenues covered. If some claims turn out to be unimportant then they can simply be dropped if the Patent Office insists. If they turn out to be important, they can be protected by, for example, a divisional application. Until one is required to remove them however, they can only strengthen the patentee’s general position simply because more pending patent coverage is provided.

c) Claims to superset or subset

It is always worthwhile identifying whether an independent claim should be added to a subset of the integers in the main claim, or to a superset, i.e. something bigger that includes the claimed invention.

d) Other claim types

On older UK claim sets you may see ‘omnibus claims’ along the lines of ‘an apparatus/ method substantially as described herein with reference to the drawings’. They are no longer permissible at the IPO.

In addition, many specialist claim formats have developed in certain technologies such as pharmaceuticals, biotechnology and information technology – barring the short

commentary in a later chapter these are beyond the scope of the book in its present form. A general comment that applies to any additional independent claims – and indeed dependent claims as well – is that all of the checks outlined here should be applied equally rigorously. One never knows for sure which claims will prove to be the most important and so paying less attention to one than another could be risky.

Given the EPO flavour of this book, a note

Example: Anti-drip tray – sub and super-set claims

The tray has a removable absorbent rim and can be accompanied by a trolley attachment making it fully ambulant. In addition to a ‘tray’ claim you could consider an independent claim to the rim as a subset of this and a trolley including the tray as a superset – the latter would actually be considered a dependent claim at the EPO as it includes all the features of the claim to which it refers back (the tray claim). This aspect may have already been picked up when running through other checks on the claims, but as with all of these points, it is worthwhile revisiting.

on ‘two-part form’ is merited; it appears as an addendum because it is not essential at the drafting stage and can be arrived at by amendment later. It is also not attractive to some patentees – especially from the US –as it could be seen as an admission in US litigation on a patent in the same family, of prior art features. Yet further, the EPO seldom insists on it. On the other hand it is the expected form of claim for the EQE exams.

In simple terms, according to the form, a preamble is provided which sets out the features of the claim common with the closest prior art, as understood from the problem solution approach. The second part of the claim follows, with the distinguishing features, preceded by terminology such as ‘characterised by’ or ‘characterised in that’.

I personally avoid initially drafting claims this way because of the artificiality of the form; it can skew the best expression of the invention (and the EPO will accept this later as a reason not to insist on two-part form). This is particularly problematic because often the closest prior art changes once search and examination starts meaning that rewriting of the claim is required anyway. Basically, the EPO doesn’t seem too bothered with the form, and so on balance my recommendation is always against it.

Example: anti-drip tray claim –two-part form

A tray characterised by an absorbent rim.

The validity and infringement check

It is good practice to apply a checklist to the claim to make sure it meets all of the requirements although, with more experience, you will find you apply this checklist without thinking, and continuously while the claim is being drafted. The main points to ensure are that the claim is not so narrow as to be commercially useless but, on the other hand, not so broad that it is unpatentable. The clarity requirements will typically automatically fall out as a result. If a change is made to attend to one requirement the checklist should be run again to make sure that the claim still meets all of the other requirements as well – it is common to see a good starting claim ruined because of ambitious broadening during redrafts which renders it invalid, for example. In practice, this iterative approach could be replaced by always remembering what the invention is and ensuring that the inventive step argument applies to the claim whatever form the claim eventually takes.

Validity checks:

1. Is the claim novel?

2. Does the inventive-step argument work?

3. Is it free beer?

Infringement checks:

4. Does the claim have a limiting word or feature?

5. Does the claim cover what is made or sold?

6. Can the claim be understood without reference to external, non-claimed matter?

We can apply these to our ‘tray’ claim.

Validity check

Is the claim novel?

Needless to say the claim must be novel over the specific ‘closest’ prior art over which the invention is an improvement but it is remarkable how often, during revision of claims, people lose sight of this fundamental requirement and broaden the claims so much that it is not. A more insidious problem can arise where, even if the claim is novel over the specific prior art the inventor had in mind, it turns out not to be novel over other prior art – for example some everyday object. This can occur particularly when the claim is named broadly. For example, if it is called ‘a tray’ it is highly unlikely that the claim will attract unexpected prior art. But if the drafter elects to call it ‘an apparatus for carrying objects’ then immediately a huge range of potential prior art comes into view, including cars, handbags, tongs, etc.

A good way of assessing novelty and, in particular, whether the claim reads on to something unexpected is to draw what is claimed. When doing this, draw what the claim actually says and not what you would like it to say, nor the product. If you try drawing ‘an apparatus for carrying objects’ you will immediately realise that this is a fairly non-limiting start to a claim. The exercise of drawing what is claimed is also helpful for guiding the patent attorney into the mindset of ‘invention space’, i.e., getting a feel for the true coverage of the claim, and realising just how far it is decoupled from the specific embodiment/ product that the inventor has actually come up with.

In the case of our tray claim, ‘a tray having an absorbent rim’ we know that the

‘absorbent rim’ feature renders it novel. We are claiming what the prior art has not got.

Does the inventive step argument work?

Here it is necessary to run through the argument that we would present for example in writing a response to an examination report from a Patent Office relying on the ‘closest prior art’ known by the inventor. Again, it is necessary to ensure that the argument makes sense, that it relies on features found in the claim, and that it ties the feature in the claim to the advantage. For example, this can go wrong where the novel feature is expressed in broad terms covering a set of possible embodiments, but only certain of the embodiments and not others demonstrate the advantage. One way of spotting this is when you have to describe features in the inventive step argument differently from the wording used in the claim.

For our tray claim, the argument would run ‘because of the absorbent rim the bases of cups can be wiped dry’, which is persuasive.

In the ball-point pen example, we see another scenario where the claim has been broadened such that only a subset of embodiments demonstrate the advantage on which an inventive step argument can be based.

These first two checks effectively ensure that the novelty is in the claim and the inventive step is in the argument, which were identified earlier as basic requirements.

Is it free beer?

The claim should cover how the advantage is achieved, not the inventive advantage

Example: Ball-point pen claim – rehearse the inventive step argument

The client has invented a ball-point pen, recognising that by putting a ball at the bottom of a reservoir of ink, the pen can be drawn across the page spreading the ink evenly. The drafter decides to replace the word ‘ball’ with ‘ink-blocking means’. This wording might look attractive simply because it covers things that aren’t balls too. Whereas previously the inventive step argument was ‘because a ball is provided it can rotate as the pen is drawn across the page distributing ink evenly’ it now reads ‘because an ink-blocking means is provided, there is an even distribution of the ink’. This is nonsensical and in fact is probably only the case if the ink blocking means is a ball or other rotating member. However, the wording covers a flap for example that wouldn’t work. In other words, a subset of the various items that could be an ink-blocking means – for example, a ball – is the only embodiment to which the inventive step can be attached, and rehearsing the inventive step argument has flagged this up. The claim became too broad.

itself. In other words, the claim should not be a ‘free beer’ claim merely setting out the result (faster, cheaper, smaller) provided by the invention. Usually, it is obvious that somebody wants to achieve some improvement such that if this is all that appears in the claim, the claim does not relate to an inventive step. What is not obvious is how the inventive was achieved. Our tray claim is fine – the advantage (easy wiping of cups) is not in the claims, how it is achieved (absorbent rim), is.

INFRINGEMENT CHECKS

Does the claim have a limiting word or feature?

In the case of a limiting word it is possible that the drafter has been too specific in selecting a claim for a specific element. In the case of our tray, none of the words ‘tray’, ‘absorbent’ or ‘rim’ seem objectionable. The second possibility is that the claim includes a limiting feature, that is to say, an entire feature that does just not

Example: Tin-opener claim – is it free beer?

The inventor has come up with the invention of a tin-opener in which a cutting blade is rotated by a gear connected to a turning handle. As a result, a safe opening action is available rather than having to hack away with a sharp blade as was previously the case. If the claim merely recites the advantages achieved it might read ‘a tin opener allowing opening of a tin in a safe action’. This an obvious desideratum and hence not inventive. If, on the other hand, the claim recites the features giving rise to the invention, such as ‘a tin opener having a rotatable handle and a rotatable cutting edge geared together’, then the claim recites non-obvious features comprising the elements that actually give rise to the advantage of a safe, continuous action.

Example: Ball-point pen claim – limiting word

The claim relates to a ball-point pen including ‘a ball’. It is possible that the ball could be replaced by a cylinder (for example, for pens that are not designed to turn corners) such that a term like ‘rotatable element’ may be preferable.

claimed and that the claim has a minimum number of novel features – i.e. it relates to an inventive step not an inventive staircase. In other words, two further fundamental requirements are met.

Does the claim cover what is made or sold?

need to appear in the claim. The most straightforward example of this is where there is simply something pointlessly limiting in the claim. Our tray claim clearly has no extraneous features.

A slightly more subtle example is where the drafter forgets to draw a distinction between what the invention has to have (required for the claim) and what the product has to have (not the relevant question for the claim). As we know, the invention simply needs to have enough features to render the claim novel and provide the framework for an inventive step argument. The product has to have all kinds of features. [See, ‘Example: Ball-point pen claim – unnecessary product features ’.]

This check list step ensures that it is the invention and not the product that is

Example: Ball point claim –limiting feature

In the ball-point pen invention, the claim recites ‘in which the ink is blue’. Quite evidently this is an unimportant aspect and design around is extremely simple. Indeed, as a rule of thumb, colours seldom appear in claims!

The main issue here is to ensure that the claim is directed to the smallest possible available component. It may be that the final product is an assembly of components each of which may be made and even sold separately. If the invention is a new light bulb then a claim directed to a flashlight including the light bulb will not be infringed – at least directly – by someone making or selling the light bulb on its own and it will be necessary to rely on contributory infringement or equivalent doctrines, introducing additional legal uncertainty. Sometimes, of course, claiming an assembly rather than an individual component is unavoidable, for example if the manner in which the component manifests the invention can only be understood or defined in conjunction with other components of an assembly.

In the case of our tray, we might consider a claim along the lines of ‘an absorbent tray rim’ to catch manufactures making the rim only, especially as it seems novel even in this super simple form.

Can the claim be understood without reference to external, non-claimed matter?

This is another manifestation of selfcontained claiming on the shelf. The simple test is to put yourself in the shoes of an infringer holding a product, say, with all

Example: Ball-point pen claim – unnecessary product features

Ball-point pens tend to be long and thin, making them easier to hold, they tend to have an inner cylinder providing an ink reservoir, the end of the pen where the ball sits tends to be conical in shape and so forth. A claim with any of these features would be unnecessarily narrow if all the inventive step argument requires is that the ball rotates in some kind of housing to dispense ink evenly. Putting the other limitations in, even though they may seen innocuous in the context of the product, would, respectively, exclude from protection ergonomically shaped pens with a bulbous structure, pens where the outer housing is also the ink reservoir and pens having a generally cylindrical housing for the ball – none of which are beyond the realms of possibility. This goes back to not worrying about covering inferior infringements.

of the features set out in the claim, and nothing else. If they would be able to work out whether the claim was infringed then the claim is alright and, in particular, meets the clarity requirements. This clearly applied to our tray claim.

These checklist questions should help ensure that the claim is both patentable and commercially useful as well as meeting the rather more obscure clarity requirements. If any change is made to the claim as a result of any of these questions then the whole lot should be run again to make sure that the

change has not caused problems elsewhere. Suddenly realising that a term is too narrow and broadening it, for example, introduces potential new prior art such that the claims may suddenly be commercially useful but no longer relate to patentable matter.

Getting the claim right is like trying to wrap a present. Too much wrapping paper is waste and too little leaves holes. Even if you have exactly enough, you need to make sure that when you tug it in one direction you compensate for the gap that has appeared at the other end.

Example: Window catch claim – self-containment

A client invents a window catch that is recessed into the window frame but otherwise conventional, reducing the profile of the window, avoiding snagging and so forth. A claim starting ‘A recessed catch’ would have problems. On the warehouse or shop shelf, the catch on its own is just a catch and there is absolutely no way of telling whether or not it is recessed without reference to other components that are simply not present in the claim, for instance, the window frame itself. On the other hand, a claim to a ‘window frame with a recessed catch’ is determinable as an infringer would have to look at both the window frame and the catch, from which the relevant information would be available. Where third parties sell just the catch without the window frame there is a different problem that to find infringement by someone selling the catch on its own would require reliance on contributory infringement or a similar doctrine.

THE INDEPENDENT CLAIMS

A BAD CLAIM

The checklist comes into its own when we examine some bad claims.

Is the claimed invention novel?

Does the inventive step argument work?

It is vital to keep repeating the inventive step argument to ensure that the claimed features provide the alleged advantage, as seen with the ‘bad anti-drip tray claim – not involving an inventive step’ example.

Is it free beer?

The claim must not just recite the advantage achieved, as seen with the ‘bad anti-drip tray claim – claiming desiderata’ example.

Example: Bad anti-drip tray claim – not novel over unexpected prior art

First of all the claim needs to be at least novel over the closest prior art that you had in mind. In the case of our absorbent tray, the closest prior art might be a conventional tray, but it is surprisingly easy to accidentally claim even this. Also the claim should be novel over other prior art even if not specifically contemplated by the inventor. This problem often arises when the introductory clause (or name) of a claim is broad.

The drafter might decide that the term ‘tray’, which was originally put in, was too limiting and instead claim ‘a support means including a liquid absorbent rim’. This is novel over conventional trays, for example, which do not have liquid absorbent rims. However, the claim is anticipated by, for example, a cotton compression sock.

Does the claim comprise a limiting word or feature?

You should make sure there are no unexpected limitations lurking in the claim, such as a limiting word.

Example: Bad anti-drip tray claim – includes limiting word

Again, drawing what is actually claimed can really help to identify errors like this. If you try drawing the ‘support means’ claim in the example you will realise just how broad it is given that ‘support means’ is a vague term – if I drew that claim I would have started with a large cloud-shaped blob as my starting point.

Example:

Bad anti-drip

If the claim was to ‘a tea tray’ it would appear to have a limiting word as, at least arguably, a ‘coffee tray’ would not infringe. If the claim recited ‘handles’, absorbently rimmed trays without handles would not infringe.

tray claim – not novel over known prior art

A tray claim might read ‘a tray having an edge against which a cup base can be wiped’. Such a claim might arise, for example, where upon reflection the drafter decided that citing the words ‘absorbent’ made the claim too narrow. Yet the claim has become non-novel. Probably every tray in the world has an edge and it is perfectly permissible to wipe your cups base against it. It just won’t do any good.

Example: Bad anti-drip tray claim – not involving an inventive step

Imagine that, on reflection, the drafter decides that reciting ‘an absorbent edge’ is too narrow and concludes that merely reciting that the edge is ‘of a different material to the base’ will do. This is still novel over a standard tray (ignoring for the purpose of argument fancy ornamental trays). But the inventive step argument fails as you can see if you try to run through it. ‘The invention is distinguished from the prior art because there is no disclosure in the prior art of a tray having a base and an edge made of different material. Because, according to the invention, the edge is made of a different material, cups can be wiped on it.’ This argument just makes no sense – it is clear that the absorbent nature of the edge has to be recited as well.

Does the claim relate to what is made or sold?

The claim must be commercially relevant to the actual product or process.

Example: Bad anti-drip tray claim – does not claim what is made/ sold

It might be the case that your inventor eventually sells trays with absorbent edges where the absorbent edges are detachable and replaceable. In that case your inventor might also sell the edges separately. If so, then a claim reciting ‘a tray having an absorbent edge’ would not be infringed directly by somebody just selling the absorbent edge.

Does the claim make sense without reference to external, non-claimed matter?

The infringer must be able to determine infringement without requiring external context to understand the claim – the claim is not self-contained.

The example relied on above is simplistic but demonstrates almost all of the considerations that need to be taken into account. Many technologies have quirks that are beyond the scope of this chapter, but at a general level, the only issue that requires a little further comment is that of the structure of method claims.

Method claims

The first comment to make is that an invention, irrespective of whether it is a process or a product, and irrespective of its

Example: Bad anti-drip tray claim – claiming desiderata

Imagine that the claim recites ‘a tray designed to stop ring marks being formed on a wooden surface’. Strictly speaking this claim is novel over a conventional tray that is not so designed. However, there is no inventive step here. It is entirely obvious and non-inventive that trays, in an ideal world, would be designed to stop ring marks forming on desks. What is not obvious is how this is achieved – once again we need to recite the absorbent edge in the claim.

technology, remains an invention such that all of the suggestions and approaches above apply equally. So the approach of spotting the invention, isolating the novel feature and so forth is exactly the same and the same checklists should be applied, concentrating on ensuring that the inventive step argument is continually rehearsed and always works.

Steps not features

One of the main things to recall with a method claim is that it involves, either implicitly or explicitly, one or more steps as opposed to a product claim, which involves one or more features. A simple way of thinking of this is to consider a method claim as a verb claim rather than a noun claim, or to link it to the Operation part of the five-sofa model rather than the Structure part. Just as a product should be formulated to take into account its essentially structural nature and, in particular, not to require the products to be ‘switched on’ to infringe, a method should reflect the fact that it essentially relates to a process; a series of actions.

Choosing the category

We always need to consider if a claim category is necessary. As already pointed out, the main question is ‘who would infringe a claim in that form and do we need to catch them?’

Where an invention relates to a new way of manufacturing a product or substance then the method claim is powerful as it could shut down the factory (assuming we could find out what was going on in there). On the other hand, where an invention lies in the operation of a device, although this could be covered by a method claim it may be less powerful than a claim to the device itself. As touched on previously, if the device is only used in the home, although the method of use is only infringed domestically, infringement of a claim to the device occurs at source – by making or selling the device – which is easy to enforce centrally. On the other hand, infringement of the method claim is by multiple, independent end users. Even so, there may be some merit in the method claim, especially in view of contributory infringement – one could argue that supplying of the device at source relates to ‘means for putting the (method) into effect’.

Example: Bad anti-drip tray claim – not self-contained

Imagine a claim was put together directed just to an ‘edge piece’ (i.e. a rim), along the lines of ‘An edge piece for a tray which surrounds the tray base’. If a retailer was simply selling edge pieces then by holding the edge piece and comparing it with the claim it would not be possible to determine whether or not it surrounded the tray base. Another problem occurs when a claim requires an undefined frame of reference to be understood. For example, the claim might recite ‘An edge piece for a tray in which the edge piece is absorbent at the top’. If people sold their edge pieces upside down then they would arguably not infringe the claim – the frame of reference according to which the term ‘top’ can be understood is not well enough defined in the claim.

Typical form of method claims

A typical form for a method claim would be along the lines ‘a method of (doing something) comprising the steps of (doing a first thing and then doing a second thing)’. Some practitioners do not like the idea of explicitly referring to steps as it may suggest that each individual step must be performed temporally independent of the other, rather than occurring simultaneously. It may also suggest that there is some order required such that a first step must always precede a second step for there to be infringement, which may not be the case. There is no legal doctrine that demands this interpretation, and good practice is to include a passage in the main description indicating (if appropriate) that the steps can be performed in any order. But, given the way case law goes, it is probably worthwhile using the ‘steps’ approach principally where there is a clear, defined sequence to the steps. This is a shame, as thinking in terms of ‘steps’ is a good discipline for differentiating drafting of method/process claims from product claims. Not for the first time, the risk of creating or transgressing bad case law makes drafting patents unnecessarily difficult.

If you find the discipline of using ‘steps’

language helpful, you can always do a rough draft in these terms and then just edit the explicit references to ‘steps’ out.

Often method claims will need to recite certain product features for them to make sense and it is an interesting and largely unresolved issue as to just how limiting those product features will be. For example, if a method is claimed reciting certain product features unnecessarily narrowly and a competitor carries out the same method with alternative product features, there may be an interesting debate as to whether this was an infringement or not. The method steps are taken but the product feature (which may be argued not to have a limiting effect on a method claim) is not. The answer, as usual, is to avoid legal debate of this kind by ensuring that everything is claimed appropriately broadly.

Drafting a method claim

The steps involved in drafting a method claim are no different to or more difficult than those involved in drafting a product claim, as can be seen by looking at an example.

Going through the pub (or café) test in relation to the toothbrush example, a simple explanation of the invention would be to

Example: Toothbrush manufacture invention – method claim

Your inventor has realised that the speed of making toothbrushes can be doubled. The trick, in particular, is to have over-length bristles that are held in the right packing configuration at their longitudinal centres by a perforated plate such that they project up and down from the plate in the general shape that they would appear coming out of the toothbrush. The upper and lower free ends are inserted into respective molds that are then filled with plastic. The plate holding the bristles is removed and we have two toothbrushes held together by a common set of bristles. It is simply necessary, then, to cut the bristles along the centre to separate the brushes.

say that manufacture of toothbrushes can be accelerated significantly by using a single set of bristles for two handle molds and then cutting the bristles in half. The point of novelty, therefore, is exactly this. The primary category of the invention is clearly a method step – the invention is going to be infringed in a factory where the toothbrushes are made carrying out the various process steps. Product protection would be available, inter alia , by virtue of the statutory extension of method claims generally available to cover products directly obtained by the method. Selecting a name for the claim might be along the lines ‘a method of fabricating toothbrushes’, or something equally straightforward. We already know the novel feature and based on that the inventive step argument might run: ‘because the common set of bristles is molded at respective ends into toothbrush handles, it is only necessary to sever the bristles to provide a speedy fabrication approach’. In other words, the main features that we need to appear in the claim are that the bristles are molded at both ends into toothbrush handles and then cut in half.

To bring all of this together the claim may read:

‘a method of fabricating a toothbrush comprising molding respective ends of bristles in respective toothbrush handles and severing the bristles at the centre’.

If we then go through the checklist questions:

Is the claim novel?

Yes. Assuming the prior art has an individual set of bristles per toothbrush and no severing step then we are clearly distinguished.

Does the inventive step argument work?

Clearly the inventive step argument makes sense in the context of the claim: through using a common set of bristles for two toothbrush handles and then severing the bristles we accelerate the manufacturing process.

Is it free beer?

This again is not a problem. The claim does not say ‘a method of making toothbrushes more quickly’, but instead sets out the specific steps that achieve this end.

Does the claim have a limiting word or feature? Possibly. Could the invention be applied to other kinds of brush? Do we need to sever the bristles exactly at the centre? We could change ‘toothbrush’ to ‘brush’ and, using a popular patenting trick, recite ‘severing the bristles intermediate their ends’. We might also want to consider whether we want to be limited to a ‘molding’ step, as other means of affixing the bristles on to the toothbrush handles might be appropriate.

Does the claim cover what is made or sold? Here the question more appropriately would be ‘does the claim cover what is done?’

Clearly the answer is in the affirmative.

Does the claim rely on features not found in the claims to make sense?

Clearly the claim is self-referential and can be understood without having recourse to any other information such that an infringer could immediately work out whether or not their process is infringed. Accordingly, this last checklist question seems to be met as well.

Other claim categories

Again we should consider other possible claim categories if starting with a method claim. An important one where the method is for making a product is a claim to the product itself, if it includes patentable

product features. Although statutory provisions may extend coverage by the method claim to ‘products obtained directly by the process’ some weight has been attached to the ‘directly’ qualification that might limit its scope compared with a

The Independent claims – checklist:

Some basic principles for constructing a claim are:

• You don’t claim what you have, you claim what the prior art doesn’t have.

• You claim the invention, not the product.

• Novelty lies in the claim; inventive step lies in the argument.

• The claim should be self-contained.

• Your claim merely has to have an inventive step, not an inventive staircase.

A seven-step approach for constructing the claim is:

1. Spot the invention.

2. Identify the novel feature.

3. Select the claim category (method or apparatus).

4. Name the claim (i.e. determine what words it starts with).

5. Identify the other features you need.

6. Are there any more inventions?

7. Do a validity and infringement check.

The validity and infringement checks can be further broken down:

Validity checks:

1. Is the claim novel?

2. Does the inventiveness argument work?

3. Is it free beer?

Infringement checks:

4. Does the claim have a limiting word or feature?

5. Does the claim cover what is made or sold or done?

6. Can the claim be understood without reference to external, non-claimed matter?

straightforward product claim. And some jurisdictions may not have the statutory provisions in the first place.

Claiming a method is effectively no different from claiming an apparatus – in both cases the goal is to make sure that the invention is covered in its broadest tenable form.

CONCLUSION

Drafting the independent claim(s) is not straightforward, but a structured approach

is available that may help at least in the early stages.

Once the main claim has been settled then one of the most important jobs in preparing a draft has been done. However, it is vital to ensure that the dependent claims are treated with equal care as these may provide a route around unexpected prior art later in the life of the patent application or patent and may indeed shed significant light on the true scope of the independent claims. We look at this more in the next chapter.

9. THE DEPENDENT CLAIMS

Just as the form of an independent claim has developed over generations of practice, the nature of dependent claims has also spawned its own requirements and idiosyncrasies. As a result, patent attorneys can argue long into the night about how to structure patent claims, whether multiple dependencies are a good thing or a bad thing and indeed whether there is any real point in having dependent claims at all. A quick look at the main reasons for dependent claims can at least put that last concern, and the arguing patent attorneys, to bed.

Why do we need dependent claims?

The primary reason for providing dependent claims is to present optional or fallback features. They are considered not to be incorporated in (and hence limiting on) the main claim. Instead, they are features that generally would make the invention even more inventive, a little like the ‘inventive staircase’ discussed elsewhere. With any luck, this super-patentable claim will never be needed. But if, for example, all of the features of a main claim turn out to be unpatentable over prior art during prosecution, then it is common to see the main claim amended to

incorporate the features of a dependent claim if those features are not found in the prior art. When writing dependent claims this is how they should be thought of. A claim set that includes one independent claim and one dependent claim could be considered as being effectively two separate independent claims one of the scope of the original independent claim and one ‘virtual independent claim’ comprising the original independent claim with the further limitation of the dependent claim. If one of these is knocked out by the prior art (i.e., the broader original independent claim) then the patentee can elect the other instead. As more and more dependent claims are added then more and more such virtual independent claim options are available to the patentee in the event of relevant prior art being cited. For each one the thought process can run: ‘imagine prior art were found disclosing all the features of the independent claim. If I amended to include this dependent claim would my novelty and inventive step position work?’

Given that subject matter can be taken from anywhere in a patent application and incorporated into an independent claim, as long as the added matter requirement is not violated, why do we specifically need

dependent claims? Why is it not enough just to make sure that the potential wording of amendments is covered in the description? There are several good answers to this. Firstly, dependent claims can be a useful way of defining an invention for licensing purposes. Where the patentee wants to license different aspects of the invention to different parties, a simple way of identifying what to license to whom is to say ‘party 1 is licensed to operate the invention as defined in dependent claim X’ and ‘party 2 is licensed to operate the invention as set out in dependent claim Y’.

A further reason for including dependent claims, particularly important in jurisdictions where added matter is treated rigorously (think EPO), is that there can be no suggestion that incorporating a dependent claim into an independent claim upon which it is correctly dependent adds matter. Contrast this with selecting a feature from the middle of a paragraph half way through the specific description and adding it to the independent claim. In such circumstances, the EPO examiner could well argue intermediate generalization, that the specific combination of features of the independent claim together with the surprise appearance of the isolated feature from the description was not contemplated in the application as originally filed such that this represents a new feature set, adding matter. If that same feature had been in claim 2, dependent on claim 1, then this would be clear evidence that the specific combination was contemplated from the outset and hence did not add matter. As examination for added matter gets ever stricter, the importance of well drafted dependent claims increases.

It is also reasonable to wonder why, once the claimed invention has been

found patentable and any relevant fallback possibilities in the dependent claims exercised, the remaining dependent claims cannot be removed after grant of the patent. The first, simple, reason is that the patent may nonetheless be challenged later in its life, for example through opposition, re-examination or revocation proceedings when those dependent claims may once again be needed. A subsidiary, and persuasive, point is that before some post-grant tribunals, amendment to anything other than existing dependent claims may be either impossible or extremely difficult.

So there is a purpose for dependent claims. The next thing to do is look at how to identify what should go into them.

What goes into the dependent claims?

As with the independent claims, we approach dependent claims considering both the requirements for patentability and commercial usefulness – that is, looking at both validity and infringement considerations.

Dealing with validity first and recalling that the dependent claim can be treated as a re-written or ‘virtual’ main claim in case the original main claim failed for lack of patentability, there are various reasons we might incorporate one:

Extra interacting features:

Generally with dependent claims we look for additional features that provide advantages. Particularly strong are such features that interact with an existing feature or combination of features in the independent claim to improve operation of the invention yet further. This is sometimes referred to

Example: Anti-drip tray example – extra interacting feature in a dependent claim

Referring to the tray example in the previous chapter, now the inventor also proposes to have a wick which draws liquid from the absorbent rim material to a reservoir, so that the rim does not have to be wrung as regularly. Even more cleverly, the reservoir can be moveably mounted on a slide on the underside of the tray to provide a counterweight to balance out the tray if cups are unevenly distributed. There are several dependent claims here: to the wick that interacts with the absorbent rim to improve operation; to the idea of a counterweight generally; and particularly to the idea of a counterweight that uses liquid from the absorbent rim.

as ‘symbiosis’ between features and usually provides a strong platform for arguing patentability of that combination of features.

Example: Anti-drip tray invention – refinement of claimed features in a dependent claim

The inventor reminds you that a specific range of porosity of the absorbent rim is particularly good for removing liquid. This also requires a dependent claim specifying the porosity range.

Example: Anti-drip tray invention – strengthening wording in a dependent claim

You may have decided to recite that the tray includes a ‘support surface’ in the independent claim. As this is a broad term and may attract unexpected prior art you decide to clarify in dependent claims that ‘the support surface comprises a base’ and/or ‘that the support surface is formed of heat proof material’ or ‘the support surface is formed of liquid resistant material’.

In some cases, the extra interacting features are more a refinement of the features of the main claim.

Wording that strengthens the independent claims:

Sometimes you will have put a word in the main claim that you are comfortable with in the light of the known prior art but which you realise may need clarifying dependent on what further prior art is found. In that

case, such clarifications can be included in the dependent claims in anticipation. The clarification may effectively comprise a rewording of the feature in the main claim or extra information about it.

Extra non-interacting features:

Many other things that the inventor tells you about the product, whilst not particularly relevant to the invention you have identified, may at least be new in combination with it.

Example: Anti-drip tray invention – non-interacting feature in a dependent claim

The inventor further tells you that they have a rather clever knurled handle on the tray making it particularly easy to carry, as well as feet on its underside to prevent damage to the surface it is laid on. Neither of these are particularly related to the absorbent rim but they are still worth adding as dependent claims just in case an argument could be formulated that including those extra features in the independent claim brought patentability.

From an infringement point of view, there are two main considerations:

1. Features that may be commercially important:

If you know there are aspects which, even though they do not look particularly patentable, are likely to figure heavily in any commercial manifestation of the invention, it may be worthwhile including a claim to this.

Example: Anti-drip tray invention – dependent claim to commercially important feature

The inventor says that all tea trays this season are going to be oval. This could merit a dependent claim albeit with an understanding that the feature is unlikely to impart extra patentability. They also intend to market, separately, tea trays and coffee trays. Once again, dependent claims to each would make sense in this context.

and a dependent claim includes a narrower expression of that term then, by inference, the main claim must cover more than just the narrow expression of the term as otherwise the dependent claim would be redundant. This is another facet of using the claim to shed light on the main claim as discussed above.

Example: Anti-drip tray invention – repercussive dependent claim

Claim 1 recites an absorbent rim and the inventor becomes concerned that it will not cover a tray which has a rim that is generally non-absorbent but which includes absorbent parts. One option is to revise claim 1 to cite ‘a rim having at least an absorbent part’, but in its existing form claim 1 probably covers this variation unless it specifically states that all of the rim is absorbent. Accordingly, another way of making this absolutely clear is to have a dependent claim reciting that ‘the whole or part of the rim is absorbent’, which neatly broadens out claim 1.

2. Dependent claims that broaden the main claim:

This is often termed the ‘repercussive effect’. If the independent claim includes a broad term

Having identified potential candidate dependent claims, the next job is to structure them.

Structuring the dependent claims

The first and most important point to reiterate is that the dependent claim should be considered as a re-written or virtual main claim. In other words, all of the checklist tests set out in the previous chapter should, strictly speaking, be applied to each dependent claim as though it were written into an independent claim and everything in the corresponding previous independent claim was known. In other words, the dependent claim must introduce novelty and sustain an inventive step argument without being so narrow as to be commercially useless.

A common failure with dependent claims is to forget this and, having crafted claim 1 with painstaking care, put everything else into claim 2. Clearly if claim 2 were incorporated into claim 1 in this case then claim 1 would be pointlessly narrow, and the temptation to treat the dependent claims as a pseudo-specific description should be avoided. Instead one dependent claim should be constructed per advantage/feature.

The next question is how to order the dependent claims. The simple answer is to group them together and to cascade them where successive dependent claims provide increasing levels of detail. In particular, it is important to ensure that a dependent claim incorporating a feature and, for example, expressing improvements to that feature, should only be dependent on preceding claims which themselves provide an antecedent for that feature.

The risk of intermediate generalisation has been discussed elsewhere and is important in the structuring of dependent claims. If claim 1 is broad and claim 2 is narrow this might be regretted later when it is recognised that a feature broader than claim 2 and narrower

than claim 1 would have been a preferable amendment but is not permitted as it adds matter. Once again, the idea of ‘cascading’ claims can help in this.

A note on multiple dependencies

A dependent claim can recite in some detail which claim it depends from – this may be an independent claim, a dependent claim, a group of dependent claims or indeed all preceding claims. However practices differ between jurisdictions as to whether dependent claims reciting a dependency on more than one preceding claim – ‘a multiple dependency’ – are permissible. For example, in the US only single dependencies are usually pursued. Multiple dependencies in these jurisdictions can always be replaced by an amendment with singly dependent claims and so, in the following example, multiple dependencies are incorporated with comments on how these might be handled as single dependencies (shown in bold).

Example claim structure

Putting all of this together in relation to the tray example might provide us with a claim structure of the following type:

Claims:

1. A tray having an absorbent rim.

2. A tray as claimed in claim 1 further comprising a wick arranged to draw liquid from the absorbent rim.

The wick interacts with the absorbent rim and so improves the operation of the features of claim 1.

3. A tray as claimed in claim 2 further comprising a liquid reservoir communicating with the wick.

Claim 3 has to be dependent on claim 2 as there is no wick in claim 1. We have separated out the idea of having a wick and having a reservoir as each has its own advantages.

4. A tray as claimed in tray 3 in which the reservoir is moveably mounted in a direction along the tray. Hence it can also act as a counterweight. Claim 4 has to be dependent on claim 3 as it recites the reservoir.

5. A tray as claimed in any preceding claim in which the absorbent rim is formed of a material having a porosity in the range X to Y.

Note that where multiple dependency is permitted this can be dependent on any preceding claim as it can optionally be combined with the wick, reservoir and so forth. An antecedent for the ‘absorbent rim’ is found in claim 1 and the intervening claims, by virtue of their dependence on claim 1, also provide this antecedent. Where only single dependencies are permitted the claim might recite ‘5. A tray as claimed in claim 1…’

6. A tray as claimed in claim 5 in which the porosity is in the range A>X to B<Y.

Claim 5 is thus an intermediate generalisation of the specific range of claim 6.

7. A tray as claimed in any preceding claim (or claim 1) further comprising a counterweight moveably mounted in a direction along the tray.

This is a non-interacting feature with the

features of claim 1. Note that we have also effectively covered this in claim 4, but there it is restricted to being a reservoir whereas claim 7 covers any counterweight.

8. A tray as claimed in any preceding claim (or claim 1) having a general oval shape.

9. A tray as claimed in any preceding claim (or claim 1) having a knurled handle.

10. A tray as claimed in any preceding claim (or claim 1) including one or more support feet.

All of these are further add-on features that can be combined with any of the other claimed features, hence the multiple dependency or dependency on claim 1 where the jurisdiction requires.

11. A tray as claimed in any preceding claim (or claim 1) in which the rim extends all or part way around the tray.

This has a repercussive effect on claim 1 ensuring that it covers a partially absorbent rim.

12. A tray as claimed in any preceding claim (or claim 1) comprising a tea tray.

13. A tray as claimed in any of claims 1 to 11 (or claim 1) comprising a coffee tray.

Note that claim 13 as it is mutually exclusive, cannot be dependent on claim 12 and has to ‘skip it’.

14. A method of using a tray having an absorbent rim comprising wiping the base of a vessel on the absorbent rim.

Claim 14 is pretty unlikely to be useful, but it is free, easy to draft and can’t be added later –so why not include it?

It can be seen that the claims can be ordered in many other ways and the numbering in no way reflects the importance of a claim, merely the way in which it can be combined with other claims.

It can also be seen that even in the simple and rather contrived example above, the claim dependencies are not straightforward and there is a minor risk of confusion or inconsistency between claim 4, which recites a counterweight in the form of a reservoir, and claim 7, which is dependent on it, but actually covers a counterweight of any kind. It would be permissible to recite in the dependency of claim 7 something like ‘as claimed in any preceding claim excluding claim 4 or claim 4 where the counterweight comprises the reservoir’ but this is rather an unattractive and, practically, a small amount of leeway is given by the authorities when there is no real problem understanding what is going on. A badly structured claim set can give rise to all kinds of qualifications like this and, typically, a sign of a well-structured set of dependent claims is that the dependency recitations are fairly simple.

The role of the dependent claims

Using the example claim set above we can now see how the dependent claims might be used. Assuming that a patent application is filed including the above set of claims then we see in the example what might happen when a search report is produced by the Patent Office bringing in new prior art that the patentee and the patent attorney have not seen before.

The role of dependent claims when looking at infringement is different. If the independent claim is valid and infringed then the case is won. To the extent that the infringement also includes features of some of the dependent claims, then those dependent claims are infringed as well but this would only really be relevant if the independent claim had not been found valid and those dependent claims were incorporated into it by amendment to make it patentable. A major challenge in litigation where relevant prior art is found is identifying possible amendments to the independent claims that render it patentable over the prior art, but still cover the infringement. [See, ‘Example Anti-drip tray invention –infringement proceedings’.]

Example: Anti-drip tray invention – amendment during prosecution

Prior art is found that recites a tray having an absorbent rim. However, the rim drips because there is no wick. Claim 1 no longer recites patentable subject matter but can be amended to incorporate the wording of claim 2 to read: ‘A tray having an absorbent rim and a wick arranged to draw liquid therefrom’. As a result, the claimed invention is now novel by virtue of the provision of a wick and inventive/non-obvious because liquid is drawn away from the absorbent rim preventing it from dripping hence providing an advantage over/solving a problem with the prior art. If people complain that the wick could still drip then we can always incorporate claim 3 as well. If the prior art also has the wick and reservoir then we could consider, for example, further incorporating claim 4, using the idea of the reservoir acting as counterweight. In practice this is always done with an eye to the commercial relevance of the resulting claim.

Example Anti-drip tray invention – infringement proceedings

Assuming firstly that claim 1 is valid in its broad form then a third party making, selling, importing etc. a tray with an absorbent rim infringes the patent even if it has none of the features of the dependent claims. If, for example, the infringement also has the wick then it will infringe claim 2 as well. Should the infringer find prior art reciting a tray with an absorbent rim but no wick then the patentee could still catch them by combining claims 1 and 2, which would be patentable by virtue of the wick and would still cover the infringement. If the infringement comprised a tray having a rim that was absorbent around part of its periphery then it would infringe claim 11 and hence, by definition, claim 1, which must be broader than its own dependent claim.

Dependent method claims

The process of preparing dependent method claims is exactly parallel to that of preparing dependent apparatus claims. Instead of thinking about additional apparatus features we typically think about additional method steps whether they be interacting steps, non-interacting steps or refinements of other aspects of the independent method claim.

Conclusion

This book could end here. We have reviewed the law, we have reviewed the commercial considerations and we have talked in great detail about the structure of the description and claims and how we can formulate them. Sadly, even if one were clever enough to

The dependent claims—checklist:

learn to draft simply from this hypothetical discussion, the final patent document would not be as good as something prepared by an experienced patent attorney. This is where the gap between theory and practice exhibits itself and, in particular, where we see the benefits of good training over several years. What is missing is the know-how and much of this is impossible to pass on in a book. The next chapter tries to highlight some of the practices and conventions applied by experienced patent attorneys when they draft a patent, but probably does not even scratch the surface. As was stated in the introduction, the best this book can do is accelerate progress towards drafting being an intuitive skill. It cannot replace experience and training.

 You should consider adding depending claims to cover all of the following cases:

a. Extra interacting features.

b. Wording that strengthens the independent claims.

c. Extra non-interacting features.

d. Features that may be commercially important.

e. Dependent claims that broaden the main claim.

10. TRICKS OF THE TRADE

Anyone who has read a patent will have discovered the archaic language of ‘patentese’. There is no obvious way to structure a recitation of some of the conventions and practices that are adopted in drafting patents and so we just dive in with some general headings.

Anything not expressly excluded is covered

This is a principle that is inherent in any claim interpretation exercise. If a claim covers features A, B and C, then anything infringes it that has A, B and C even if such an infringement also has features D, E and F and so forth. A simple example of this is the common practice, where an invention can have one or more of the same thing, of reciting ‘a thing’ in the claim. Anything that has one instance of that ‘thing’ will infringe. If there are multiple instances of that thing it will still infringe as any one of those instances comprises ‘a thing’. At first glance this seems to be at odds with the doctrine ‘that which is not claimed is disclaimed’. But that statement is talking about something different – if you have something in your specific description that is not within the claim scope, you do not have exclusivity for it – you have dedicated it to the

public. Before relying on that, by the way, check for divisionals, continuations and earlier thirdparty patents; it’s not quite that simple!

Example: Antenna patent –scope of wording

An inventor comes to you having identified a new kind of antenna, having a certain shape, for a radio. A radio will work well with one such antenna or even better with two or three. A claim reciting ‘a radio having an antenna having (a certain shape)…’ will cover all of these possibilities.

Ask a patent attorney to name a shape having three sides and they will list a triangle, a square, a pentagon, a hexagon and so forth.

Things that contain other things

Quite often an invention will involve some type of apparatus that has a certain number of integers or features. Patent attorneys like to choose between three possible words to demonstrate this: include, comprise or consist. If an apparatus includes a feature then it is usually considered not to be limited to this

Example: Antenna patent – use of ‘comprising’, ‘including’, ‘consisting of’

Going back to the antenna, the inventor tells you that the optimum number of antennae is three and that radios with one or two such antennae are known. It would be possible in the circumstances to claim ‘a radio including three antennae’. However one wants to avoid the argument that by listing a specific number a claim to ‘a radio consisting of three antennae’ will exclude radios with more than three antennae. Better would be ‘a radio comprising a first, second and third antenna’ as this invites the reader to postulate the existence of possible fourth and fifth antennae as well.

feature but inherently to have other features as well. If it consists of a feature then the claim may be construed as meaning that the apparatus includes this feature and no other. A safe middle ground is to say that an apparatus comprises a feature – that falls in between the two and is not limiting in either direction.

Antecedents and labels

It is generally not acceptable to introduce a feature preceded by the definite article (‘the’) unless it has previously been referred to using the indefinite article (‘a’) or is absolutely inherent from previously recited features. Patent attorneys have an astonishing ability to identify a term in claim 36 that does not

have an antecedent in any of the preceding 35 claims.

As a result of this requirement it is a good idea to use ‘labels’ within claims, that is, shorthand for certain complicated explanations – the ‘first’ ‘second’ ‘third’ example above is an example. Then, later on, it is only necessary to use the label rather than the whole term to tie a feature in with its antecedent.

Positions

Another good patent attorney trick crept into the example ‘Antenna patent – use of labels’, namely the convention of defining ranges of movement using positions. This can be helpful either to delimit the range or to give helpful labels linking

Example: Antenna patent – antecedents

The radio antenna includes a rotatable telescopic portion. Claim 1 recites ‘a radio having an antenna of a certain shape’. Claim 2 recites ‘a radio as claimed in claim 1 in which the telescopic part of the antenna is rotatable’. There is no antecedent for the term ‘the telescopic part’. Either such an antecedent needs to be put into claim 1, which is less attractive as it would limit claim 1, or claim 2 needs to be reworded to recite ‘a radio as claimed in claim 1 in which the antenna has a telescopic part, the telescopic part being rotatable’. Even better would be to split claim 2 up and recite as claim 2 ‘a radio as claimed in claim 1 in which the antenna has a telescopic part’ and, as claim 3, ‘a radio as claimed in claim 2 in which the telescopic part is rotatable’.

Example: Antenna patent – use of labels

The antenna includes a part that can be moved up and down and, in particular, can be moved between a position parallel to the rest of the antenna and a position perpendicular to the rest of the antenna. If a first dependent claim recites ‘a radio as claimed in claim 1 in which the antenna has a part moveable up and down’ then the subsequent dependent claim to the specific positions would have to read ‘a radio as claimed in (the preceding claim) in which the part that is movable up and down is moveable between parallel and perpendicular positions’. This is clumsy and could have been avoided in the preceding claim if it had simply recited ‘including a moveable part moveable up and down’.

the position adopted by an element of the claim to what it does in that position.

Giving descriptive labels like this can also be helpful in strengthening the position on novelty. As discussed above, calling something ‘an element for doing something’ covers all elements suitable for doing that thing whereas giving it a label derived from the verb pins it down.

Each.… Respective

Where there are, for example, multiple pairs of co-operating or related elements then rigorous use of the terms ‘each’ and ‘respective’ lends itself to clarity. For example, when the antenna above has multiple branches

Example: Gear shift lever patent – ‘positions’

A gear shift lever can be moved to at least two gear positions. With non-descriptive labelling then they might be described as a ‘first position’ and a ‘second position’. Altenatively, if one is forward and one is reverse then descriptive or functional labels might be ‘a forward position’ and ‘a reverse position’.

with receivers, one might refer to ‘each branch having a respective receiver’.

Finding the right words

Identifying the perfect name for a claim element can be very tricky, and there are various tools to help. The first is always to go to the source material – check what the inventor called it and consider whether that term works in the claim, bearing in mind all the considerations listed earlier in the book. Another approach is to step back and describe what you are trying to express in simple if lengthy language.

Example: Toothbrush claim – finding the right words

Earlier we described a toothbrush manufacturing process in which the bristles extend between two brushes and are cut at the centre. Then we realised that this could be limiting. To find better wording, step back. The bristles can be cut any distance along their length, just not at the ends. So they can be cut at a point beween their ends. So let’s use the term ‘intermediate the bristle ends’.

A strong way of finding the right word while ensuring that it is not overly limited is to define it using the function it performs. A common way of doing this is to describe something as ‘means for (performing a function)’. However, this has given rise to problems in the US where such a term is construed narrowly as covering only the specific embodiment shown in the specification. A good way round this is to turn the verb into a noun. We have already seen how the suffix ‘…. able’ is useful. This is one way of doing it. However there are sometimes some neat solutions that come from adopting this approach.

Example: Use of verb as noun – ‘pivot’

You want to describe something around which something else pivots. Terms such as axle or shaft could be used but could be limiting. Why not turn the verb into a noun? Call it a pivot.

First, second, third and so forth

I have frequently referred to ‘first’, ‘second’, and so forth elements or positions. You will see this all the time in claims because it not only provides potentially useful labels, but also ensures that the claim is quite clearly extended in scope to cover further instances of the element or position (fourth, fifth, sixth, etc).

Apparatuses which do things

As we have discussed in other chapters, it is not good practice to mix apparatus and method claims and, in particular, this can give rise to problems in enforcing a patent.

Example: Food grinder patent – use of ‘arranged to’, ‘-able’

The invention is an automatic food grinder. Clearly a claim reciting ‘An apparatus grinding food…’ would not be infringed by an apparatus sitting on a shop shelf that typically would have no food in it and would not be switched on and hence not grinding food. Accordingly, one approach is to recite ‘an apparatus for/suitable for grinding food’. This clearly covers the food grinder whether or not it is filled and switched on. Sometimes, however, it can give rise to validity problems because such a claim is considered to cover any apparatus that is suitable for grinding food even if it is not expressly designed that way. Some might argue, for example, that an industrial sander would successfully grind food and hence is an apparatus ‘suitable for grinding food’. If this is a concern then the next level of attack would be to claim ‘an apparatus arranged to/adapted for grinding food’. This excludes the industrial sander – which is not arranged to grind food (read the instruction booklet if you are unsure) – and still catches the grinder. Of course, a rather simpler solution would be simply to recite ‘a food grinder…’

If the invention includes, for example, a moving blade that grinds the food then again a claim including the term ‘a moving blade’ would not cover the apparatus when it is switched off. Here is a good example of using ‘able’ as a suffix. A claim reciting ‘the apparatus including a moveable blade’ would cover a grinder whether it was switched on or off.

This came up when discussing ‘self-contained claims’ and they way this crossed over woth clarity requirements. For example, where an apparatus recites a set of features in such a way that the apparatus is clearly switched on, then the competitor’s product at the point of sale – where it is likely to be switched off –will not strictly infringe. As a result, patent attorneys have developed various terms and grammatical structures to deal with this, for example: an apparatus for/suitable for/ arranged to/adapted to. Another approach is to use the invaluable suffix ‘… able’.

Care has to be taken when deciding whether to adopt ‘arranged to’ or ‘for/suitable for’ wording. ‘For/suitable for’ is broader – it will encompass anything that could achieve the same effect. This may be good for infringement purposes but can introduce novelty problems as more prior art can be cited against a claim using this term. This is particularly a problem if the claim starts: ‘Apparatus for… (performing a function)’ as this will cover any apparatus that can perform the function. This is one of the most common causes of a claim covering something that the drafter had absolutely no intention of encompassing. On the other hand, calling something ‘Apparatus arranged to… (perform a function)’ ensures that only prior art specifically designed for performing the function – rather than accidentally capable of doing so – is covered. The terms ‘adapted to’ and ‘arranged to’ are largely interchangeable.

Everything in the claim must be a subset of its introductory clause We have talked before about naming a claim.

As discussed earlier, when the first few words of a claim are selected, all the features that follow should be a part of it – not a superset.

Example: Kettle patent –naming the claim

The inventor comes to you with a new kettle which has an efficient heating element. A claim to ‘a kettle having a heating element having (whatever properties)’ is fine. However, a claim to ‘a kettle heating element comprising a kettle and (whatever properties)’ does not make any sense as the kettle is not part of the heating element.

Plurality

When there is definitely more than one of a particular feature in a claim it is generally referred to as a plurality – where people instead use the term ‘a number…’ the lawyers turn around and say that 0 and 1 are numbers as well.

A couple of decisions to make now

Are you going to refer to the figures as Figure 1, figure 1, Fig. 1, fig. 1 or FIG.1? Decide now and never change. Similarly, are you going to say ‘The apparatus of claim 1’, ‘An apparatus as claimed in claim 1’ or other formulation? Again, it doesn’t really matter which, but early decisive action could save hours of edits later.

Patentese

Anyone who has read a patent is familiar with the language of patentese. It is a mix of legal terms, technical terms and special patent attorney terms and to provide a full dictionary would require another book. However, we can have a look at a few of the words you might see.

Legal terms

Most of these are things like ‘hereinbefore’, ‘theretoinbetweenhenceforth’ and other fancy combinations that have no value whatsoever. We shall not discuss these any further.

Technical terms

Most of the confusing ones of these are standard and somewhat old-fashioned engineering terms. Part of elements are often described using terms like ‘distal’, ‘proximate’, ‘intermediate’ meaning ‘far end’, ‘near end’ and ‘middle’ respectively. There are also lots of useful engineering terms for certain formations, for example, flange (a projecting ledge), cantilever (a projecting member like a diving board), detent (anything that holds or catches something else) and so forth. When at a loss, using names of body parts to describe formations is quite useful, and one will see terms like ‘limb, neck, shoulder, member, finger, foot, nose’ and so on. Anything that is springy is described as ‘resilient’. When describing the positional relationship of features words such as ‘project, extend, depend’ can be useful. When describing how

something moves, a particularly useful term is ‘reciprocate’, which means move back and forth. There are many more, and perhaps this brief section will inspire someone to go off and write a full dictionary of patent terms.

CONCLUSION

This chapter can do no more than hint at the range of tricks available to the patent attorney and every patent attorney would probably come up with a completely different list of useful terms and tricks depending on what their specific practice was. In fact, one of the most difficult tricks of all is choosing the right name for a feature in a claim in the first place and it is at least reassuring to know that one does not have to refer to a lexicon of patentese to do this in most cases. As you can see in the next chapter, the most helpful person of all is the inventor.

11. DRAFTING IN REAL LIFE

While this book is written at a practical rather than academic level, it has not yet addressed in any detail one of the most significant factors affecting the creation of a patent draft, namely the involvement of the inventor. Without them we would not have any patents and, perish the thought, we would not have any patent attorneys.

Dealing with the inventor

The goal in meeting with or dealing with the inventor is to convert their innovative concept, in conjunction with their expertise in the relevant technical field, into the best patent available: one that is sufficient, broad but valid and that provides multiple fallbacks. In reality, unfortunately, the inventor may not be as co-operative – or more commonly – may not have as much time to be as co-operative as you would like. Usually, an inventor’s time will be limited by other commitments – such as a job. On the other hand, patent protection may nonetheless be important to them or their employers such that a compromise needs to be found between getting the information you need from the inventor and letting the inventor get along with the rest of their life. In other words, in real client/inventor

management terms, it is helpful to develop an efficient practice in extracting the information you need.

The exchange of information

An important first step, therefore, is to ensure that both parties to the information extraction process – the patent attorney and the inventor – understand their respective roles. The inventor’s job is to explain the invention, think about how third parties might develop or design around that concept and provide the basic information for various parts of the patent document – in particular the introduction, the specific description and the claims. The attorney’s job is to pin down the prior art that the inventor is aware of and to establish why the invention is different from it, to extract as much information as is required to put together a specific description and to identify an appropriate scope and range of implementations for the claims. To make the patent as future proof as possible, bearing in mind that competitors have 20 years of ingenuity to get around it, a useful joint exercise is to put some thought into what third parties might do if they were seeking to avoid your patent. Often the patent attorney can contribute significantly to this part of

the exercise even though it is the inventor’s field simply because attorneys become used to recognising a claim limitation in terms of what it does and does not cover, and to question whether that limitation is, in fact, required.

The better the job done at the first meeting or interaction, the more efficient the drafting process will be. If there is a restricted number of interactions between the patent attorney and the inventor this saves time both in terms of bringing forward the date of filing and reducing the burden on the inventor (as well as potentially the cost of the exercise). It also means the inventor is likely to be willing to work with you next time, which can be important if there is a stream of inventions to come.

Expectation management

One of the biggest problems is that the attorney and the inventor may be coming at the drafting process from different positions and with different expectations. The inventor may assume too high a level of technical knowledge in the attorney, for example, and leave them behind. In such circumstances it is vital to bite the bullet and ask the inventor to slow down – unless the attorney understands the invention they will not be able to claim it correctly. By the same token, the attorney may begin spouting legal terms, or patentrelevant acronyms that make no sense to the inventor. By this point in the book for example, the reader should be familiar with terms like ‘prior art’, ‘sufficiency’, ‘claims’, ‘amendment’ and so forth, but in fact these have little meaning to the uninitiated. Ideally therefore, at least the first meeting with an inventor should include some orientation and if necessary education.

What to tell the inventor

The extent of the orientation exercise depends on how familiar the attorney is with the technology and how familiar the inventor is with the patent process. If the inventor is not familiar with the patent process then it is often useful to take them through the following:

• Patents are granted for inventions. A patentable invention is tested against the ‘prior art’, that is, against all information in the public domain before the patent application is filed, whether it was published in writing, presented at a conference, sold or otherwise disclosed anywhere in the world. The inventors themselves can create prior art by publishing their ideas such that they must file the applications before they put the invention into the public domain. If something has gone wrong then there are some jurisdictions, for example the US, where a one-year grace period applies.

• To decide whether something is a patentable invention there are two limbs to the test – novelty and inventive step (non-obviousness). To be novel, the invention must be different from the prior art. To stop protection being available for trivially different concepts the difference must also be non-obvious. One of the tests to decide this, which inventors tend to be comfortable with, is the ‘problem solution’ approach – does the difference mean the invention solves a problem with the prior art?

• The patent application itself is a legal document having two parts. The first part – the description – must define the invention in sufficient detail that

the skilled reader – someone with the inventor’s level of technical ability but no inventive ability – could make the invention work. Although, in reality, this document might not require too much information given the general level of knowledge in the field, it is better to err on the side of too much information. One reason for this caution is a third party’s ability to attack a patent application on the grounds of insufficient detail. Furthermore, information cannot be added to the application later. The other part of the patent is the clauses at the end, known as claims, which verbally define inventions as broadly as possible without making them so broad that they are no more than an obvious development of the prior art.

• The aim of the meeting is to obtain enough information to do the first draft of a patent application with sufficient material in it that the inventor can help finalise the case in a single iteration. As a result, the more information the inventor can provide at the outset, the better. It is when the inventor mentions new information later on that the process tends to be strung out.

Handling the technology

In relation to the education of the attorney by the inventor, this needs to be handled with care. If the attorney is an expert in the technical field then the inventor usually welcomes this. However, if the attorney decides they know better than the inventor, this arrogance is unlikely to go down well. If the attorney generally has experience or qualifications in the broad field but no more then it is usually reasonable to ask the inventor for a quick primer. But this needs

to be handled carefully as the inventor may decide that they would rather have an expert than waste their time educating a lawyer.

Accordingly, the more preparation the attorney can do in getting up to speed with the technology the better: any resources the inventor can provide, general searching, maybe looking for earlier patents in the same name. It is also worth bearing in mind that however much background reading the attorney does, it is important to make sure that they are talking in common terms with the inventor. It is remarkable how different specialists in the field can understand the same technology differently. If you, as an attorney, can ensure that you start from the same baseline as the inventor that you are talking to, matters will be accelerated and their confidence in you will be greatly increased.

If it is possible to indulge in this mutual education session, which need not be particularly time consuming, it can often be the beginning of a beautiful relationship. There is a difference here between attorneys in private practice – that is attorneys typically working for multiple clients and in multiple areas of technology – and attorneys working in-house – that is, within an industrial department handling, typically, a more limited range of technology. Attorneys in private practice must spend a lot of their time getting up to speed with new technologies, but may be at risk of having a superficial understanding in each case. Against that, the attorney in an industrial department must build up the right relationship with the inventors and is likely to be expected to have a strong technical understanding of the particular field or fields their company is involved in. In either case,

if the inventor comes back to you with their next invention too, you are probably doing your job.

Remote interaction

Given that this edition is being written in the 2020 lockdown the idea of taking invention disclosures at a physical meeting with the inventor seems weird; with screen sharing, video calls and all the related tools then the main omission from a remote meeting may be physical demonstration of an invention – and it is still fun getting to walk around someone else’s lab. However, ‘virtual tours’ are becoming simpler through eg CAD demonstrations, so even this constrint may be met. In any case, the meeting may not be the first step. Organisations with a highly sophisticated IP capture system will often require documentation to start the process. In some instances this documentation alone is enough to allow the attorney to put together a first draft patent application that can then be reviewed by the inventor. Certainly, pretty much everything can be done in writing or online.

Inventor types

Just as attorneys vary in their abilities and expertise, so do inventors and it is worth talking through some of the typical inventor types that one meets in order to get a feel about how to handle them. It should be borne in mind, however, that the goal is always the same: to extract the invention and supporting information as efficiently as possible.

The busy inventor

The busy inventor does not have time to talk to you or prepare information for you and may be unwilling to read anything. Even

though this will typically result from other pressures the inventor is under, in these circumstances the task of the attorney can be difficult. It is necessary to glean as much as possible from the information you have been given and it can be surprising how much can be gained from careful and repeated re-reading of the same disclosure. It may be necessary to bite the bullet and put together a piece of work that is less than optimal in order to draw some feedback from the inventor even though the feedback may be critical. An understanding of the inventor’s problems is required – getting a patent may be important, getting the patentable product out and making money for the company is absolutely vital.

The lawyer

Some inventors take a keen interest in the legal side of the patenting process and extend their comments to a review of the extent to which your work meets the patentability requirements and so forth. This can be useful as it may, for example, shed light on weaknesses in claims you have drafted. But this can also be counterproductive. It is vital to handle comments in this area delicately, taking the time to explain why, according to the law, you have proceeded in a particular direction. However, if the inventor is insistent that changes should be made that you are not comfortable with, you need to consider carefully before following their instructions. In particular, you must make sure that you have clearly set out the concerns you have with their suggested direction. What to do in these circumstances depends upon the nature of the client and moreover, your relationship with them.

The disorganised inventor

In some instances the inventor will send you an initial disclosure and follow up with further papers that they should have given you in the first instance. This practice can change the direction of the invention and will often instigate numerous rewrites of the patent application. This can be expensive as often any change in a patent document is echoed in numerous places. For example, a change to an embodiment may require amendments to the independent claims or the addition of dependent claims, introduction of new drawings (requiring an additional caption for the drawing in the introduction) and possibly a change to the prior art as presented and discussed.

Another possibility is that information is given to you just before it is going to be disclosed. Sometimes this is unavoidable, especially when inventors are new to the process. In these circumstances you simply need to do what you can. If the inventor is a repeat offender, you still need to do what you can, but it is in their best interest for you to explain the problems with rushed work. The quality is unlikely to be high, the inefficiencies involved may result in greater costs and the inventor needs to make sure they give you everything relevant immediately. Absolute last minute last filings are particularly unattractive. Often one only has time to make minor changes, such as changes to a publication that is going out, adding a few claims or corresponding claim wording. Although this will establish a priority date and the attorney consequently has the priority year in which to make further changes, the priority date will only be valid to the extent that the required information is in the original filing. Great care must be taken

with any re-writes during the priority year to ensure that the content of the application is not varied in such a way that the priority date is lost. In other words, the position is not ideal.

Often an explanation to the inventor of the problems involved, if they are disorganised, can be helpful for future cases. Merely pointing out that it makes the attorney’s life difficult is not particularly constructive as the inventor may take the view that it is the attorney’s problem. However, explaining how it can adversely affect the quality of the patent document, as well as increase the costs, may be rather more persuasive.

The understanding inventor

The understanding inventor tends to recognise the split of expertise between their technical ability and the patent attorney’s legal and drafting skills and tailors their input accordingly. However, often inventors make an effort to understand the legal aspects as well and their contribution on this side cannot be underestimated. Inventors with long experience in the patent drafting process can make significant contributions in this way. As well as being a pleasurable experience, drafting patent applications for inventors of this type tends to be cost effective, with both parties doing their section of the job properly.

The genius

A real problem for the patent attorney can arise when the inventor understands their technology too well. It is difficult for people who understand their field at such a high level that the basics have become intuitive and partly invisible to them to explain the invention to a third party. The job of the patent attorney in this case is to slow the

genius down and try and get them to come down a few levels. This could potentially be humiliating but the inventor may be co-operative when reminded just how challenging their work is for the rest of the world. The patent attorney should explain how important it is that a thorough understanding is arrived at and subsequently demonstrate a quick grasp of the principles once they have been set out; it is then often possible to win the inventor’s respect. Again, it is worth preparing carefully for any meeting of this kind in the hope of reducing the amount of basic education required from the inventor. Sometimes you may really be the wrong person to be handling this kind of invention, but before paranoia takes over, it is always worth stopping and asking yourself whether any other patent attorney could do a better job, especially if you are in a particularly esoteric area of technology.

The perfect inventor

Don’t go looking for a perfect inventor, they’re paying you to be a perfect patent attorney.

The meeting

Whatever the inventor type, and there may be many more, it is the job of a patent attorney to get a good patent out of them. If you fail to do this you should examine first why you did not manage your task of educating the inventor. If the inventor is of the ‘wrong’ type, then it is probably because they are not fully appreciating the legal ramifications of the patent process, and it is then the attorney’s job to educate that inventor.

Basic issues

The next question is, what makes a good meeting? Before the meeting, you should

have read up and understood the invention to the extent that your questions are on points of detail and at a refined rather than a basic level. If you are able to put together the skeleton of a patent application or perhaps a draft claim 1 that you can turn to at the meeting, all the better. A simple approach is to follow the format of the patent specification in the meeting: going through the prior art, identifying why you are better than the prior art, and providing a detailed discussion of the inventive technology. It is always useful to get the inventor’s own explanation of the prior art and possibly, agree on some basic diagrams and so forth, simply because the inventor is less likely to query your draft if you are feeding back the information that they gave you. Indeed, the more you are able to follow closely the information given to you by the inventor, the quicker the review process will be. If you are able to discuss possible forms of claims with the inventor at the meeting then this will mean that the scope of the invention can be represented accurately and that all the different commercial implementations of the invention can be spotted. It is also worth ‘future-proofing’ the patent application, talking around a third party’s possible attempts to design around the patent. This process can also shed light on the correct scope of the claims. Explaining to the inventor the thinking behind the claims, and, in particular, the commercial imperatives (territorial considerations, covering components of the product as well as the product in its entirety, catching both method and apparatus implementations, for example) can again help in arriving at a mutually agreeable set of claims.

Example: laser patent – inventor-led claim broadening

The draft claim recites two lasers with interfering paths. You ask the inventor how they might design around that expression of their idea and they say, ‘what about one laser and a mirror’. You redraft.

Other legal points to cover

The inventor may also require some basic legal advice, for example: advice on what patenting strategy might make sense based on issues such as detectability of the invention, policeability and enforceability in different jurisdictions and budget. You may need to discuss whether a patent application is the right thing to do – is it cost effective; is it actually better to keep the invention secret altogether? For the lone inventor, you may need to explain that patenting is the easy bit compared to getting the product to market – do they have a business plan? A common issue that comes up is ownership – you need to make sure that you are able to advise the inventor about whether they (or their employer) will be entitled to the patent, to put in place suitable agreements and so forth. In some jurisdictions there are security provisions that state that patent applications made by a national resident of that territory, or relating to inventions made in that territory must be filed first in that country unless a foreign filing permit is obtained. These provisions vary from jurisdiction to jurisdiction. You need to make sure you understand the ramifications of the foreign filing permit system as it can slow matters down significantly if a permit is required, especially where multiple inventors in multiple territories are involved.

After the meeting it should be possible to

provide a first draft patent application fairly quickly based on the information that has been obtained. Furthermore, the inventor should be able to review the application equally quickly without the need for detailed amendment simply because you are largely repeating the information that was provided to you by them.

It is not always possible to have a meeting with the inventor. They may be abroad, time may be too short or it may be possible to draft the case based on a disclosure document they provide, although it is often difficult to go into the same level of detail without face-to-face (or at least voice-to-voice) contact. It is always good practice when sending the written draft to the inventor to ask questions at the same time to clear up areas of uncertainty. One good way of doing this, in conjunction with tracked changes, is to embed the questions in comments in the draft document itself (rather than, say, in a covering email) simply because the inventor is more likely to answer questions as they go through the specification and you or the inventor may forget later on in the process that you even asked any questions elsewhere.

THE DRAFT ITSELF

Structuring the draft

This could either be a very long or a very short section. The long answer is provided in the entirety of this book and I’m not repeating it all here! On top of the basics of putting together a reasonably comprehensive description and commercially useful claims, however, it is worth emphasising the importance of managing all of the information you are likely to get in practice, deciding which to use, which to reject and how to put it in the right place. The Five-SOFAs approach –structure, operation, fabrication, advantages, and variants – provides a useful framework for inserting the relevant information into the relevant place. When working from multiple documents this author will mark the different sections of the document according to where they fit into that model to help order the information effectively.

US issues

Another point worth mentioning is the importance in the US of using the description as a tool for interpreting the claims. It is always worthwhile making sure that the terms used in the claims are mentioned, explained and possibly broadened, or at least presented together with alternatives that have a specific description. A useful tool is to build up a ‘glossary’ of claim terms while preparing the draft as it is easy then to check off each of the terms in the glossary as it is added into the specific description. This can be reflected in the overview section as well, streamlining the drafting process. It is worth repeating the benefit of referring to ‘effects’ rather than ‘advantages’ throughout to reduce the risk of misinterpretation of claim scope in the US.

Efficient drafting

The most efficient approach is to do as much work as possible in the first draft of the application such that any changes thereafter can be dealt with easily and without necessarily getting back into the detail of the case. This is particularly important when there is time pressure or when the attorney has many cases to handle and a brain of limited size. As a result, while it can be tempting to write to the inventor with part of the draft promising to prepare the claims later, for example, this just defers the hard work and slows the process down. Similarly, if there are any unclear areas that become apparent during the drafting process – which is almost invariably the case – highlighting these within the body of the draft patent application in the form of queries for the inventor is a neat way of ensuring that the inventor sees and answers the queries as they arise and book-marking where the information needs to go.

Other required information

While not directly the subject of this book it is always important to remember the administrative side of things. You need to know at the outset who the applicants are and any inventorship and ownership issues. In jurisdictions where it is not obligatory to request a search from the Patent Office at the outset, you need to know whether the inventors want the search done or not, and to have your advice ready in relationship to prefiling searches – whether prior art or freedomto-operate (FTO). It is useful to have an idea as to whether the inventors are likely to want to file in more obscure countries which may not be, for example, a party to the priority system or the PCT system, which may then mean that extra filing is required to protect

the patentee’s position. If there are inventors from multiple jurisdictions then you need to deal with the foreign filing permits carefully as they may well differ between countries and they may subsequently be in conflict. The inventors need to understand that, while the filing of a patent application will protect them against the disclosure of the subjectmatter specifically within that particular patent application, if they later come up with developments and modifications they should contact you before publicising those, as additional patent protection may be required. They also need to understand that the application is not published for 18 months and that until then they have control over information going into the public domain. You must make sure you docket follow-on dates – it is tempting once the application is filed to sit back with a sigh and move onto the next case but if, in a year’s time, you forget to file a further application overseas claiming priority, then your inventors will be extremely unhappy.

Covering all the options

Often when you are drafting you will be presented with large amounts of information and the way you manage it could be important both to the quality of the draft and your efficiency in preparing it. Given that it is effectively impossible to add information to a patent application once it is filed (or at least after the priority year has expired as discussed briefly below) one should err on the side of including too much rather than too little information in case it would be useful later on. Various factors weigh against this, however. Firstly, the inventor may wish to limit the amount of information that goes into the public domain. This is risky because

it could affect the sufficiency of the patent, but any concerns from the inventor should be taken into account and the risks explained. Secondly, merely cutting and pasting in all of the information given with no real order or consideration would make a lengthy and potentially incomprehensible document that could still give rise to problems later in the life of the patent – if it is difficult to work out what is going on, is it possible the patent might be insufficient, for example? Thirdly, the longer the document the higher the eventual costs, especially if the patent application is going to be proceeding in countries with translation requirements at some point in its life. The structured approach to constructing a description detailed in earlier chapters can help in this way. If you have multiple documents or lengthy documents then it is possible to put together a ‘skeleton’ draft linking up the various sections in the appropriate order. The use of the overview section can be helpful in such circumstances for tying the whole thing together in simple terms and the result can be that order is created from chaos, telling the story. In addition, this approach can be helpful for weeding out duplication of information that can often happen between, for example, multiple academic papers relating to a concept, or the mix of academic papers, internal briefings, business plans, investor documents and all the other paraphernalia which may come your way. If you do intend to remove anything substantive then you need either to explain or justify it to the inventor, time permitting, prior to filing the application to ensure that this is acceptable. Generally speaking, this approach ensures that all of the options are covered in a thorough and comprehensible manner.

How broad should the initial claim be?

Your job is to draft a claim that meets the patentability requirements over all prior art that you and the inventor are aware of. It does not extend to carrying out exhaustive searches to find all possible prior art, nor to hypothesising possible prior art. The claim should, of course, be novel, but this is easy to assess as novelty is a fairly black and white issue. As regards inventive step, opinions may vary as to ‘how’ inventive the claimed invention needs to be, but this author’s view is that if an argument can be constructed for inventive step then this is enough – it is up to the Patent Offices and ultimately the courts to say once and for all whether the claimed invention actually meets the requirements for patentability.

An advantage of filing an application with a claim of this breadth is that any searches carried out are likely to attract a lot more prior art and hence give a good feel for the actual claim scope available. On the other hand, it is more likely that such a broad claim will meet with objection. While there are plenty of opportunities to overcome any such objection, by amendment or argument, in some instances the patentee may be concerned that third parties such as inventors, potential licensees or, indeed, potential competitors would be watching the patent and glean the wrong conclusions from a negative initial examination report – indeed inexperienced patent applicants can take a comprehensive search report very personally, and need reassurance that it is part of the process! In this case it is, as ever, a matter of explaining the risks to the patentee and discussing the best way forward.

Drafting in a hurry

As discussed above, from time to time you will receive urgent instructions to file a patent application because there is an imminent disclosure. It is always important to ensure that the disclosure really is a disclosure, and that the date is a real date because drafting in a hurry is always unattractive and can be detrimental to the quality of the eventual patent. But where the date is a true one then you simply have to do what you can. If time is really short then you may have to file what you receive but if there is any time at all, you should add one or more claims to the application at that stage; priority or added matter issues are very likely to arise later if not. This will help later on in showing what the invention was considered to be which could otherwise be a problem from an added matter perspective. It is worth reiterating that educating the patentee as to the need to identify potential patent filings as early as possible is to everyone’s benefit and can bring the overall cost of patenting down significantly as less tidying up work will have to be done later in the life of the patent.

Using the priority and publication system

This book is not about filing strategy, and is aimed at teaching how to write a good, thorough patent application at the outset. But it is worth looking into how the early stages of the patenting process can be used. There is no substitute for a comprehensive first filing but further filings during the priority year may be necessary if an early disclosure date is needed and new technology is being developed and disclosed during the year. Be aware of the ever-increasing risks with relying on your priority date in this way, but use it where you

must. Slightly less attention is paid to the sixmonth period between the end of the priority year and publication of the application. Before the EPO, the prior art effect of earlier unpublished applications extends only to novelty, so it is still possible for your inventors to file applications outside the priority period but before publication directed to trivial improvements as long as they are novel over the earlier filings. Make sure you understand the system well in case you have prolific inventors who love publishing their ideas as quickly as possible, as you may be able to build quite a clever strategy using the tools available.

CONCLUSION

The reality of drafting goes far beyond dealing with the sterile legal considerations and theoretically straightforward commercial considerations of patent drafting. It involves extracting information efficiently from the inventor, gaining their confidence in your technical ability and putting together a document quickly and systematically that constitutes a strong potential patent and also satisfies the patentee that they have the right patent attorney working for them. The foundation of a good practice, however, is still an understanding of the basic principles and the implementation of a structured approach, and following these simple guidelines should make sure that you keep everyone happy.

Drafting new patent applications is the most exceptional skill that a patent attorney possesses. Drafting should, however, be treated as just another part of the job rather than as anything special. Otherwise, there is a temptation to put drafts to one side as being ‘too difficult’. With a structured approach and a little practice, drafts can be produced

efficiently and with a degree of comfort that a strong legal document has been created. Indeed, the more structured your approach, the better – planning your draft before you get cracking ensures that all the information fits into the right places. Planning also forces you to write the claims potentially before you do anything else and treat meetings with an inventor as an exercise to ensure you have all the right information for the right parts of the specification. This means that when you actually put pen to paper, fingers to keyboard or lips to microphone, the exercise of actually preparing the document is a simple one.

Once the application is filed, you are at the beginning of the life of a patent application. You will need to fight it through various Patent Offices, potentially amend it or argue its strengths and carry out all kinds of administrative steps before the patent itself is granted. Third parties will then be trying to invalidate it and design around it, and you may well be trying to raise money with it, sue people with it or license the patent to them. All these things, however, are for other books. Following the lessons in this book should help ensure whatever route you take you have the best prospects for success.

12. INTERNATIONAL CONSIDERATIONS IN DRAFTING PATENTS

Chris Palermo (USA)

Sarah Wang (China)

Hirohito Katsunuma (Japan)

Chulhee Lee (Republic of Korea)

This book is written by a European practitioner based in London, UK and so inevitably reflects to some extent the influence of the European Patent Office (EPO) and UK practice on the form and content of patent applications. In many cases where examples of statutes are presented, the relevant wording is taken from the UK Patents Act or the European Patent Convention. However, these are principally selected as representative forms and corresponding provisions from the rest of the world could be used equally well. Although we have not yet seen the ratification of a substantive patent law treaty officially harmonising worldwide patent practice, in the arena of initial patent drafting we have de facto harmonisation and this has been in place for many years.

In other words, almost any patent attorney

in the world would advocate a generally similar approach to the preparation and drafting of patent applications, and at the current level of this book, the teachings provided are enough not simply to prepare a draft patent application acceptable before the EPO, but which could progress in any jurisdiction in the world. Every patent application should indeed be written in the expectation that it could proceed before a Patent Office anywhere.

Every jurisdiction has its quirks, but these are usually addressable as long as the basic work done in the initial draft patent application is enough.

UNITED STATES

Patent law in the US differs in some significant aspects from the rest of the world with a ‘first-inventor-to-file’ system rather than a true ‘first-to-file’ system and the provision of a ‘grace period’ allowing one year from disclosure of an invention to filing of a patent application in relation to it, complex rules defining what sort of disclosure initiates the one-year period, and different classes and effective dates of prior art. Although these aspects need to be taken into account in the drafting process from an administrative point of view, they do not materially affect the substance of the patent application itself. There are some slightly less overwhelming differences that do need to be taken into account, and many of these have been discussed above, but the influence of the courts on the interpretation of claims and the knock-on effects on how a patent application is put together are of increasing importance. This, in conjunction with the potential economic value of a patent in the US, means that this jurisdiction particularly requires a little additional discussion.

Best mode

We have discussed at length the ‘sufficiency’ or ‘enablement’ requirements of the patent system, whereby the description must give enough information for the reader to perform the invention. On top of this, the US has a ‘best-mode’ requirement that the best way of putting the invention into effect (rather than any way of putting the invention into effect) must be described, if the inventor knows of a best mode. While the United States Patent and Trademark Office (USPTO) rules require setting forth the best mode, in 2013, failure to disclose the best mode was eliminated as a

basis of invalidity or unenforceability in court litigation. In most cases this will amount to the same thing as the inventor typically not telling the drafter about bad ways of performing their invention. It may be the case, however, that the inventor would prefer to keep secret the best way of performing the invention and disclose a lesser way in the patent itself for public consumption. If the drafter has an inkling that this may be the case then the risks should be explained extremely carefully.

Claim interpretation in the US

Different jurisdictions have different approaches on how to interpret the scope of a claim, generally centering around the extent to which the description can be used to broaden claim terms. In most cases there is little that the patent attorney can do to strengthen the patent in terms of rewriting the description to enhance the claim interpretation process. However, in the US, more emphasis is being placed on the description as a source of interpretation of the claims to the extent that it is becoming almost dominant. US patent examiners look to the specification for basis that the invention is technical in assessing patent eligibility and to find support for the patent attorney’s argument that claims distinguish over the prior art. As a result, a rigorous implementation of good drafting practices is worthwhile with the US in mind.

Several areas merit comment. The first is the extent to which, if only one embodiment is described in detail, claims purporting to cover other embodiments will actually be interpreted as doing so. In this case, where you have any information about additional embodiments, it is important to

follow the normal practice of including as much information as you can if it has been given to you, but perhaps paying even more attention to making it clear that there is enough information there to implement the one or more additional embodiments. The modern trend is that US courts interpret the claims as commensurate with the scope of the disclosure, and will not extend the scope of the granted claims beyond the specific embodiments that have been disclosed.

The second aspect is the extent to which an expression in the body of the description can be construed as limiting the scope of the claims even if corresponding features are not found in the claims. As a result, it is worthwhile making it clear where an optional feature is being described or one possible embodiment is being described, that this is an optional rather than mandatory feature. This is slightly unfortunate, as peppering the description with ‘optionals’ and other conditionals makes it more difficult to read and rather goes against the idea that the description is there to describe an existing embodiment. In fact, there is a risk that, instead of being used to interpret the claim to determine the extent of protection, the description may end up defining the extent of protection, on its own in the US – negating the point of the claims and hopelessly confusing the roles of the constituent parts of a patent. Let us hope not. The converse will also be true; words that draw attention to a particular aspect or feature of the invention or an embodiment may limit the scope of the claims. Words such as ‘critical’, ‘special’, ‘peculiar’, ‘essential’, ‘superior’, ‘requires’, and even ‘must’ should be avoided to prevent the introduction of limiting effect.

Another practice that, once again, springs

from good drafting anyway, is to shed light on terms that are used in the claims by discussing them in the description. For example, where the term ‘resilient biasing means’ appears in claim 1, it might be worthwhile stating in the description that the product includes ‘a resilient biasing means which can be biasing means of any appropriate type including, but not limited to a coil spring, leaf spring, resilient material and so forth’. Furthermore, the consistent use of the same terms, rather than switching among alternative terms, is encouraged.

Furthermore, be aware that amending claims during US prosecution can affect later interpretation of the claims in the courts, by eliminating the availability of the ‘doctrine of equivalents’ for elements or limitations that received narrowing amendments. Consequently, preparing a set of claims for filing in the US that is longer, has more alternatives, and has several independent claims of the same type (say, apparatus) but different scope, is recommended even if those claims are not filed in a priority application to reduce excess claims fees.

When the claimed invention derives from software or a computer program, and the claims use ‘means-plus-function’ form, US rules require the description to disclose an algorithm for carrying out the specified function. While this would seem to be naturally addressed by good drafting, whenever a ‘means’ clause is introduced into a claim in the drafting effort, a crosscheck should be made to ensure that a corresponding algorithm – in prose or drawing figures – is easily found. And, contrary to their broad appearance, claims written in means-plus-function language do not cover every means for performing a

recited function in the US. Instead, they are limited to the specific structures, materials, or acts disclosed in the specification, plus any equivalents, that are clearly linked to performing the function.

In US practice, the Abstract and Summary ‘count’ as parts of the description that can have a limiting effect; all the principles noted above apply to the Abstract and Summary as well as the main description.

A patent that is drafted following the basic guidelines discussed in this book should meet the requirements of any jurisdiction. There is room for a specialist discussion of differences between systems and additional fine-tuning that can be performed, but it is outside the scope of this book. The importance of the description in interpreting the claims in US practice is the one point that perhaps required emphasising in view of the commercial importance of the US as a jurisdiction, but again well-drafted patents typically cover these issues in any case.

CHINA

Patent law in China is similar to that in European jurisdictions so that an application acceptable to the EPO shall in principle also fulfill the requirements in China. However, regarding issues concerning the claims and description, the China National Intellectual Property Administration (CNIPA) may be stricter than the EPO. In addition, China has some special rules restricting amendment after filing. The elevated standards and unique rules in China could affect the scope of granted claims or even result in invalidation of a patent, and are thus worth mentioning herein.

Added matter

Practitioners may feel frustrated when dealing with Chinese examiners on added matter, even if they are used to the strict approach on this issue taken by the EPO. An amendment after filing shall be permissible at the EPO if the added matter is directly and unambiguously ‘derivable’ from that previously presented by the application, even if the added matter is not explicit in the original application but implicit to a person skilled in the art. Theoretically, in China, subject matter that can be directly and unambiguously ‘determined’ according to literal content and drawings of the original application is a permissible addition. However, Chinese examiners are extremely cautious on this issue and practice the law in a relatively strict way in order to avoid extending the scope of claim beyond the original disclosure. As a result, literal support is in fact needed in most cases. Though arguing the disclosure of drawings can be a last resort, there is limited space for the knowledge of a person skilled in the art to come into play. Relying on content

merely implicit to a person skilled in the art is very likely to meet objection. An intermediate generalisation from one or several specific embodiments is seldom allowed after filing at the CNIPA in the same way as the EPO.

In drafting a patent application to satisfy the requirements of a future filing in China, explicitness in expression and consistency in terminology, as well as including inherent or well-known features or properties, are always recommended. Intermediate generalisations with varied scopes, from broader to narrower, are recommended. Chinese patent attorneys may even draft the description such that sentences therein can be directly recited into claims if needed, in case paraphrasing or reorganising the words and sentences may induce an added matter objection. As a more general point, considering the ambiguous nature of the Chinese language, long and complex sentence structures should be avoided, as translation of them into Chinese may make the sentences more difficult to read or may lead to completely different meanings.

Lack of support

China and Europe both require that claims shall be supported by the description. In China, unlike Europe, however, lack of support is also a basis for patent invalidation. Though an independent claim ought to be a permissible generalisation from one or more specific embodiments, having its scope broader than each of or a combination of the specific embodiments, the claim breadth and how many embodiments are enough to support the claim need to be carefully considered. Using only one embodiment to support a broad claim is technically allowed at the EPO and is, historically, permissible in China. However, in recent years, Chinese

examiners are more and more inclined to raise an objection of lack of support, even if more than one embodiment is included in the description.

When the claim is deemed to be overbroad, this objection may be raised by reasoning that it is difficult for those skilled in the art to predict that all other variants covered by the claim, besides the embodiments described in the description, can solve the problem to be solved or achieve the technical effect. In drafting the description, therefore, the attorney should avoid attributing the reason for solving the problem and the reason for achieving the technical effect only to specific embodiments. The reason, for example, may be attributed to a common property or principle summarised from the specific embodiments; then a generalised claim possessing the property or being capable of working in the principle can be better supported by the description.

In the ‘unpredictable’ fields such as chemistry, material science, biology, etc., the description should include as many embodiments as possible, accompanied by experimental data, for each and every essential or optional feature. Evidence such as additional examples and experimental data cannot be submitted after filing of the application to overcome the objection of lack of support in China. Therefore, the problem of lack of support will generally result in restriction to the scope of the claims, even in the absence of prior art. In these circumstances, intermediate generalisations with varied scope and/or from various aspects are worth preparing and explicitly including in the application as filed to give room for future amendment. This can be in the description, as a transitional section between

the description of the general solution and the description of the detailed embodiments. However, it is better to include one or two levels of intermediate generalisation specifically in the dependent claims for the most significant features.

Essential technical features

In China, an independent claim should state the essential technical features necessary for solving the problem to be solved. This requirement applies not only in examination but also in invalidation proceedings. The problem to be solved is decided according to the description, especially according to the problems articulated in the background section and/or the corresponding effect articulated in the summary of invention section, rather than according to the prior art cited in examination. Unless explicitly indicated otherwise, all the problems or the corresponding technical effects mentioned in these two sections have to be capable of being solved or achieved by the technical solution as claimed in the independent claim. The problems that are indeed solved and the effects that are indeed achieved by optional features should be moved to the specific description section or at least explicitly indicated as ‘further’, ‘optional’, or ‘additional’. When it comes to arguing inventive step, the argument is based on the objective technical problem in a manner similar to Europe, that is to say a problem defined taking the closest prior art into account and technical effects derived from any part of the description. However, as the claim features deemed essential are based on the problem to be solved, care must be taken in indicating only problems solved by the broadest expression of the main claim in the

background or summary of invention to avoid unnecessary limitation.

Restriction on claim amendment

In opposition proceedings at the EPO, a first amendment restriction is once again that the amendment does not result in the subject matter extending beyond the original disclosure; the added features can however be from both claims and description. However, in China, during an invalidation procedure, the added features are restricted to those already presented in the claims as granted which depend from the claim to be amended. A feature only in the description even if effective for holding the claim valid may not be added to the claim.

Moreover, in China, the opportunity for filing a voluntary amendment after filing and before allowance of a patent application is limited to the time of filing a request for substantive examination or within three months after receiving a notification of entry into substantive examination. During substantive examination, the examiner has the right to refuse the voluntarily added independent and dependent claims. Therefore, in drafting the application, while ensuring the independent claim is broad enough, it is also important to draft the independent claims corresponding to the disclosure of the description. Significant optional features and intermediate generalisations with varied scope should be included in dependent claims, not just buried in the description. If the claim set is not drafted well at the beginning, it is critical to seize the limited opportunities for filing the voluntary amendment in China in the restricted period mentioned above.

In addition, in opposition proceedings at

the EPO, an independent claim as granted cannot be amended to expand its protection scope. In China, not only in an invalidation procedure but also during substantive examination, removal or change of a feature included in an independent claim is not allowed if the removal or change leads to expanding the scope of the claim. Therefore, in China, the opportunity for filing the voluntary amendment is also crucial as it may be the last chance to exclude an unnecessary feature from the independent claim.

Summary

There is strong similarity between Chinese and European practice, but good drafting of the claims (or basis in the description for the claims) to include basis for intermediate generalisation and optimal patentability fallbacks is particularly important. Care should also be taken to attribute technical effects as broadly as possible in the introductory section so that they are solved by the broadest expression of the claims –other effects should be included in the specific description.

JAPAN

Japanese patent law is similar to European Patent Law. Many European patent applications and patent applications from European countries (hereinafter referred to as ‘European patent applications’) can be filed in Japan as they are.

However, patent applications in Japan (hereinafter referred to as ‘Japanese patent applications’) have stricter requirements for clarity for the description of claims than European patent applications. Therefore, when filing a patent application in Japan, it is necessary to pay attention to the clarity of the wording in the claims. In addition, English descriptions are required to avoid mistakes in translation.

In Japanese patent applications, functional descriptions/products by process (PBP) are allowed. The interpretation of functional descriptions/PBP is almost the same as in European patent applications.

In examination, unlike European patent applications, there is no counterpart to the auxiliary request system. Therefore, in the amendment of a Japanese patent application, it is necessary to amend to a claim which can surely be patented. For this reason, in order to prepare for amendment in the examination, it is necessary to construct the claims in which the invention is embodied from a generic concept to a specific concept. This is because, when a reason for refusal is issued, it becomes clear which level of the concept of the invention is patentable.

The requirement of unity for Japanese patent applications is almost the same as that for European patent applications. However, unlike European patent applications, Japanese patent applications do not have the restriction of one independent claim per application. In

Japanese patent applications, it is common to include multiple independent claims in one application and to include the claims to a method and a product in one application.

In addition, Japanese patent applications do not require the so-called two-part form claim.

In European patent applications, a ‘problem-solution approach’ is taken for the determination of the inventive step, whereas in a Japanese patent application, a ‘motivation approach’ is taken. Therefore, it is necessary to pay attention to the description of the specification in order to deal with possible reasons for refusal of the inventive step as discussed below.

In a Japanese patent application, restrictions on new matter included by amendment (‘added matter’) are less restrictive than in a European patent application. The same basic principle is true, however, that amendments must be supported by the specification or claims. For example Japanese patent applications do not have the same concept of combinations of embodiments, as in European patent applications. Even if embodiments A + B, A + C are disclosed and A + B + C is not disclosed in a Japanese patent application, the combination of A + B + C may be amended to. Japanese patent applications more positively recognise patentability of computerrelated inventions in comparison with European patent applications.

Matters specifying the invention, extent of the invention

Compared with European patent applications, Japanese patent applications require greater textual clarity.

A Japanese patent application shall state

‘all matters necessary to specify the invention’ for each claim. The Japanese examination guidelines stipulate that ‘the extent of an invention’ must be clear.

Typically, the terms ‘preferably’ and ‘optionally’ are often found in European patent applications, but Japanese patent applications including those terms are likely to be rejected as the inventions are unclear. This is because it is unclear whether the matters described after ‘preferably’ and ‘optionally’ are included in the inventive matter or not.

It is also not allowed to state terms such as ‘… and so on.’, or ‘…, etc.’ in claims as it is unclear whether or not further components are included in addition to the claimed matters.

The term ‘and/or’ is often used in European patent applications in claims, but it will be rejected in Japan because it is unclear whether it is ‘and’, or ‘or’, or both.

In European patent applications, the phrase ‘A such as B, C and D…’ is often used in the claims. However, this is likely to be rejected in Japan because it is not clear whether A includes further elements in addition to B, C and D.

Translation errors should be avoided. For example, ‘A and B with C’ in English can mean ‘A + C and B + C’; alternatively, it can mean ‘A and B + C’.

Functional description/product by process (PBP)

Functional description/PBP is allowed in Japanese patent application claims as in European patent applications. In the case of Japanese patent applications, the invention must be described structurally in principle. But, if the invention can be expressed only by

a functional description, or if the description covering all possible structures can be avoided by a functional description, a functional description is permitted.

However, when a functional description is made even though a structural description would have been possible, it is sometimes judged to be unclear. In this case, the applicant may be requested to amend to limit to a specific embodiment.

In the case of Japanese patent applications, in the interpretation of a claim, the functional description is interpreted as it is, but if the functional description is unclear, the interpretation may be limited to the embodiment.

Auxiliary requests

As mentioned above there is no system of auxiliary requests in Japan. Therefore, when the application is rejected during examination, it is necessary to amend the claims to be patentable without fail.

For this reason, in general, it is necessary to construct the claims in which the invention is gradually embodied from a generic concept to a specific concept. When making amendments, it is necessary to select the concept for which a patent is to be obtained and make amendments accordingly.

Unity

The requirement of unity for Japanese patent applications is ‘one invention or a group of inventions forming a single common inventive concept’, similar to Patent Cooperation Treaty (‘PCT’) applications or European patent applications.

However, Japanese patent applications are not limited to one independent claim per one application. Further, since the search is not

limited to a specific invention as in the case of PCT or EP applications, it is common to include multiple series of inventions in one application and to combine them into one generic concept.

However, in Japanese patent applications, when examination is carried out, the object of examination is limited to one series of inventions. An amendment to another series of inventions is prohibited by so-called ‘restriction of shift amendments’.

Consequently, as in the case of European patent applications, only one series of inventions is examined per application, and other series of inventions can be divided into separate applications.

Two-part format claim

There is no requirement of two-part format for claims in Japanese patent applications. Therefore, matters described in a particular part of the claim are not interpreted as prior art. In examination, new or characteristic aspects of the invention are identified by comparison with the prior art.

Determination of inventive step

In European patent applications, the ‘problem-solution approach’ is adopted, while in Japanese patent applications, the ‘motivation approach’ is adopted.

The ‘motivation approach’ means that similar prior art instances are compared with the claimed invention, and the differences are identified. From the prior art the inventiveness test is whether or not there is any motivation to reach the claimed invention beyond the differences.

In theorising the existence of motivation, the ‘problem-solution approach’ of the European patent applications may be applied.

That is, it is judged whether or not there is a motive for solving the problem of the prior art, and whether or not it is difficult to adopt the corresponding differences.

However, in the ‘motivation approach’ of Japanese patent applications, even if there is no recognition of the problems of the prior art, inventive step can be recognised when the applied invention produces effects that a person skilled in the art could not have expected. For example, it may be recognised in the case where an unexpected function or effect is performed.

In response to rejections for lack of inventive step, it is sometimes asserted that the applied invention produces a unique effect that cannot be found in the cited prior art. But the assertion of the specific effect must be based on the description of the specification. Therefore, the effects of the invention should be described in the specification. Unlike US applications, the invention is rarely limited by the effects thereof in Japan.

Added matter

In Japanese patent applications, amendments are also limited to matter described in the specification, claims, and drawings as originally filed.

However, in European patent applications, the determination of added matter is strict, and amendment to something other than the wording explicitly stated in the specification and claims as originally filed is typically considered as new matter.

On the other hand, in Japanese patent applications, even if the wording is not the same, amendments may be made to different wording to the extent it is considered by a person skilled in the art to be the same. However, since the extent to which a

person skilled in the art finds it the same is ambiguous, a plurality of candidates should be listed as definitions of the terms in the specification so as not to violate the limitation of new matter by amendment.

Concept of combination of embodiments

Japanese patent applications do not have a clear provision on the combination of embodiments such as in the European patent applications. Therefore, if embodiments of A+B and A+C are described in a Japanese patent application, it is possible to amend to include the combination A+B+C which was not explicitly described.

Computer-related inventions

Japanese patent applications favourably recognise computer-related inventions in comparison with European patent applications.

In Japanese patent applications, inventions relating to computer programs themselves are recognised as inventions of products. Therefore, a claim such as ‘A computer program characterised in executing…’ can be filed.

In addition, not only computer programs but also databases that are collections of data are recognised as inventions of products. Therefore, a claim such as ‘A database characterised in storing…’ can also be filed.

Furthermore, even if it is not the entire computer program, a module itself which is a part of the computer program is recognised as an invention of a product, and a claim to ‘A module executing…’ can be filed.

For AI-related inventions it is permissible to admit that the internal processing of machine learning is a black box, so the

description requirement is satisfied by sufficiently describing the certain correlation between the cause data and the result data. It should be noted that statistical data or experimental data at the time of filling can fulfill the description requirement for explaining the correlation between the cause data and the result data.

Summary

A well-drafted European application will be suitable for prosecution in Japan, but there are some good practices which should be adopted, for example around clarity of the description and a graduated claim structure, if you are aware that the application is likely to progress there.

KOREA

In Korea, the examination process is generally similar to the EPO system but there are various important differences of detail, many specific to technology areas. As an initial comment, at the broad level, regarding vagueness of terms or languages, Korean law is comparatively strict. For instance, what we frequently see in the claims when we translate the English specification is relative terminology such as ‘substantially’, ‘essentially’ or ‘approximately’. These terms are not generally accepted in Korea, especially if these terms come together with numbers, for example ‘approximately 100 volts’. On the other hand, claim language such as ‘substantially round’ or ‘generally rectangular’ tends to be accepted. But nonetheless, it is advisable to avoid these words because the approach varies from one examiner to another.

Regarding computer and AI-related inventions a claim can be directed to a computer-readable storage medium storing a program executing step A, step B and step C; and to a computer-readable storage medium storing a data structure, e.g., structure A, structure B and structure C executed on a computer. However, claims directed to a program per se , program product or program output are not admitted. Program signals or program signal sequences are not admitted either because it is difficult to identify whether they fall into either apparatus or method categories. The term ‘application’ for example as found on a smartphone, which is deemed equivalent to a computer program, is admitted. Specifically, an application stored on a computer-readable storage medium that causes a computer to execute step A, step B

and step C is acceptable. On the other hand, ‘an application that causes the computer to execute step A, step B and step C’ is unacceptable because as it claims a computer program per se. Similar considerations apply to Internet of Things service-related inventions, in relation to which claims should clearly and concisely set forth the procedure or functions resulting from an organic interworking of the elements. Claims should also set forth the coupling relationship between the components clearly, from a technological point of view.

In the field of bio-tech inventions, transitional phrases in claims such as ‘comprising’ and ‘consisting of’ are frequently used in relation to sequences. Different translations of these English words (‘comprising’ having an openended meaning, ‘consisting of’ a closedended meaning) at times give different interpretation from the original meaning. Therefore, foreign applicants should pay attention to the translation of these words because careless translation may lead to a rejection based on the description requirement; in fact there is a ruling in Korea that the transitional phrase ‘consisting essentially of’ is indefinite.

As for pharma-related inventions, Korea recognises not only first medical use inventions made through the discovery of the first medicinal use of a substance, but also second medical use inventions based on a novel medicinal use of the same substance.

A claim directed to a medicinal use should in principle be written in the form of a composition with the medicinal use indicated, such as, ‘a pharmaceutical composition for the treatment of disease A containing compound B as an active

ingredient’. Comprehensive language alone such as ‘medicine’ or ‘therapeutic agent’ is not allowable if it fails to limit its medicinal use, or is defined only by function, property, or pharmacological mechanism. Herein, the indication of medicinal use should, in principle, be expressed as the medicinal effect corresponding to diagnosis, treatment, alleviation, treatment or prevention of disease.

For example, ‘a compound A for the treatment of disease B’ is regarded as claiming ‘Compound A’ per se, but not for its medicinal use. ‘C composition for inhibiting neurotransmission activity comprising substance D’ is deemed indefinite as the pathological symptoms that can be treated by the inventive medicine are not identified.

The wording of claims directed to a pharmaceutical use, even if rejected, can be relatively easily overcome by way of a response to an office action. For this purpose, the name of the disease to which the pharmaceutical drug is applicable and the pharmacological effect data should be provided in the detailed description in the original application. Where the description of the disease name is absent and only the function or pharmacological mechanism is disclosed, which may stem from the standard practices of the originating country, the disease name can be added on by way of an amendment. In this event, the disease name should be capable of being reasonably assumed from diagnosis, treatment, alleviation, treatment or prevention by the disclosed function or pharmacological mechanism, and such an assumption may be reasonable in view of a research paper or the like. The Korean Patent Office (KIPO) takes quite a flexible stance on the description

requirement for a second medicinal use invention as compared with the so-called Swiss-type claim or a wording approach of ‘use in the production of medicine’.

Turning finally to chemical inventions, in a selection invention even if a basic manufacturing method is known relative to the applied invention, an argument regarding the salience of the advantageous effect of the invention may help overcome patentability objections.

In the case of inorganic compounds, in particular, it is difficult to specify the inventive substance solely by its name or chemical formula, and it is common that physical properties such as crystal form and microstructure are different. Against this backdrop, examiners tend to determine the inventive step of a manufacturing method of an inorganic compound by considering the properties of the inorganic compound obtained by the method. It is therefore recommended to include the characteristics of the prepared compound, particularly characteristics related to the use as well as its manufacturing method.

Summary

Once again, good drafting practice is equally relevant for Korean cases, with an emphasis once more on clarity of language; many best practices are specific to particular technology areas, as outlined above.

13. DRAFTING IN SPECIFIC TECHNICAL AREAS

By Daniel Jarrett (Computer-related

inventions)

Elizabeth Crooks (Chemical inventions)

Jamie Atkins and Michael Newton (Biotech inventions)

Throughout this book, examples have been given in all areas of technology, but the bias is undoubtedly towards more ‘traditional’ area of mechanical engineering. This is where patenting started and the practices developed in this area apply equally to new technical areas that have arisen since. The purpose of this book is to develop good basic drafting skills and so a detailed discussion of specific practices in certain technological areas in any detail is beyond the scope of the present book. There are some areas of technology, however, where aspects of patent practice have developed to the point that a short discussion is worthwhile (and entire books possible). We focus on three areas: computer-related inventions, chemical inventions and biotechnology inventions.

Computer-related inventions

This term is used in the broadest possible sense, encompassing inventions relating to operating systems, interactions between computers such as those that occur in encryption or networking, and processes such as control processes implemented by computers. In other words, the discussion extends to any invention where the operation of the computer might form part of the claims. However, this is not the place to discuss computer-implemented inventions of the kind that give rise to objections of excluded subject matter in many jurisdictions, such as automated implementations of business or financial methods. In other words, we look here at technical improvements relating to computers.

As a point of context, it is worth bearing in mind that, in many cases, patents for computer-implemented inventions are related to standards, for example, in the telecoms field, such that they may form part of a large portfolio. In that case, a knowledge of how the portfolio owner prefers their patents to be written is of significant importance. Another point to bear in mind is that patents of this nature almost invariably proceed at least in the US, such that an awareness of US patenting issues also comes in useful. That is not to say that the basic good drafting practices discussed elsewhere in this book should not be taken into account, it is just that there may be some specific tweaks to be borne in mind.

The introduction

The basic role of the introduction in the case of computer-related inventions is still to discuss the prior art and the problems with it. The approaches therefore are much the same as those previously presented. Prior art can be identified together with the problems with it, as long as the patent proprietor is happy to have such commentary in the published document. However, sometimes the introductory section can be quite lengthy, as a large amount of background may be needed to give the context of the invention. In that case, the introduction can be supported by appropriate flow diagram or system figures as required, and it may be that more than one piece of prior art needs to be discussed in order to explain the progression towards (but not all the way to) the invention. Also, some of the prior art may be non-patent literature that is only documented on the internet, in which case the ephemeral nature of the internet may need to be taken into account

and ‘snapshots’ of the relevant documents maintained – for example, for the purposes of providing copies of all the relevant prior art to the USPTO. These points are more procedural than anything and, in essence, the introduction is no different from that for any other technology.

The specific description

Once again, the specific description must, as with all technologies, be at least detailed enough to ensure that a person skilled in the art can implement the invention without difficulty, and to provide basis for any possible fallback amendments that may need to be made to the patent application during prosecution.

However, it may, in some cases, be worth considering organising it slightly differently from the usual structure-operation approach generally discussed here. This is especially the case where the invention can be best described in terms of the algorithms performed by the computer, but where the algorithms are implemented on a fairly standard computer or computer system. In that case, the algorithms may be described first once the context in which they are used has been explained. It is good discipline to ensure that any algorithm or process is described in conjunction with a flow diagram. Such a flow diagram need not be as complex or logically rigorous as a formal flow diagram, as long as it explains generally how the invention proceeds – bearing in mind that there will also be words in the description to help understand operation of the process.

Once operation of the invention has been described, the structure can be set out simply if it is a conventional computer. In many cases, patentees with large portfolios of computer-related patents may well have

‘boilerplate’ text, relating to the nature of the computer, that can be simply copied and pasted into each case. This can appear as overkill. Most computer technicians, given a flow diagram, would be quite capable of implementing it without being told how a computer works. However, given the ease of incorporating boiler plate text of this nature and the risk of a sufficiency objection being raised by the Patent Office or by a third party, there is little downside in including this additional information.

Where different parts of a process are implemented by different components or nodes of a network, it may be worthwhile describing not only the process as a whole, but those steps performed from the point of view of each individual node, again supported by flow diagrams. Not only does this make the description clearer, it may also help the drafter identify additional claims directed to steps performed at the specific nodes as discussed in more detail below.

The claims

A significant and growing problem with patents for computer-related inventions is that generally a large number of claim categories is required. This is partly because computerrelated inventions can be implemented in all kinds of different ways, and partly because there is not yet enough case law to judge which claim types are most useful. This is a problem because various jurisdictions charge per claim. In Europe, more than 15 claims attract hefty fees, irrespective of the claim type. In the US, the problem is perhaps worse, as fees need to be paid for more than three independent claims and more than 20 claims in all. As the fee for independent claims is significantly higher than that for dependent

claims, the need for several independent claims is a real issue and the fees can escalate dramatically.

How this is handled depends on the patentee’s budget and for now we simply identify some of the possible claim types that might be required.

Computer-implemented method

This is a claim setting out the steps performed by the computer(s).

Apparatus

There may be a claim to a computer apparatus in some form, comprising a processor configured to perform various steps. Although this is a method claim in disguise, there can be significant commercial value to claiming the computer apparatus itself, because in some jurisdictions it is more straightforward to prove infringement of an apparatus claim than a method claim. In Europe, this claim may be compactly drafted in the form ‘… configured to perform the method of any of claims X to Y’, although such a formulation is not widely accepted elsewhere.

Computer-readable medium

Typically, one attempts to protect the storage medium for the computer program, in jurisdictions that permit this. This allows the patentee to stop people selling, for example, memory sticks storing the program. However, the term computerreadable medium is usually considered to be fairly broad (especially when amplified in the description as a whole) and, therefore, to cover intangible/transitory things such as downloads – although this has not been strongly tested yet. In the US, the claim will likely need to be limited to a ‘non-transitory’

medium, though. In Europe, a compact drafting style can again be adopted, as for the apparatus claim.

Systems or entities in which the invention is implemented

Commercially, it may be extremely useful to claim the invention within its commercial context. For example, where the invention is a control system within, say, a vehicle or device, a claim could well be directed to the vehicle or device. Where the process is implemented within a specific computer environment then it may be worth claiming the environment. For example, where the invention relates to encryption, the claim may be directed to a computer security system configured to perform the relevant steps.

Multiple inventions

In many cases, computer-related inventions are distributed such that different steps are carried out by different nodes. In that case, it is worthwhile considering which nodes perform novel steps and directing a claim of each category to each of them, again within the budgetary constraints of multiple independent claims.

Territorial considerations

In distributed computer systems, such as networks or client-server architectures, different parts of the invention may be performed in different territories. This has given rise to costly case law, and a way of getting round many of the problems is to claim one ‘node’ at a time. For example, in the case of a client-server approach, the steps performed at the client may appear in one independent claim and the steps performed

at the server in another independent claim, as long as each of those independent claims is separately patentable of course. There might be any number of nodes performing different steps, and each of these needs to be considered separately for potential patentability.

Dependent claims

Typically, the underlying invention is a method – however it may be claimed. As a result, the role of the dependent claims, as discussed elsewhere in this book, may be to provide refinements of claimed steps such that potential amendment is available should the steps have been claimed too broadly, as well as defining other steps that might be performed in practice. For example, where the invention relates to processing of the data at a single node – but this is within the context of receiving and transmitting the data – then the main claim may be directed to the processing steps specifically, but dependent claims may be directed to the receiving and transmitting steps.

Yet again, good basic drafting practice will carry the drafter through computerrelated inventions; the suggestions above are refinements.

Chemical inventions

The drafting of patent applications directed to chemical inventions is well established. Such inventions can relate to a new chemical entity (such as a new compound or class of compounds), to a new or improved process for producing a new or known chemical entity or to a new use of a known chemical entity. Furthermore, the inventions may relate to different technical fields, including the use of new or known chemicals, such as

pharmaceuticals, healthcare products, foods, coatings, paints, catalysts, and so on.

The development of, for example, a new pharmaceutical takes many years and can result in ongoing research. It is, therefore, possible that a new pharmaceutical may be protected by a family of patent applications with, for example, a first application relating to the pharmaceutical per se, and subsequent applications relating to processes for its manufacture, its formulation and to new uses of the pharmaceutical in medicine.

The introduction

As discussed in relation to other technical areas, the basic role of the introduction is to discuss the prior art and the problems with it. As a general point, it is not possible to merely protect the provision of a new chemical entity without indicating some utility for that chemical entity. For example, the European Patent Office considers claims directed to a compound per se, without any indication of utility as lacking an inventive step. The discussion of the prior art and the problems with it therefore usually relates to a discussion of the utility provided by the chemical entity, for example the treatment of a particular disease and the problems in the art with this utility, such as the lack of an effective treatment or problems associated with the current treatments.

The specific description

The specific description of a chemical patent application fulfils two requirements: to describe in detail the chemical entities, processes or uses of the invention and to provide sufficient technological detail to allow the invention to be performed. With regard to the description of the chemical

entity, process or use, the description should provide enough detail to provide basis for amendment of the claims, if necessary, during prosecution of the application. In general, a patent application directed to a new class of compounds will describe the class of compounds by the provision of:

(a) a general description of the class of compounds, normally using a general formula that encompasses all of the compounds and all obvious variations thereof;

(b) at least one and preferably a number of progressively narrower descriptions, again usually in the form of a general formula that covers more preferred compounds (i.e., those having particular advantageous properties) and which are narrowed towards the compounds exemplified in the application; and

(c) examples of specific compounds (either by reciting a list of chemical names or illustrating the chemical structures of each specified compound).

In practice, these definitions are generated from examples provided by the inventor. A review of the specific compounds that have been manufactured and tested by the inventor should allow the identification of a common core formula, shared by all the specific compounds. This common core formula forms the basis of the broadest general formula. If no common core formula can be identified, it is worth considering whether the compounds provided by the inventor do actually all relate to the same invention or whether more than one application should be filed relating to the different classes of chemical compounds.

The positions of variation on the common core formula can be labelled (usually as R 1 , R 2 etc.) and the definition of the possible variants at each position is recited.

For example, a general formula may relate to a compound of formula (I)

information could be provided on the disease to be treated, the mode of administration of the compound and/or the dosage required to treat the disease.

where all the compounds share the indole core structure and variation is observed at positions R 1 and R 2

When considering the definitions of the variants, it is important to consider with the inventor not only what compounds have been made but what other obvious modification of these compounds a skilled person reading the application would consider as being equivalent (i.e. having the same activity and being manufactured in an analogous manner). Thus, if in the compound of formula (I) discussed above, examples are provided where R 1 is a fluoro group, it may be necessary to consider whether R 1 should be limited to a fluoro group or whether a compound of formula (I) having an alternative halogen at this position would have the same activity.

As discussed above, applications relating to a new class of compounds should include a discussion of the utility of the compounds. The description should therefore provide a discussion on the proposed utility, including any technical information that would be required to allow the use of the compounds in this manner. For example, where a compound is provided as a pharmaceutical,

In addition to the description of the invention, it is necessary to provide sufficient technical information to allow the invention to be carried out without undue experimentation by a person skilled in the art. With regard to an invention relating to a new class of compounds, this will require a process for making the compounds, preferably including some characterising data to show that the compounds have been made and identified. Where a class of compounds is claimed in an application, the application should provide sufficient information to allow the provision of all claimed compounds. Therefore, if the synthesis of any particular compound requires conditions that deviate from the general method of synthesis, this should be indicated in the application.

In addition, information should be provided that indicates that the claimed compounds have the required utility. When an invention relates to the provision of a new class of compounds having a new medicinal use, it is generally acceptable in most jurisdictions to provide in vitro data, providing there is some explanation of how the in vitro data relates to the in vivo use. For inventions directed specifically to a new medicinal use of a known chemical entity, more specific data illustrating that the compounds have the desired activity for their new use is required. Current trends before the European Patent Office appear to indicate that data may be required in such circumstances. The application should therefore contain both sufficient

experimental data to allow the skilled person to manufacture substantially all of the claimed compounds and to make it plausible to the skilled person that substantially all of the claimed compounds have the desired activity or can treat the indicated medical condition.

The claims

Patents relating to chemical inventions generally contain a variety of claim categories. As discussed elsewhere, this can have implications on the cost of an application resulting from the requirement to pay excess claim fees in Europe and the US. Unlike patents relating to computerimplemented inventions however, the case law relating to chemical inventions is sufficiently developed that claims in multiple claim categories are generally useful when enforcing a chemical patent.

A particular consideration when drafting applications that will be prosecuted in the US is that the requirements for unity of invention in the US differ from those in other jurisdictions such as Europe. Claims directed to a new chemical entity and a use of the new chemical entity are considered to be in unity in Europe but to relate to two separate inventions in the US.

For an application directed to a new chemical entity, claims can relate to:

The compound per se

This is usually in the form of a general formula encompassing all the required variants of the class of compounds and corresponds to the broadest definition of the invention set out in the description. A claim to a compound per se or to a class of compounds will encompass all uses of the

compound or class of compounds and so claims in this format are valuable.

A process for the preparation of the

compound

This is a method claim that sets out the steps required to prepare the compound. It is usual to include only one step from the preparation of the compound, usually the last step in the preparation or an important step in the preparation. It will be appreciated that drafting a claim involving a large number of process steps would be more difficult to enforce as a third party would need only to omit or deviate from one step to avoid infringement.

Intermediates

Under European patent law (Guidelines for Examination Part F Chapter V 3.2.7), claims relating to an intermediate compound produced during the synthesis of a compound of interest are considered in unity with a claim to the compound per se if:

(i) the intermediate and the final products have the same essential structural element i.e. their basic chemical structures are the same or their chemical structures are technically closely interrelated, the intermediate incorporating an essential structural element into the final product; and

(ii) the intermediate and final products are technically interrelated, i.e. the final product is manufactured directly from the intermediate or is separated from it by a small number of intermediates all containing the same essential structural element.

The use of the chemical entity

Such use claims set out the utility of the chemical entity. Where the use is a nonmedical use, a claim to the use of a chemical entity is written in the format:

Use of compound X in method Y.

In this case, the claim is limited by its use. Examples of such a claim might be the use of compound X as a solvent. In this case, the use of the compound X in a different unrelated use should not infringe this claim.

In Europe, claims directed to medical uses have a special format due to the prohibition on patenting methods of medical treatment. Thus, in Europe, where the chemical entity is a pharmaceutical, claims are set out in the form of a medical use claim which is written in the format:

‘A compound for use in treating disease Y.’

Other claim categories

Claims can also be directed to the form in which the chemical entity is provided commercially, for example a pharmaceutical composition comprising a compound of formula (I) or a coating comprising a compound of formula (I). Claims can further be directed to a method of using the final form of a product comprising the compound, for example, ‘a process for protecting the surface of an object comprising applying a coating comprising a compound of formula (I)’.

Dependent claims

As with the general case, the role of dependent claims in a chemical patent application is to provide a set of more specific definitions of the compounds or class of compounds claimed,

ultimately leading to a recitation of examples of the specific compounds as discussed above in relation to the specific description. Where the chemical invention relates to a new or improved process for manufacturing a new or known class of compounds, the dependent claims may contain more specific definitions of, for example, the concentrations of reagents or the temperature used in the process. The role of the dependent claims, as discussed elsewhere in this book, may be to provide refinements of the definitions of the claimed compounds such that potential amendment is available should the compounds have been claimed too broadly. In each case, you should be able to point to an advantage associated with each of the dependent claims, ideally one which is additional to that set out in claim 1.

Biotech inventions

Biotechnology is now a well-established sector and continues to see rapid growth in terms of the number of European patent applications filed with the EPO. In 2020, European patent applications in the field of biotechnology increased by over 6% compared with 2019, the biggest increase for any major technology area after pharmaceuticals. However, the grant rate of patents in biotechnology is less than 30%, well below the average across all technologies. Of course there are many reasons why a patent application may not make it to grant, but applicants will want to ensure that bad drafting is not one of them! Many inventions in this area have been made possible by the development of pioneering techniques in molecular biology, one of the most prominent in recent years being CRISPR-Cas9 gene editing (and related systems) for which the 2020 Nobel Prize in Chemistry was awarded. While therapeutic applications of

biotechnology dominate filings in this field, significant numbers of biotechnology patents relate to industrial processes and agriculture. Regardless of the application of the technology, central to any Biotech company’s strategy will be its patent portfolio, which in many cases forms the basis for ongoing funding during a company’s early days.

The introduction

Many of the points made in previous sections discussing other technical areas apply equally here. The introduction sets the scene for the invention, generally by reference to what has gone before. In the EPO, inventive step is considered from the point of view of the ‘problem/solution’ approach. The introduction provides an opportunity to set out a ‘problem’, which the invention solves, by reference to the prior art. It is perfectly possible to modify the problem during prosecution, so you are not committed to the problem set out in the introduction. However, equally, it is not essential to set out the introduction in that way. It is just as valid to discuss the art in general terms and then put forward the invention as solving some need arising out of the art.

The specific description

The requirements for the specific description are essentially the same in this field as for other technical disciplines. In general, inventions in the biotech field should provide a full description of, for example, any DNA and/or protein sequences. If the application discloses nucleotide and/or amino acid sequences, a sequence listing will need to be prepared according to the appropriate WIPO standard (ST.26 for applications with a filing date of 1 January 2022 or later). This

is to allow the sequence information to be searchable by the Patent Offices and by the public. The sequence listing can be included as part of the description on filing, which means it forms part of the original disclosure but doesn’t count for the purposes of page fees (provided it complies with the WIPO standard), or it can be filed subsequently for search purposes only.

It would also be usual to include a discussion of variants and/or ‘homologues’. A particular protein can be encoded by a number of possible DNA sequences. Once the ‘natural’ sequence has been determined, other possible coding sequences can be described. A common claim drafting strategy is to include narrow claims to protect a lead molecule as well as broader claims aiming to stop competitors entering the same space, or at least to generate prior art against copycat products. For example, if an invention is a new antibody, this may initially be claimed as an ‘antigen binding molecule’, with fall back positions defining the molecule as an antibody or a number of antibody-like molecules or antigen binding antibody fragments. Humanised versions of the antibody may also be claimed. These claims protecting foreseeable variants should be paired with claims variously defining the antibody by the sequence of its various regions, such as ‘complementarity determining regions’ (‘CDRs’), framework regions, variable regions and constant regions, including ‘picture claims’ to the full sequence of the antibody (especially if the antibody is already humanised). However, the future interests of the applicant should also be considered; where do their future R&D interests lie? It may be advisable to omit speculation about future developments in

some areas if upcoming work could lead to stronger patent applications.

Patentability may vary according to jurisdiction. The US doctrine of ‘structural non-obviousness’ makes allowance easier when a novel sequence has not been shown to exhibit a technical effect. However, the EPO has no such doctrine; alternative sequences without a technical effect are typically assumed to be obvious by EPO examiners. When drafting with the more rigorous EPO standard in mind it is therefore advantageous to focus attention on any technical effects associated with the novel features of the invention. In order to do so, it may be helpful to critically review the experimental examples with the inventors to identify details of any advantages of the claimed invention, any technical hurdles they overcame when making the invention and whether any non-claimed alternatives were discarded (and why). This exercise can help to ‘tell the story of the invention’ in the application to maximise chances of success at the EPO.

It may be desirable to provide some discussion/description of expression systems. The specific examples provided by the inventor(s) will perhaps provide the preferred embodiments, but it is important to review other promoters, regulatory sequences and host cell systems that could be used. This is especially important to consider if the commercial manufacture of the molecule of the invention will differ from the experimental setup initially used by the inventors. For therapeutic molecules, it may also be desirable to include details of likely pharmaceutical formulations, routes of administration and dosage regimes.

For any Biotech invention, as for any invention in the chemical field, it is necessary

to ensure that the description meets the enablement (sufficiency) requirements and provides as full a description as possible, even for those techniques that are regarded as ‘standard’. Enablement must be provided across the whole scope of the claims and therefore it should be considered whether the claims cover ranges that are relevant for sufficiency purposes. In this regard, the UK Supreme Court has stated that:

‘the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made’.

[Regeneron Pharmaceuticals v Kymab [2020] UKSC 27]

So, for example, in the context of a claim relating to a transgenic mouse that produces hybrid antibodies, the range of lengths of the mouse’s tail covered by the claim is an irrelevant range and it does not matter if the specification does not disclose how to obtain all tail lengths across the range. If a relevant range is covered by the claims, appropriate fall backs should be built into the description and perhaps in the dependent claims in case it is shown subsequently it was not possible to carry out the invention in part of the claimed range at the priority date.

It is advisable to include in the application data that supports the proposed utility of the invention and illustrates any surprising technical effects, for example, in comparison to the prior art. It is established EPO case law that the technical problem underlying the invention must be at least plausibly solved at the filing date. Therefore, if the application must be filed before data (or all

desired data) are available, bear in mind the need to disclose a technical concept that makes the alleged technical effect plausible e.g. based on what is known about the molecule of interest or related molecules. In this context, the EPO Boards of Appeal have acknowledged plausibility based on ‘a convincing theoretical explanation’. For those inventions where the utility is therapeutic, this data can take the form of in vitro results, provided that the results make the claimed therapeutic treatment plausible. It is not normally necessary to include in vivo data at the time of filing. If the data show an unexpected technical effect for certain variants of a protein, for example, a baseediting fusion protein, ensure there is basis to specify in the claims the mutations or groups of mutations responsible for the effect. It is important to include percentage identity language and disclose this in combination with specific sequences and mutations from the examples to minimise the risk of added matter objections should the claims need to be limited towards the examples in prosecution.

The claims

As with chemical inventions, patents relating to Biotech inventions generally contain a number of claim categories. Again cost considerations are relevant. However, as with all patents, one must also consider who a potential infringer of the patent might be and try to ensure that there is at least one claim that will be potentially enforceable against each form of infringer. Claims in multiple categories do not inevitably lead to disunity problems in Europe, but they will in the US. Thus, claims to a protein per se will be regarded as a different ‘invention’ to any claims relating to methods for treating a

patient by administering the protein. Again, this will ultimately increase costs in the US, but it is an inevitable result of the US approach to unity of invention.

So, for biotech inventions, one typically finds the following types of claims:

Protein per se claims

The protein will typically be described by reference to its amino acid sequence. Where an applicant does not want to be bound to a specific sequence, a claim may refer to sequences having a certain percentage sequence identity to a particular sequence. Some parts of proteins may be more critical for function than others; accordingly, the EPO may be more tolerant of sequence identity language in some protein regions than others. Much EPO case law on protein claims comes from the field of antibody therapeutics. Classical antibody molecules comprise short CDRs which define the target sequence recognised by the antibody. The EPO typically expects at least CDR sequences to be claimed without sequence identity language, but other parts of the antibody such as the ‘constant’ regions can often remain completely undefined in the broadest claims. Where sequence identity language is used it is often necessary to include a functional limitation. Functional limitations in the case of antibodies can include for example: the binding affinity, neutralising properties, induction of apoptosis, internalisation of receptors and inhibition or activation of receptors..

Nucleic acid claims

Claims directed to sequences that encode a particular protein can be included. Particular sequences can also be claimed with

flexibility usually provided using percentage sequence identity language. Claims to cover equivalents/ homologues can also recite complementary sequences as well as sequences that will hybridise under particular conditions to the disclosed sequence. In contrast to the US, in Europe nucleic acids isolated from their natural environment or produced by means of a technical process are patentable, even if they previously occurred in nature.

Vector and cell claims

These claims may recite vectors that comprise the claimed nucleic acid and host cells transformed with such vectors. These are claims to the basic tools for achieving expression of particular proteins. They will be relevant for inventions directed to such proteins, including particular antibodies, as well as to inventions that relate to producing transgenic plants and animals. In the latter case such claims relate to the tools for actually producing the particular modified plant or animals.

Cells and vectors may also be claimed when the invention relates to cell or gene therapy. Such cells may be genetically modified, for example chimeric antigen receptor T cells (CAR-T cells) are T cells that have been genetically re-programmed in a laboratory to produce an artificial T cell receptor allowing them to specifically find and destroy cancer cells.

A specific feature of biotech patent drafting is the possibility to refer to a deposit of biological material under the Budapest Treaty. Such deposits can allow an applicant to ensure sufficiency of disclosure for claims to biological material that cannot otherwise be adequately described in the application.

Hybridoma cells are an example of a type of biological material which may frequently have been deposited under the Budapest Treaty. However, as antibody production methods develop towards fully human antibodies, the deposition of hybridoma cells is perhaps now less common.

Plants and animals

Plants and animals obtained exclusively by means of an essentially biological process cannot be protected under the EPC if the effective date is after 1 July 2017. However, claims to plants and animals which can only be generated by technical intervention, e.g. by introducing a transgene, can be included provided that the technical feasibility is not confined to a particular plant or animal variety. These claims will recite the plant or animal per se and may, for example, relate to organisms that provide models for disease or produce a particular substance, e.g. human antibodies.

Non-medical methods uses

There are a number of possibilities here. Common examples are methods of screening proteins for desired characteristics e.g. binding to particular epitopes, or identifying nuclease cut sites. Be aware that the EPO will object to claims that combine the use of an entity to achieve a technical effect and a production process, for example a screening step and a further production step.

Another type of method claim that is becoming increasingly common incorporates elements of biotechnology and computerimplemented inventions, for example, a method that uses a computational model to select guide RNA for use in CRISPR editing systems. The EPO may object that

such claims are directed to mental acts or mathematical methods as such, which are excluded from patentability, unless the claims specify technical means. Such objections can be avoided by specifying that the method is computer implemented.

Method of treatment claims/second medical use claims

For the US, claims directed to methods of treatment that comprise administration of pharmaceutical compositions comprising, for example, protein (e.g., TCRs, antibodies), nucleic acid (e.g., CRISPR components, DNA/RNA vaccines, RNAi) or a population of cells (e.g., T cells), to a subject in need of treatment, should be included. Such methods are excluded from patentability in Europe, so medical use claims (see the section on chemical patents) should be included for that jurisdiction. Where the product is already known for the treatment of a disease, an invention may reside in the treatment of a particular patient group to be treated. In this case the patient group may be defined, for example, by the expression of a particular biomarker. Dosage regimens and routes of administration can also be used to establish novelty although demonstrating an inventive step based on these distinctions from the prior art may be challenging.

As already mentioned, many biotech inventions include claims that include functional language in an attempt to ‘capture’ subject matter beyond the specific examples. However, claims defined purely in terms of function are likely to attract objection from the EPO that the applicant is attempting to claim the underlying problem (a ‘result to be achieved’ clarity objection) and the EPO will often insist on some structural details

in the claim, e.g. sequence information. It is therefore critical to include basis for structural limitations that permit a reasonable degree of variation.

DRAFTING FOR THE QUALIFYING EXAMINATION

By Gwilym Roberts and Hannah Auger

As with all these specialist areas, the basic rule is the same – general good drafting practices will get you most of the way. In the case of the qualifying examinations, in some ways the problem is much less although it may not seem so when you are facing them. You have an inventor who has sent you all the information they can and will not be following up at the last minute with more. The information you have been provided with is usually helpful and, in particular, tends to flag up where the invention lies and what the main issues are and if you get the answer wrong then you only fail the exam rather than getting sued.

Once again, a detailed discussion is beyond the scope of this book, but a few points are worth mentioning and many of those are more directed to exam technique generally than to substantive issues.

Pity the poor examiner

Firstly, remember that the examinations are marked by examiners who are not only human beings, but often are actually patent attorneys or examiners. Apart from the obvious requirement of making your answer clear and easy to read, you must bear in mind that the examiner is probably marking hundreds of scripts and is delighted when they find a candidate paper that is a clear pass because it gives the answer they are expecting to see. In other words, the examiners are not looking for surprises, or detailed digressions on abstruse points, they are looking to make sure that you spotted the invention that was (usually) flagged to you in the paper, and have claimed it well. This means that you do not have to be too clever in your exam response but should merely feedback what the paper gave you – anything else may well irritate the examiner which you do not want to do.

Accept the technology

There seems to be a temptation to second guess the technology underlying the invention in examination papers and spend time finding holes in it or demonstrating a superior knowledge of it. Once again the examiners do not want to have to think too hard when marking papers and may be upset by new angles on technology that were simply not anticipated when writing the paper. That is not to say that you should skate over the technology underlying the invention. But you should try and gauge the level to which you were supposed to interpret it which may well be signaled by clues in the examination paper, such as the client querying operation of prior art and so forth.

Work out where the marks lie

Usually there is a fairly simple marking schedule where a large portion of the marks is awarded for the independent claim and the remaining marks distributed, for example, between an introduction to a patent and dependent claims. If you get the independent claim wrong you are therefore likely to fail. In particular, a non-novel independent claim taking into account prior art disclosed within the examination paper itself is a likely fail in this author’s opinion. However, in borderline cases, for example where there is a minor unnecessary limitation in the claim, the other marks can make the difference between passing and failing. The approach described elsewhere in this book to drafting the dependent claims should be followed as assiduously as the approach suggested for drafting independent claims. Particular attention should therefore be paid in the examination paper to clues about where dependent claims may lie. These

may, for example, be an identification of additional advantages or of areas of particular commercial importance.

A level playing field

One of the problems that people face when drafting claims for qualifying examination purposes are that they feel that a different approach is required to their real-life practice. It is certainly the case that they are preparing the patent claims under different circumstances and to a different audience, but this should be ignored – if you start trying to draft patent claims differently in exams than you would at your desk then you are likely to start moving away from first principles and a mistake will creep in. The examiners in the qualifying examinations, just like your client, the Patent Offices, infringers, your boss and everyone else, are looking out for a claim that is novel, that supports a viable inventive step argument and is commercially relevant. As ever, it must strike the balance.

Conclusion

In all of these specialist areas, basic good drafting skills are essential and any differences are principally cosmetic even where they seem to be quite radical. Whether you are drafting for examinations, for specialist technologies or for different jurisdictions, in the end a thorough, sufficient patent whose claims strike the balance between legal and commercial requirements will always be required.

15. CONCLUSION

We have identified that a patent is a complex legal document but that nonetheless you only need to understand a few basic principles in order to be able to draft one. Confusingly, despite the apparent simplicity, we have then written several tens of thousands of words on how to go through the drafting process. Drafting a patent gets easier and it gets quicker, but still remains an intellectual challenge and the result is typically something you can – and should be able to – take pride in.

With most patents, you may have the pleasure of seeing them granted but may feel that you never find out how ‘good’ they are because few of them tend to be tested in court. Do not forget that this may be because they were so ‘good’ that the other side simply did not bother trying to cross them. In any case, you should not spend too much time regretting matters if your patents are never litigated because it is going to be a painful process having them attacked by people. Nonetheless, you should draft every patent as if it may end up in court. A better test of whether your patents are working is whether your inventor/client seems happy and keeps coming back to you. This is a clear indication that they are comfortable with your handling

of the technology, that you understand their business and that whoever holds the purse strings – and hence the power – also feels that you are the right person for the job.

And so, we come to the end. Although a patent draft will always be a complex and challenging document, it should now be clear that it is built on a few simple and elegant foundations. With an understanding of those foundations, you, the patent attorney, can approach the task of drafting with the confidence that a thorough and useful patent will be produced. With experience, your skills will tend to be honed as you develop your own practices and approaches. You may find yourself questioning some of the things you have learned in this book, but this should not concern you. The author has developed his own practice, and it works for him, but no two patent attorneys are likely to approach the task of drafting in the same way – or, indeed, understand it in quite the same way. But this is a starting point and, with luck, one that will stand you in good stead.

BIOGRAPHIES

Gwilym Roberts

(Kilburn & Strode)

Arguably the highest profile patent attorney in Europe, Gwilym Roberts advises clients on all aspects of the patent process including IP audit and capture, IP filing strategies and patent portfolio management techniques. He acts for a range of clients including individuals, SMEs, Universities, and spin outs through to multi-nationals and handles a broad and diverse range of cases before the UK Patent Office, EPO and WIPO.

As well as being a Visiting Professor at Queen Mary University of London, Gwilym is the co-host of the podcast Two IPs In A Pod alongside CIPA’s Lee Davies. They chat with entrepreneurs, creatives,

patent attorneys and the occasional judge about how patents, trade marks, designs and copyright can improve our lives and solve problems for humanity. You can listen at www.cipa.org.uk/podcasts or on most podcast platforms. He has also recently spoken on a podcast by the European Patent Office called Talk Innovation.

He has significant experience in due diligence and freedom to operate exercises in a variety of technical areas. In addition to handling the drafting and prosecution of patent applications, Jamie spends much of his time on opposition and appeal matters and has been involved in some of the most commercially important and legally complex oppositions in the life sciences field at the European Patent Office (EPO).

Jamie Atkins

(Kilburn & Strode)

Jamie is a partner in Kilburn & Strode’s Life Sciences and Chemistry team. His practice focuses on biopharmaceuticals, diagnostics and synthetic biology, with particular expertise in antibody and T cell therapies and CRISPR gene editing.

Outside of his day-today client work, Jamie had the privilege of presenting to a WHO Expert Advisory Committee on patents and human genome editing as part of the Committee’s consultation process, which led to the publication of the first global recommendations on governance mechanisms for human genome editing. He also provides regular lectures on intellectual property for University College London and King’s College London.

Hannah Auger is a UK and European Patent Attorney. Her day-to-day work centres on the high-tech sector, particularly in the fields of software, optics and photonics and medical devices. Her physics degree gives her a broad base from which to specialise in various technical fields based on the needs of her clients.

Alongside her physics degree, Hannah has a good understanding of industrial R&D environments, particularly in the healthcare industry, having worked on medical technological solutions for a major multinational healthcare company. She has also worked closely alongside start-up companies. Here she is relied upon to advise on mitigating IP-related risks when bringing a new product to market, as well as to protect market position by managing invention capture and patent filings. She manages

multijurisdictional patent families and works with large patent portfolios. While being a prosecution and drafting expert, Hannah also has significant experience in infringement risk and validity assessments for informing high-stakes commercial decisions, and in contentious work before the Opposition Division of the European Patent Office.

European patents both before the opposition divisions and the Boards of Appeal of the EPO.

Elizabeth works in all areas of chemistry, including pharmaceutical chemistry and high performance chemicals. She has over 20 years experience in obtaining protection for commercially important products and chemical processes in patent offices worldwide, with a particular focus on the EPO. Elizabeth’s particular strength is in post-grant proceedings, and she has extensive experience in both defending and opposing

Daniel’s technical expertise spans a variety of hightech fields, including telecommunications, software, electronics, signal processing, and audio and acoustic engineering. This expertise is underpinned by his academic experience, which includes a master’s degree in Electrical & Electronic Engineering and a PhD in Acoustic Signal Processing, both from Imperial College London, and working at the Fraunhofer Institute for Integrated Circuits in Germany, known as the ‘birthplace of MP3’. His research culminated in the publication of several articles in scientific journals and conference proceedings; in addition, he authored one of the leading books on spherical microphone array processing.

Hannah Auger (Venner Shipley)

Intellectual Property Law from

Elizabeth Crooks (Kilburn & Strode)

Daniel Jarrett (Kilburn & Strode)

His IP work primarily involves drafting and prosecuting patent applications, defending and attacking European patents in opposition proceedings, and preparing design applications. Often acting effectively as in-house counsel, he has particular experience of working closely with seed and series A stage companies to build strategically-important patent portfolios to support their future growth and fundraising. He is equally at ease prosecuting substantial patent portfolios in a consistent, streamlined manner.

With a keen interest in developments in the law, Daniel took an active role in shaping the 2022 improvements to the EPO’s ‘Guidelines for Examination’ on amendments required to bring the description of a patent application into conformity with the claims.

Daniel is a member of the Patents Commission of UNION-IP, an association of European intellectual property practitioners, and regularly lectures to undergraduate students on the basics of intellectual property.

Hirohito Katsunuma (Katsunuma International)

Hirohito Katsunuma is the President of Katsunuma International Patent Office in Tokyo. He is a Patent Attorney and a litigator. His specialist areas include: computer software; nuclear power; petrochemical engineering; semiconductors; manufacturing equipment and other general machinery.

intellectual property in Korea, advising on prosecution, litigation as well as paralegal services. The firm offer advice on Korean and international applications, registration, trial and litigation of patents, utility models, designs, trade mark, copyrights and other industrial property rights. His firm’s specialisms also include IP consulting, IP asset transfer/licensing, overseas IP litigation support, patent research and review, technical translations, and standard essential patents.

Chulhee Lee (Veritas International)

Chulhee Lee is the President and Senior Partner at Veritas International Patent & Law Office in Seoul. His firm provides a one-stop service for clients looking to protect their

Michael is a European and UK patent attorney with a degree in Biochemistry and a PhD in Neuroscience. He spent around nine years at top-tier European IP firm Kilburn & Strode, including a secondment to antibody therapeutics company Kymab. He is now Head of IP at Mogrify who are developing in vivo cell reprogramming therapies.

Michael Newton (Mogrify)

Chris Palermo has more than 30 years of experience advising clients on patent risk analysis, patent drafting and portfolio development, patent negotiation with the USPTO and worldwide, expert opinions and testimony, trade mark clearance and negotiation, international trade mark disputes and domain name arbitrations, licensing, privacy, and technology development agreements. Mr. Palermo has experience covering technologies related to artificial intelligence and machine learning, e-procurement, security, distributed computer systems, networking, robotics, telecommunications, objectoriented software, and internet applications.

Examples of specific patent drafting areas include card payment protocols, smart agriculture, neural machine translation, grammatical error correction, e-mail security, recommendation

systems, speech recognition, cryptography techniques, and digital imaging. He has extensive experience drafting claims in software cases to reduce subject matter eligibility rejections under 35 U.S.C. §101, and in negotiating resolution with examiners.

He closely tracks developments in the European Patent Office with a focus on multilateral success in patent matters.

He has served as a testifying witness on patent noninfringement and invalidity matters for Fortune 1000 companies and has an active opinion, FTO and expert practice. He manages several large international trade mark portfolios, including initiating and defending oppositions and other contested matters.

Mr. Palermo started his career as a patent litigator and served two years at NeXT Software, Inc. as the associate general counsel with responsibility for IP management.

He is a member of the Programming Subcommittee, Law Firm Committee, of the International Trademark Association. He serves as pro bono Associate General Counsel for IP matters to National Model Railroad Association, Inc.

Sarah Wang is a Patent Attorney at Advance China IP Law Office (ACIP) in Beijing and has worked in intellectual property for over 15 years. She joined the TsinghuaFoxconn Nano Research Center in 2007, serving as a patent engineer specialising in technical investigation, patent investigation, patent mining, patent portfolio management, and patent drafting and prosecution in China, the US, Taiwan, and the EU. She started working as a patent attorney in 2013 and joined ACIP in 2016. The clients she has worked with include Tsinghua University, the Chinese Academy of Sciences Institute of Physics, and the State Grid Corporation of China. Sarah has extensive experience in mechanics, material and lithium-ion batteries. She is well versed in the patent law and regulations of P.R.China, the US, Japan, Taiwan, and the EU.

Christopher J. Palermo (Baker Botts)

Sarah Wang (ACIPA Law)

Drafting patent applications is the foundation skill of the patent attorney and while every practitioner is critiqued and examined on the practice, there remains remarkably little positive written guidance on the topic. This book takes a highly practical approach to the art of creating a patent, starting by considering the various entities involved or affected, establishing the considerations relevant to each and then weighting and condensing the factors into a manageable set. These factors are then applied to a range of practical examples based on simple technology, guiding the attorney through the process of writing the various component parts of the patent.

Focusing on the ‘practical’ aspect, two key areas addressed are the detailed description requirements, and the mysterious art of writing the claims. In both cases guidance is provided in the form of suggested structures and processes – again strangely lacking in the literature. The aim of the book is not to be an exam-passing tool, nor single-handedly to create a perfect drafter. It is designed to shed some light on this strange world for the external observer, and to accelerate the training and learning process for would-be attorneys.

Every attorney will, in time, develop their own style and approach, but the lessons here may help them become the finished article more quickly and with the benefit of a broad view of why, and how, we draft.

‘A welcome and serious effort to demystify the exercise of drafting a patent and to offer concrete assistance to those with the job of describing in words something which may never have been described in words before, a wholly new and (hopefully) non-obvious invention.’

The Rt Hon Sir Colin Birss