Patent4U Limited
P.O. Box 2162
87 Jabotinski St.
Petah Tikva 49120
Israel
ph: +972-3-9226767
fax: +972-3-9192287
info
Claims-Centric
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Function: New structure of patent application, based on the claims
Use: Drafting patent application having New structure
Benefits: Claims give stronger protection, as they are better based on the
description. Enforces an improved description in the patent application. Helps improve patent applications
and patents; Presents clear and persuasive arguments to examiner or Court.
Patentics: claims-centric structure
Details: The Figure illustrates a claims-centric structure of a patent application.
The claims are the most important part of the application and of the patent if granted.
For the applicant - if at least one claim is allowed, then he has a patent; if none - then the application is refused.
For the examiner - the examination starts with the claim - what the applicant is asking for? The various criteria for patentability are then applied, where support for the claim is looked upon in the rest of the application.
At present, the examiner has to search all the application to find the various info which may support the claim:
- is it non-excluded matter? how so?
- are the terms in the claim to be read according to their usual meaning, or
is another, different meaning indicated in the description?
- is there support in the description and drawings for what is claimed?
Is there enough description for a person skilled in the art to do it?
- what is the difference between the disclosed apparatus or method, and the prior art? Is the Novelty criterion satisfied?
- is the claimed invention non-obvious to a person skilled in the art?
Take into account that that person is not dumb, but can solve simple problems.
Else, are there Secondary Considerations being presented to solve this issue?
We advise applicants to provide explicit answers to these questions, thus to cooperate with the examiner.
This increases the chances of getting a patent.
Since the claims are the focal point during examination, a new claims structure was devised which includes all the above information.
To keep the claim concise, in a preferred embodiment the info is supplied as links (pointers) to the disclosure - to the locations there, in the text, software listings and drawings, where the relevant info is presented.
Such a claims structure is presented in the Figure in the exemplary claim there, which includes: - pointers to locations in the disclosure with indication of what non-excluded matter is included in the invention; - pointers to locations with the various aspects of disclosing the invention - its components and their interactions, how the apparatus operates or what are the stages of the method, etc. - pointers to locations where the novelty of the invention is indicated: differences in the structure and operation of the invention with respect to prior art. - pointers to locations where the non-obviousness of the invention is presented, if necessary - the claim itself in a textual form, as found in prior art patents.
Other claims may have a similar structure. In a preferred embodiment, independent claims have a more detailed structure, whereas dependent claims may only include part of the above elements, or as the need be.
The innovative method illustrated above includes: a. rather than letting the examiner to guess and search the application looking for clues, the claim itself includes the info required for its evaluation with respect to the accepted patentability criteria; b. the info is presented in a concise form, preferably as pointers to the relevant text in the disclosure.
Patentability criteria: The claims should comply with 35 U.S.C. 112 requirements: (A) that the claim(s) set forth the subject matter applicants regard as the invention, and (B) that the claim(s) particularly point out and distinctly claim the invention.
Patentics(SM) methods may be advantagously used to draft claims that better define the invention with the required precision and particularity. The challenge is to provide a persuasive presentation during examination, wherein the claims definiteness is analyzed, not in a vacuum, but in light of the teachings of the disclosure as it would be interpreted by one of ordinary skill in the art contemporary with the invention.
The method is successfully used at our office.
Patent4U Limited
P.O. Box 2162
87 Jabotinski St.
Petah Tikva
49120
Israel
ph: +972-3-9226767
fax: +972-3-9192287
info