PATENT DRAFTING AN APPROACH PATENT DRAFTING POSSIBLE APPROACHES

PATENT DRAFTING AN APPROACH

PATENT DRAFTING: POSSIBLE APPROACHES • • The Core The Claims Searches? The description • • 2 © Zacco 2018 Disclosure Definitions (Clarity) Problem-Solution, Advantages Sufficiency

THE CORE • The Core of any invention is usually an idea or discovery • A binding compound • A successful treatment • An effective apparatus • Start from the Core to a firstclaimswith the 3 © Zacco 2018

THE CLAIMS: FROM CORE TO MAIN CO RE 4 © Zacco 2018

THE CLAIMS: FROM CORE TO MAIN POTENTIAL GENERALIZATION CO RE 5 © Zacco 2018

THE CLAIMS: FROM CORE TO MAIN THE POSSIBLE POTENTIAL GENERALIZATION CO RE 6 © Zacco 2018

THE CLAIMS : FROM CORE TO MAIN AR T 1 THE POSSIBLE POTENTIAL GENERALIZATION CO RE 7 © Zacco 2018

THE CLAIMS: FROM CORE TO MAIN AR T 1 Inventive Step THE POSSIBLE POTENTIAL GENERALIZATION CO RE 8 © Zacco 2018 Ar t 2

THE CLAIMS. FINAL STEPS • Fill the gap between the Main Claim and the Core • Draft claims separately for each attribute used in the that Main Claim that are less general but still more general than the Core (alkyl; C 1 -8 -alkyl; C 1 -4 -alkyl; methyl) or (fastening means; screw and nut; screw and wing nut). • Draft fallback claims (2 or 3) combining the attributes you identified in the Core definition and then generalized for the Main Claims together in one claim (but in a less generalized form). • Then start closing the gap again between fallback an the Core • Claim the Core • Think of the final products and uses and claim these • Reduce to 15 claims but keep original draft • Always keep the Core in the focus and covered! 9 © Zacco 2018

THE SEARCHES • Option 1) • Draft and file without a proper Search • • • 10 • Advantange: Cheapest and fastest way • Disadvantage: You will be surprised by the art and maybe face difficulties in PCT etc. having less protection. Option 2) Draft and file after an internal search (Lit. plus Espacenet/Google Pat. ) • Advantange: Cheaper way giving you a proper picture • Disadvantage: You might still be surprised by the art found in the offices Option 3) Draft a rough claim and request search by provider or best Patent Office (CH, DK etc. ) • Advantange: A proper picture allowing a later thorough draft • Disadvantage: Slower and more costly Option 4) Combine 2) and 3) © Zacco 2018

THE DESCRIPTION • The Description needs to give the following: • The claims need to be supported by the description • The description needs to help defining the scope of protection given by the claims. • The description forms one basis for any amendments during prosecution • Thus, consider the following: • • Disclosure Definitions (Clarity) Problem-Solution, Advantages Sufficiency (At least one way of implementing claimed apparatus or method) 11 © Zacco 2018

THE DESCRIPTION: DISCLOSURE • The Description needs to fully support the claims: • Cite the claims in the description word-by-word. • Consider citing your complete set of claims (e. g. of more than 15) as Embodiments in the description 12 © Zacco 2018

THE DESCRIPTION: DEFINITIONS • The Description needs to give definitions: • After citing the claims in the description, define the features/attributes that used defining the Core and the Main Claim • If an expression is not absolutely clear, define it generally and then make a more clear definition and then finally one or more examples as fallback. This battles the standard clarity objections of the EPO • Include in the definition the general version, the intermediate version and the Core version. 13 © Zacco 2018

THE DESCRIPTION: PROBLEM-SOLUTION • The Description should help examination: • The Applicant may chose CSo. A (Closest stae of the art) in the description and the Examining Division shall take it into account (Gf. E G-VII, 5. 1, last par. ) • This clearly improves chances of overcoming inventive step objections as it also sometimes already guides examination. Thus, you can already formulate the problem. The problem may still be reformulated (Objective Problem) during prosecution/opposition etc. • Select and formulate advantages/effects (Gf. E; , G-VI, 5. 2) (better more than one) • Only an effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed (Gf. E, G-VII, 5. 2). 14 © Zacco 2018

THE DESCRIPTION: SUFFICIENCY • The Description needs to give at least one way of implementing claimed apparatus or method 15 © Zacco 2018