Redacción de Patentes

• Introduction. When the applicant seeks patent protection in a single country, the National procedure is the one to be used. However this course is focused in seeking 'genuine' (valid & enforceable) patent protection in several countries, including those with the largest GDPs (US, CN, JP, DE, GB, FR, IT, CA, KR, AU, ES, NL, CH...); in this situation, the initial (priority and PCT) patent applications should be drafted in plain US-English and on common denominators, so they are appropriate for the PCT and the IP5 Offices, directly or with minimal amendments of description and claims (but not of drawings). Approach to draft for these 'six patent systems'. Dealing with the 'National first filing' (military interest).

• Preliminary considerations. Recommendations related to language use for clarity and conciseness: keep it short & simple (KISS); one element - one word/phrase (no synonyms) - one reference number; no ambiguities about subjects of verbs and antecedents of relative pronouns; proper use of acronyms; use of present and past tenses only; full sentences with few subordinate ones, and in their natural order. Proper use of: a, the, about, or, and/or, is, to. "At least one" vs. "one or more". No claims starting with "In". No "preferably/preferred". Use of labels. Use of the "able" suffix. Do we have any invention worth being patented? (example: "drinks can with two compartiments and two (magic) valves"). Drafting as a cooperative task between a patent expert and a single inventor-of-contact. Thinking of all potential readers. Brainstorming about what is worth being patented vs. what can be exploited as know-how. What should be left out of the application.

• The patent claim concept. The (undefined) concepts of invention and technology. A claim as a defining sentence of a set of technical subject matter for which protection is sought. Claim infringement: scope and questioned embodiment. All Elements Rule. Element-by-element comparison. Kinds of elements (or limitations or technical features): structural, functional, relational, intentional, parametric, and activity steps. Drafting a claim as if it would be interpreted literally, and as if any attempt to imitate its subject matter would infringe it directly.

• Claim formats. Standard claim format (open-ended; AND claim; combination claim): preamble + transitional phrase (comprising) + body. Punctuation, references, and brackets. Selection and interpretation of the claim preamble. Introducing elements with a/an, and referring back with the (preferred to old-fashioned said). Two-part claim format: characterized by/in that in EPC; wherein the improvement comprises in US. Cases where the two-part format is not appropriate. Exercises: Draft one independent claim in standard format (the "lollipop invention"). Idem in two-part format (the "invention of an improved lollipop"). Claims with Markush groups. Markush formulas. Markush claim format (closed-ended; OR claim). Exercise: draft different dependency sets to protect substituted benzenes. Claims with elements defined as means-plus-function. Other ways of achieving functional language. Tips & tricks.

• Basic types of claims. Rights to prevent the direct exploitation of the invention. Entity/product claims. Activity/process/method claims. Example: Apple vs. Samsung lawsuit. All elements in a claim should have a consistent 'point of view' (all steps must be performed by the same party). Example: server computer vs. client computer in a CII. Claims of process/method to obtain. Example: lansoprazole. US statutory classes of claims. Types/classes/kinds/categories of independent claims to be used, depending on the case.

• Special types of claims. Purpose-limited claims (with for). Example: "Bag container for collecting dog excrement". Product-by-process claims. Example: EP patent on a "homogeneous and stable cereal suspension", and related infringement lawsuits in ES. Claims of products defined by parameters. Example: Form 2 of ranitidine hydrochloride. Non-medical use claims in the EPO. Process/method of using claims in US and other countries. Claims on specific (second) medical uses: method of treatment claims in US, Swiss-type claims, and purpose-limited-product claims in the EPC. Example: "Use of AZT against AIDS". Claims on general (first) medical use.

• Dependency between different patents, concerning infringement. Potential infringement of a previous dominant patent by exploitation of a later dependent patent. Infringement reciprocity. Examples: ondansetron; "Satisfyer" vs. "Womanizer". Sumatriptan as an example of selection invention.

• Dependency between claims of the same patent, concerning scope. A claim written in dependent form includes all the elements (including the preamble) of the claim to which it refers (base claim), by using a dependency reference at the beginning. Two basic ways of writing a dependent claim: further comprising vs. wherein. Only the preamble's noun of the base claim should be repeated in dependent claims. Claims written in singular dependent form. Claim trees. False dependency: preparation process of simvastatin. Claims written in multiple dependent form. Recommended drafting of a PCT considering the different practices of EP, CN, JP, KR and US concerning multidependent claims hanging from multidependent claims. Exercises: identify all actual claims of two claim sets, and draw the corresponding claim trees. Analysis of claim dependency as an aid for the assessment of validity and infringement. A quiz (with a prize!) on claim dependency. Multiple dependencies in claim sets to prepare for claim amendments that do not add subject matter (e.g. avoiding the risk of undisclosed selection from two lists in the EPO), and that do not extend the conferred protection. Initial brainstorming and iterative drafting of claims. Schematic example of drafting a dependency group of claims: drafting first in the EPO style, and later adapting to the USPTO practice by the same drafter.

• Simplified drafting by using definition references to claims of different preambles. Singular and multiple definition references. Examples of EP and US practice. Exercise: identify all actual claims in the claim set of the first patent on sildenafil, and draw the claim trees. Montsanto's reissue patent on transgenic soybean.

• Basic principles for independent claims: (i) Identifying essential elements. Two phases: forming a mental picture of what is to be claimed, and putting that mental picture into words that clearly say what they mean. Limitations on the number of independent claims. From drawings to words in electromechanical claims. Do not claim what you have; claim what the prior art does not have. Claim the invention, not the product. Novelty lies in the claim; inventive step lies in the argument. Claim the invention on the shelf (kits, components and distributed inventions).

• Basic principles for independent claims: (ii) Approach to draft (illustrated by the hypothetical invention of the "anti-drip tray"): (1) Spot the invention. (2) Identify the novel element. (3) Select the claim type. (4) Choose the preamble. (5) Do a validity check: Is it novel? Does the inventive step argument work? Is the claim a 'mere desideratum'? (6) Do an infringement check: Does the claim have a too limiting word or element? Does the claim cover what is made or sold? Is the claim self-contained?

• Basic principles for dependent claims: (i) From independent claims downward. Ordering and numbering. Use of "clauses" as amending tool. What goes into dependent claims. How are dependent claims structured: chain or line, pyramid, branched selections, and combination thereof. Adding elements successively in decreasing order of importance. Example: claim set to protect the "anti-drip tray" invention.

• Basic principles for dependent claims: (ii) From prototypes upward. Example: "the tailor's scissors". Removing non-essential elements, one at a time. Using broader terms. Combining elements. Example: US and EP patents on "a computerized combination lock".

• Exercises: step-by-step drafting of a claim set in mechanics ("device for nesting cavity-nester birds"), and in pharmaceutical chemistry ("combination of two API against psoriasis"). Brainstorming phase: select claim type ('aspect of the invention'); choose preamble at an appropriate level; identify essential elements and elements of closest prior art; and order non-essential elements by importance, thinking of preferences and alternatives. Draft novel & inventive independent claims with essential elements. Draft dependent claims for particular embodiments, having in mind commercial issues, protection/enforcement, and cost.

• Physical requirements of the application. Numbering of sheets. Numbering of lines or paragraphs. Fonts (Arial 11 as the recommended one). Margins (avoiding the typical misunderstanding between margins in word-processors and margins in patent applications). Preparing a CAF-compatible application template, and practical issues on 'filling' it.

• Drawings and the Brief Description of Drawings section. Margins. Numbering. Line thickness. Lead lines, arrows, and views. Reference characters (preferably Arabic numerals). Fonts. Words (preferably absent). Using FIG. Special requirements of drawings. The possible 'nightmare' of having to modify bad drawings.

• Structure and contents of a patent application vs. a scientific full paper. Example: "Electrosurgical instrument for tissue coagulation and cut". Common Application Format (CAF) and preferred section headings. Exercise: Order and contents of the different sections of a patent document ("Alimentary pasta of short cooking time"). Duty of candor and good faith in US. Information disclosure statements (IDS). Lack of support vs. insufficient disclosure (written description and enablement in the US). As it is impossible to know all the relevant prior art at the time of drafting, try to keep the (undefined) invention as 'flexible' as possible, being careful with statements of obligation.

• Drafting of particular embodiments (examples). Working with inventors. Ownership vs. inventorship. Inventor identification. Interviewing inventors. Starting materials for drafting. Providing support over the whole claimed scope. Best mode. 'Fallback positions' to avoid future selection inventions? Terminology. Physical values & units. Proper names & trademarks. The 'blind man' test. Drafting specific embodiments in electromechanics: structure, operation, fabrication, advantages, and variants.

• The Title and the Technical Field & Background Art sections. Avoid a 'too descriptive' title. It may be appropriate that the title includes some words from the preamble(s) of independent claim(s). The Technical Field section as a general introduction paragraph, broader than the broadest claims. Do not include unknown problems or unknown element combinations in the Background Art section. It may be appropriate to present a known technical problem, but without pointing towards any solution. Educating potential readers and preparing inventive step arguments (teaching-away prior art, prior-art limitations overcome by the invention, etc.). Do not mention 'objects of the invention' or statements of desired improvement over the prior art.

• Summary of Invention and Abstract. Alternative solutions vs. selections. Providing support to all the claims by copying them into the description. Presenting every independent claim as an aspect of the invention. Statements of advantage. Importance of drafting a good Abstract, indicating the technical field, allowing a clear understanding of the technical problem and the gist of its solution, and stating the principal use(s). US abstracts should not be narrower than the broadest claim.

• Final example and conclusion. Example of a real PCT application on "a glycoprotein for the protection of liposomes", with all claims patentable according to its International Preliminary Examination. Acknowledgments. Recognition and remuneration that patent drafters should 'claim'.

Nota: aunque el contenido de este módulo está redactado en inglés y el material que se proporcionará también estará mayoritariamente en inglés, la clase se dará en castellano.