Workshop for the Intellectual Property Department of the Sapalo Velez Bundang & Bulilan Law Offices, Marikina East Lake View Farm (MELF) Morong, Rizal (Philippines), 13 January 2012

1. Crash course on claim drafting
for patent paralegals and aspiring patent agents
Workshop for the Intellectual Property Department of the
Sapalo Velez Bundang & Bulilan Law Offices
Caezar Angelito E. Arceo
Registered Patent Agent in the Philippines
(Non-chemical field, 2006; Chemical field, 2007)
Mentor, Patent Agent Qualifying Examinations
Marikina East Lake View Farm (MELF)
Morong, Rizal (Philippines)
13 January 2012

2. “[T]he name of the game
is the claim.”
In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed.Cir.1998)

3. Special notes
(1) My assumption: As patent paralegals for several years already (least
experienced: 4 years), you are deemed very familiar with patent documents
and office actions from the Intellectual Property Office. The preliminary part
of this presentation should only be a review, and the exercises should be
very handy to you.
(2) For technical peeps: May this serve as an invitation to take the Patent
Agent Qualifying Examinations (PAQE).
(3) Enjoy!

4. Outline
1.0 Patenting quick review 10 min
2.0 Claims 20 min
3.0 Basic prior art exercises 30 min
4.0 Actual claim drafting exercises Remaining hours

5. 1.0 Patenting quick review
Our questions:
1.1 What is a patent?
1.2 What can be patented?
1.3 What are the requirements of a patent?
1.4 What are the parts of a patent document?

6. 1.1 What is a patent?
“A Patent is a grant issued by the
government through the Intellectual
Property Office of the Philippines (IP
Philippines).”
“It is an exclusive right
granted for a product, process
or an improvement of a product
or process which is new,
inventive and useful.”
“A patent has a term of protection of twenty (20) years
providing an inventor significant commercial gain.”
Source: http://ipophil.gov.ph/
“A patent is a contract between
the government and the inventor.”
- Dr. Karl Rackette

7. 1.2 What can be patented?
EXCLUSIONS:
Any technical solution of a
(1) Discoveries, scientific theories and
problem in any field of human
mathematical methods;
activity which is new, involves an (2) Schemes, rules and methods of
inventive step and is industrially performing mental acts, playing
applicable shall be Patentable. games or doing business, and
programs for computers;
(3) Methods for treatment of the human
It may be, or may relate to, a or animal body by surgery or therapy
product, or process, or an and diagnostic methods practiced on
improvement of any of the the human or animal body. This
foregoing. provision shall not apply to products
and composition for use in any of
- Sec. 21, RA 8293 these methods;
(4) Plant varieties or animal breeds or
essentially biological process for the
production of plants or animals.
(5) Aesthetic creations; and
(6) Anything which is contrary to public
order or morality.
- Sec. 22, RA 8293

8. 1.3 What are the requirements of a patent?
Novelty
1
An invention shall not be Inventive step
considered new if it forms
part of a prior art.
2
An invention involves an
- Sec. 23, RA 8293 inventive step if, having
regard to prior art, it is not
obvious to a person skilled in
3 Industrial
the art at the time of the filing
date or priority date of the
application claiming the
applicability invention
- Sec. 26, RA 8293
An invention that can be produced and
used in any industry shall be industrially
applicable.
- Sec. 27, RA 8293

9. 1.4 What are the parts of a patent document?
4 Abstract
3 Claims
2 Specifications
1 Request for Grant of
Patent (Application
form)
5 Drawings

10. 2.0 Patent claims
Our questions:
2.1 What is a claim?
2.2 Why claim?
2.3 How to draft claims?

11. 2.1 What is a claim?
“Patent claims are the part of a
patent or patent application that defines
the scope of protection granted by the
patent. The claims define, in technical
terms, the extent of the protection
conferred by a patent, or the protection
sought in a patent application.”
- http://en.wikipedia.org/wiki/Claim_patent
“...the extent of the protection
conferred by a patent shall be
determined by the claims...”
Sec. 75, RA 8293

12. 2.2 Why claim?
(1) It is required by our practice.
1.1 The application must contain “one of more claims”.
1.2 These must:
(i) “define the matter for which protection is sought”;
(ii) “be clear and concise”;
(iii) “be supported by the description”.
- p. 18, Ch. III, Manual of Substantive Examination Practice
(2) It provides the protection of the invention.
“The extent of protection conferred by
the patent shall be determined by the
claims, which are to be interpreted in the
light of the description and drawings.”
Sec. 75.1, RA 8293

13. 2.3 How to draft claims?
(1) Requisites of good patent claims
 Sufficiently supported by the disclosures.
 Sufficiently identifying the invention vs. the closest prior art.
Shortcut: Identify the closest prior art.
For a process invention, the closest prior art is usually a similar process.
For a method of use invention, the closest prior art is usually a
disclosure of a similar use of the same product, or the same use of a
structurally similar product.
For a product invention, the closest prior art is usually another product
having the same intended use or purpose. This product will normally also
have the greatest number of technical features in common with the
invention.
- p. 78, Annex 2 to Ch IV, 9, Manual of Substantive Examination Practice

14. 2.3 How to draft claims?
(2) Types of patent claims
Type/format Brief description Applicable in the
Philippines?
Jepson claims Basic two-part claim type Yes
Beauregard claims Generally used to circumvent Yes
unpatentability of software
Markush claims Generally applicable in chemical Yes
inventions
Means-plus-function Generally used in mechanical fields Conditional
(i.e., electronic)
Product-by-process Generally used in chemical inventions Yes
Swiss type Generally used in medical inventions Yes
Omnibus claims A lazy patent claim  No

15. 2.3 How to draft claims?
(2) Types of patent claims
Type/format Brief description Applicable in the
Philippines?
Jepson claims Basic two-part claim type Yes
Beauregard claims Generally used to circumvent Yes
unpatentability of software
About Jepson claims:
Markush claims Generally applicable in chemical Yes
(1) Basic claim construction acceptable in the Philippines.
inventions
(2) Rule 416(a) and (b) on Patents define the two-part form
Means-plus-function which a claim should adopt “wherever appropriate.”
Generally used in mechanical fields Conditional
(i.e., electronic)
Product-by-process Generally used in chemical inventions
Example: Yes
Swiss type Generally used in medical inventions Yes
“1. A continuous on-line steam purity monitoring system for
A lazy patent claim 
Omnibus claims geothermal power generation plants comprising the steps of
No
xxx, whereby the sodium concentration in the steam is used
as an indication of purity.”
(Philippine Pat. No. 1-2007-000448)

16. About Beauregard-style claims:
2.3 How to draft claims?
(1) Based on a US case that held “that computer
(2) Types of patent claims embodied in a tangible medium, such as
programs
floppy diskettes, are patentable subject matter.”
Type/format BriefTries to circumvent unpatentability issues of a in the
(2) description Applicable
software. Philippines?
Jepson claims Basic two-part claim type re: shift from computer-readable
(3) With ongoing issues Yes
Beauregard claims media to electronic distribution, based on current
Generally used to circumvent Yes
legal trends on this subject.
unpatentability of software
Markush claims Generally applicable in chemical
Examples: Yes
inventions
Means-plus-function Generally used of manufacturefields
“1. An article in mechanical comprising: a computer
Conditional
(i.e., electronic) having computer readable program code
usable medium
Product-by-process Generally used in chemicalfor...” (US Pat. No. 5,710,578)
means embodied therein inventions Yes
Swiss type Generally used inreadable inventions
“2. A computer medical medium containing program Yes
Omnibus claims lazy patent claim 
Ainstructions for detecting fraud in a credit card No
transaction between a consumer and a merchant over
the Internet, wherein...” (US Pat. No. 6,029,154)*
* Cancelled by US Court of Appeals

17. 2.3 How to draft Markush claims:
About
claims?
(1) Usually used in chemical patents although also
(2) Types of patent claims
applicable in other fields.
(2) A "Markush claim" can be considered as a shortened
Type/format formulation of a claim. (Rule 605, Rules on Patents) in the
Brief description Applicable
Philippines?
(3) Markush grouping is allowable only if all alternatives
Jepson claims have atwo-part claim type or activity AND a common
Basic common property Yes
Beauregard claims structure isused to circumvent Rules on Patents)Yes
Generally present. (Rule 605,
unpatentability of software
Markush claims Generally applicable in chemical Yes
inventions
Means-plus-function Generally used in mechanical fields Conditional
Examples:
(i.e., electronic)
Product-by-process Generallycomposition comprising a copper compound
“1. A used in chemical inventions Yes
Swiss type and a dimerised thiourea derivative of Formula
Generally used in medical inventions Yes
Omnibus claims A lazy patent claim  No
wherein the two substituents R, which may...
(Manual of Substantive Examination and Practice)

18. 2.3 How toMeans-Plus-Function claims:
About
draft claims?
(1) In our practice, claims containing functional
(2) Types features can be allowed provided the conditions
of patent claims
of clarity are satisfied.
Type/formatSuch claims can only be characterized by
(2) Brief description Applicable in the
functional features only if no other more precise Philippines?
manner ofBasic two-part claim type exists.
Jepson claims defining the claimed matter Yes
Beauregard claims Generally used to circumvent Yes
Examples:
unpatentability of software
Markush claims Generally applicable in chemical Yes
“1. A selective weed-killing composition comprising
inventions
herbicidal compound H1 and herbicidal compound H2
Means-plus-function Generally used in mechanical fields Conditional
characterized in that the compounds H1 and H2 are
(i.e., electronic)
present in quantities that generate a synergestic
Product-by-process Generally used in chemical inventions 7, Manual Yes
herbicidal effect.” (Example 25, Ch. of
Substantive Examination Practice)
Swiss type Generally used in medical inventions Yes
Omnibus claims A lazyApparatus for
“1. patent claim receiving a credit card and reading
No
it, comprising a housing for insertion in a recess in a
wall and having a front opening having a size for
receiving the card, the front wall blah blah...” (p. 127,
Ch. 7, Manual of Substantive Examination Practice)

19. 2.3 How to draft claims?
About Product-by-Process claims:
(2) Types of patent claims in medical inventions, as a chemical
(1) Usually used
product can be characterized as the product of a
Type/format Brief description Applicable in the
process. Acceptable if compound is new.
Philippines?
(2) Application #1: Only when a process used is
Jepson claims Basic two-part as in the case of microorganisms. Yes
repeatable, claim type
Beauregard claims (3) Application #2: A recombinant vector, being a chemical
Generally used to circumvent Yes
product, may be characterized by (i) its formula, (ii) as
unpatentability of software
the product of a process, (iii) a combination of
Markush claims Generally applicable in chemical of sub-parts. (p. 161,
Yes
parameters, or (iv) composition
inventions
Ch. 7, Manual of Substantive Examination Practice)
Means-plus-function Generally used in mechanical fields Conditional
(i.e., electronic)
Product-by-process Generally used in chemical inventions Yes
Swiss type Generally used in medical inventions Yes
Example: claims
Omnibus A lazy patent claim  No
“1. Product prepared by reacting the reaction product of A and B with substances
X and Y.” (p. 137, Ch. 7, Manual of Substantive Examination Practice)

20. 2.3 How to draft Swiss-type claims:
About
claims?
(1) Equivalent of “second medical use” claim format in the
(2) Types of patent claims
Philippines.
(2) Allowed even if the compound is already known and the
Type/format Brief description Applicable in the
medical use is also known, but a second medical use was
not disclosed before. Philippines?
Jepson claims (3) Some two-part claim type
Basic acceptable formats: Yes
Beauregard claims Generally used to circumvent as a medicament Yes
(a) compound X for use
unpatentability of software as an analgesic
(b) compound X for use
(c) compound X for use in curing disease Y
Markush claims Generally applicable in chemical the compound XYes
(d) medicament containing
inventions of X for preparing a medicament
(e) use
Means-plus-function Generally used in mechanical fields Conditional
Example:
(i.e., electronic)
Product-by-process Generally used in chemical inventions Yes
“1. Use of an oculosurface selective glucocorticoid for the
Swiss type preparation of used in medical inventions
Generally a topical ophthalmic composition for treating
Yes
A lazy patent claim 
Omnibus claims chronic dry eye conditions, xxx wherein the oculosurfaceNo
selective glucocorticoid comprises rimexolone and wherein the
composition contains rimexolone at a concentration of 0.001 to
less than 0.1 w/v%.” (Phil. Pat. 1-2005-501206)

21. 2.3 How to draft claims?
(2) Types of patent claims
About Omnibus claims:
Type/format Brief description
(1) Rule 415(d) specifically discourages the use of the the
Applicable in
Philippines?
following, which are typical of omnibus claim format:
Jepson claims Basic two-part claim type in part...”
“...as described Yes
“...of the description...”
Beauregard claims Generally “...as illustrated in Figure 2 of the drawings"
used to circumvent Yes
unpatentability of software designs, but not in patents.
(2) Acceptable in industrial
Markush claims Generally applicable in chemical Yes
inventions
Examples:
Means-plus-function Generally used in mechanical fields Conditional
(i.e., A toy substantially described in the accompanying
“1. electronic)
drawings.”
Product-by-process Generally used in chemical inventions Yes
Swiss type Generally used in medical inventions Yes
Omnibus claims A lazy patent claim  No

22. 2.3 How to draft claims?
(3) Parts of allowable claims (Philippine practice)
Two-part
 Remember the Jepson claim?
claiming style
1. A seed treating machine for applying chemical treatment to
seeds, comprising:
(a) a seed delivery assembly, where seeds are contained and
collected from source prior to a seed treating process;
(b) a cone assembly, where seeds from the said seed delivery
assembly are allowed to pass through by gravity; and
(c) a spinning disk assembly, which distributes a chemical
treatment to the seeds while being dropped from the said
seed delivery assembly and through the said cone
assembly, said spinning disk assembly is rigidly fixed to the
said seed delivery assembly;
characterized in that the said seed delivery assembly and the
said cone assembly are detachably coupled to each other.
- Philippine Patent No. 1-2004-000586

23. 2.3 How to draft claims?
(3) Parts of allowable claims (Philippine practice)
Two-part
 Remember the Jepson claim?
claiming style
1. A seed treating machine for applying chemical treatment to
seeds, comprising: Preamble
(a) a seed delivery assembly, where seeds are contained and
collected from source prior to a seed treating process;
(b) a cone assembly, where seeds from the said seed delivery
assembly are allowed to pass through by gravity; and
(c) a spinning disk assembly, which distributes a chemical
treatment to the seeds while being dropped from the said
seed delivery assembly and through the said cone
assembly, said spinning disk assembly is rigidly fixed to the
said seed delivery assembly;
characterized in that the said seed delivery assembly and the Characterizing
said cone assembly are detachably coupled to each other. portion
- Philippine Patent No. 1-2004-000586

24. 2.3 How to draft claims?
(3) Parts of allowable claims (Philippine practice)
1. A seed treating machine for applying chemical treatment to
seeds, comprising:
(a) a seed delivery assembly, where seeds are contained and Preamble  Should contain a
collected from source prior to a seed treating process; statement indicating
(b) a cone assembly, where seeds from the said seed delivery
assembly are allowed to pass through by gravity; and “the designation of
(c) a spinning disk assembly, which distributes a chemical the subject matter of
treatment to the seeds while being dropped from the said
seed delivery assembly and through the said cone the invention” and
assembly, said spinning disk assembly is rigidly fixed to the “technical
the said seed delivery assembly;
features of the prior
characterized in that the said seed delivery assembly and the
said cone assembly are detachably coupled to each other. art” (Rule 416)
 Basically: Recites the
The “switch’. Characterizing portion prior art.
Also can be used:  Should state the technical
whereby features it is desired to
wherein protect (Rule 416)
 In short: The invention.

25. 2.3 How to draft claims?
(4) Independent claims vs. dependent claims
1. A seed treating machine for applying chemical treatment to
seeds, comprising:
(a) a seed delivery assembly, where seeds are contained and Independent claim
collected from source prior to a seed treating process;
(b) a cone assembly, where seeds from the said seed delivery
assembly are allowed to pass through by gravity; and
(c) a spinning disk assembly, which distributes a chemical  Also known as (1) main claim;
treatment to the seeds while being dropped from the said (2) mother claim.
seed delivery assembly and through the said cone
assembly, said spinning disk assembly is rigidly fixed to  The most important claim in the
the said seed delivery assembly; set.
characterized in that the said seed delivery assembly and the
said cone assembly are detachably coupled to each other.
2. The seed treating machine according to claim 1,
characterized in that the seed delivery assembly is comprising Dependent claims
a cylinder whose upper end is provided with a means for
coupling it to an existing hopper.
 Include all the features of any
3. The seed treating machine according to claim 2,
characterized in that said delivery assembly further comprising: other claim(s).
(a) a horizontal tube bisecting the circumference of the said  Must contain at the beginning a
cylinder and which is rigidly attached thereo; and
(b) a stationary tube that is rigidly attached to the said reference to the other claim.
horizontal tube. (i.e., “according to claim 1”; “as
in claim 1”; etc)

26. 3.0 Basic prior art exercises
Procedure/Goals:
(1) Identify the closest prior art.
(2) Spot the invention.
(3) Enjoy the questions.

27. Before we proceed, what is a prior art?
According to the IP Code, prior art shall consist of:
(1) Everything which has been made available to the public
anywhere in the world, before the filing date or the priority date
of the application claiming the invention (Sec. 24.1, RA 8293)
(2) Patent application itself! (Sec. 24.2, RA 8293)
In short, a prior art is:
(1) Anything that is already available anywhere in the
world before the patent application;
(2) Anything the inventor will disclose to the Patent
Office after the patent application.

28. How prior arts work
A mouse trap PRIOR ART?
Tacky glue trap
PRESENT INVENTION
FUTURE
PRIOR ART
Sandtail sentinel
Mouse trebuchet

29. Exercise 1 1
2
INVENTION PRIOR ART

30. Exercise 2
1
2
PRIOR ARTS
3
4

31. Exercise 3
1
2
PRIOR ARTS
3
INVENTION
5
4

32. Exercise 4
1 2 3
INVENTION
4
PRIOR ARTS

33. Exercise 5
1 2 3 4
5
INVENTION PRIOR ARTS

34. Exercise 6
1 2
PRIOR ARTS
INVENTION
5
3
4

35. Exercise 6
CHOSEN
PRIOR ART
1
Preamble?
1. A means of transportation...
INVENTION
Characterizing portion?
...characterized in that the movement is
accomplished by a wheel.
...whereas said transportation is
powered by an engine.

36. Exercise 6
CHOSEN PRIOR ART
2
Preamble?
1. A means of transportation
comprising a suitable carriage body,
INVENTION wheel...[etc etc]
Characterizing portion?
...characterized in that the said carriage
body further comprising a steering
mechanism.
...whereas said transportation is
powered by an engine.

37. Exercise 6
CHOSEN PRIOR ART
3
X
INVENTION
Preamble?
Characterizing portion?
X
 Not a prior art!

38. CHOSEN PRIOR ART
Exercise 6
4
Preamble?
1. A means of transportation...
1. A non-animal means of transportation...
1. A locomotive...
...comprising an engine, a propelling
INVENTION wheel, a suitable carriage body, steering
mechanism [etc etc]
Characterizing portion?
...characterized in that liquid gas enables
the operation of the said engine.

39. Exercise 6: Actual Patent

40. 4.0 Actual claim drafting exercises
Procedure/Goals:
(1) Pair yourselves and discuss the slide based on the allotted time.
(2) Identify the closest prior art.
(3) Spot the invention.
(4) Draft at least one claim (main claim).
(5) Draft at least one dependent claim (OPTIONAL).
(6) Prepare for presentation using the Manila paper provided to you.

41. Goal 20 minutes
Exercise 7
Closest prior art: ???
What to draft: One (1) main claim
What to claim: ???
1
2
INVENTION PRIOR ARTS 3

42. Goal 20 minutes
Exercise 7 solution
Closest prior art: Pen
What to draft: One (1) main claim
What to claim: See claim 1

43. Goal 30 minutes
Exercise 8
Closest prior art: ???
What to draft: One (1) main claim
What to claim: ???
1 2
3
Alternative embodiments:
4 5
INVENTION PRIOR ARTS

44. Goal 30 minutes
Exercise 8 solution
Closest prior art: Umbrella
What to draft: One (1) main claim
What to claim: See claim 1

45. Goal 30 minutes
Exercise 9
Closest prior art: ???
What to draft: One (1) main claim
What to claim: ???
1 2
3
4
INVENTION PRIOR ARTS 5

46. Goal 30 minutes
Exercise 9 solution
Closest prior art: Umbrella and leash
What to draft: One (1) main claim
What to claim: See claim 1

47. Goal 45 minutes to 1 hour
Exercise 10
Closest prior art: ???
What to draft: One (1) main claim
What to claim: See claim 1
1
Advertised in
Book-keeper,
Aug 1894, p.6;
unpatented
Brosnan Patent (1900), US648,841
2
3
Wright Patent (1901), US674,290
INVENTION PRIOR ARTS

48. Goal 45 minutes to 1 hour
Exercise 10 solution
Closest prior art: Pins 2 or 3
What to draft: One (1) main claim
What to claim: See claim 1

49. Exercise 11
General instructions:
(1) Check the handouts provided to you.
(2) You are given one (1) week to prepare the claims.
(3) Basic output required: Claim set. You may also
prepare the full specification and abstract, and letter
to the IPO if you feel lucky.
(4) Submit your outputs to NLB and discuss how you
can improve them.
(5) This is an individual work. Please try not to cheat!
Background of the material:
(1) Actual Paper A (claim drafting) exam
 European Qualifying Examinations (EQE) for 2011
(2) It is recommended to turn off your specialist knowledge and rely solely on
the documents provided.
(3) Actual duration to take the exam is four (4) hours. But don’t pressure
yourself. Take your time and enjoy the feeling of the exam.

50. 5.0 Any questions?
And...thank you!
© 2012 by Caezar Angelito Estioko Arceo
cangear@yahoo.com
http://www.youtube.com/cangear
http://www.twitter.com/cangear
http://www.slideshare.net/cangear
http://www.scribd.com/cangear

51. Acknowledgment
Slide Item Source
Exercise: Automobile Carabao http://www.localphilippines.com/events/864/carabao-carroza-
race
“Sky lab”, a common http://www,youtube.com/cangear
transportation in
Mindanao, Philippines (Must see. :D)
Horse-driven carriage http://texaninthephilippines.com/2011/06/19/saturday-18-jun-
2011/horse-carriage-laoag/
Steam train http://swiftline50.com/category/steam-train-trips-new-zealand/
Prior art and claim drafting Patent documents http://www.espacenet.com
exercises http://www.uspto.gov
http://www.freepatentsonline.com
1.1 What is a patent? Man with bulb http://www.economist.com/node/15479680
Paper clip http://www.officemuseum.com/paper_clips.htm
Prior art exercise: Pen Quill http://thesilverquill.webs.com/
Pencil http://oregonbusinessbrokers.org/2010/07/02/i-pencil-a-story-
about-the-miracle-of-capitalism/
Caveman writing http://www.mchumor.com/cavemen2_bframe.html
Pilot pen http://www.pilotpen.co.uk/
5.0 slide Money inventor http://www.toonpool.com/cartoons/caveman%20wife%20money
%20invention_113801

52. Acknowledgment
Slide Item Source
Exercise on stapler-pen Stapler http://www.graphicshunt.com
Pen http://www.the-gadgeteer.com
Exercise on beerbrella San Miguel Beer http://www.sanmiguel.com.ph/businesses/core/beverages/
Drunkard http://hapiblogging.blogspot.com/2009/01/no-fear-drunkard-in-
agdao.html
Umbrella by the http://wallpapers.free-
beach review.net/42__Coastal_Holiday,_Sand_Beach.htm
Exercise on dog-brella Beautiful woman with http://cutcaster.com/photo/100612708-Woman-with-umbrella-
umbrella and-light-rain/
Beautiful woman with http://www.pitbulllovers.com/pitbullgazette/dec2011.html
pitbull
Beautiful woman http://cutcaster.com/photo/100221713-Young-female-pulling-to-
pulling a man man/#S115354
Belt http://www.kustomkultureclothingco.com/accessories.htm
Thinking man http://office.microsoft.com/en-us/images/
Woman with a cane http://www.123rf.com/photo_9355568_young-beauty-woman-in-
red-traditional-arabic-costume-dance-with-cane.html
Labrador http://en.wikipedia.org/wiki/Labrador_Retriever
Mouse trap exercise Mouse trap http://www.dimensionsguide.com/mouse-trap-dimensions/
Imaginary mouse http://mhwiki.hitgrab.com/wiki/
traps