Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

Claim drafting and analysis
Arun K Narasani
Founder, ipMetrix
arun@ipmetrix.com

Agenda
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Basics of claims
●
●

●

Claim structure
Claim types

Drafting
●

Preparation

●

Claim construction

●

Protecting multiple facets

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Other considerations

●

Caselet
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Claims overview
●

●

●

Claims define the boundaries of an invention “metes and bounds”
Claims must particularly point out and distinctly
claim what applicant regards as his invention
Claims must be fully enabled by the
specification

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Examples
●

“A method as illustrated and described”

●

“An apparatus as described in figures 1-10”

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Valid?
●

●

These do not “particularly point and distinctly
claim”
They are called “omnibus” claims and are not
allowed
●

●

One “omnibus” claim is allowed in India, if
statement of invention is included

Claims must define the invention with certainty
and in detail

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Statutory classes
●

●

US: process, machine, (article of) manufacture,
or composition of matter, or any new and useful
improvement thereof
India: product or process

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Proper sentence
●

Claim forms a complete sentence forming the
direct object of the phrase “I claim”
●

●

“I claim: A pencil having an eraser fastened to one
end.”

Note the capital letters and the full stop

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Ordering
●

●

Claims are presented in a logical order and
numbered consecutively
Logical grouping of claims is allowed (using a
line, for example)

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Claim structure
●

<preamble> <transition phrase> <body of
claim>
●

●

“A pencil having an eraser fastened to one end.”

<A pencil> <having> <an eraser fastened to
one end.>

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Preamble
●
●

●

Introductory phrase to set the context of a claim
Limitations in preamble may or may not be
given effect
Short preamble is better when possible

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Transition phrase
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“comprising”:
●
●

●

Open
Means “including but not limited to”

“consisting”/”consisting of”:
●
●

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Closed
Useful in chemical arts

“consisting essentially of”:
●

Partially open

●

Useful in chemical arts
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Transition phrase (contd..)
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Other uncommon transition phrases
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“including”, “having”, “containing” and “wherein”
–

Really not used anymore in the electronics/software
domain

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Body
●
●

Includes material limitations of an invention
New element introduced by an indefinite article
(e.g. “a” or “an”)
●

●

An element not introduced by an indefinite
article is not allowed
●

●

Further references to the same element may use a
definite article (e.g. “the”)

Said to have no antecedent basis

Elements may be claimed in function language
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Body (contd..)
●

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Double inclusion of elements without separate
structures may be rendered indefinite
Single element performing multiple functions
may be claimed using function language

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Claim types – subject matter
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Method claims
●

●

Apparatus claims
●

●

As one or more steps
With active components

Article claims
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With non active components

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Claim types – structure
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Independent claims

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Dependent claims

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Multiple dependent claims
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Alternative form only
–
–
–

●

“according to claims 3 or 4”
“either claim 1 or 2”
“any one of claims 1, 2 and 3”

Cumulative claiming not allowed
–

“according to claims 3 and 4”
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Claim types – scope
●

Functional
●

Method: step-plus-function

●

Apparatus: means-plus-function

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Example

z-1

1/3

+

x(n)

y(n)

z-2

Moving Average Filter

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Example
●

Apparatus claim
●

A moving average filter comprising:
–
–
–
–

a first delay unit;
a second delay unit;
an adder to add signal; and
a multiplier.

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Example
●

Apparatus claim
●

–
–

–
–

a first delay unit to delay input signal by one unit, said
first delay unit connected to input signal in parallel;
a second delay unit to delay input signal by two units,
said second delay unit connected to input signal in
parallel;
an adder to add input signal, output from said first delay
unit, and output from said second delay unit; and
a multiplier with scaling factor of 1/3 to multiply with
output of said adder.
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Example
●

Mean-plus-claim
●

–
–
–
–

means to delay input signal by one unit, said means
connected to said input signal in parallel;
means to delay said input signal by two units, said means
connected to said input signal in parallel;
means to add said input signal, output from said first
delay unit, and output from said second delay unit; and
means to multiply with output of said adder by a scaling
factor of 1/3.

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Example
●

Method claim
●

A method of implementing a moving average filter
comprising:
–
–
–
–
–

Obtaining an input signal
Delaying said input signal by a first delay unit;
Delaying input signal by a second delay unit;
Adding said input signal, output of said first delay unit;
and output of said second delay unit by an adder; and
Multiplying output of said adder by a factor of 1/3 using a
multiplier.

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Example
1/3

+

x(n)

y(n)

z-1

+
z-1

Moving Average Filter

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Example
●

Apparatus claim
●

–
–
–
–
–

a first delay unit;
a second delay unit;
a first adder; and
a second adder;
a multiplier.

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Example
●

Apparatus claim
●

–
–

–
–
–

a first delay unit to delay input signal by one unit;
a second delay unit to delay output from said first delay unit
one unit, said second delay unit connected to first delay unit in
series;
A first adder to add output from said first delay unit, and output
from said second delay unit;
A second adders to add input signal and output from said first
adder; and
a multiplier with scaling factor of 1/3 to multiply with output of
said second adder.
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Example
●

Mean-plus-claim
●

–
–

–
–
–

first delay means to delay input signal by one unit;
second delay means to delay output from said first delay unit
one unit, said second delay unit connected to first delay unit in
series;
first adding means to add output from said first delay means,
and output from said second delay means;
second adding means to add input signal and output from said
first adding means; and
means to multiply output of said second adding means with
scaling factor of 1/3.
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Example
●

Method claim
●

A method of implementing a moving average filter
comprising:
–
–
–
–

Obtaining an input signal
Using a first delay unit and a second delay unit to delay
input signal;
Using at least one adder to add input signal and signals
from said delay units;
Multiplying output of said adder by a factor of 1/3 using a
multiplier.

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Example
●

Dependent method claim (contd..)
●

A method as in claim x, said method further
comprising:
–

–

●

Connecting said first delay unit in parallel with input
signal, where said first delay unit delays input by one unit;
and
Connecting said second delay unit in parallel with input
signal, where said second delay unit delays input by two
units,

where said adder adds input signal, output from
said first delay unit and said second delay unit.
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Preparation
●

Novelty according to inventor

●

Prior art according to inventor

●

Problem that led to the solution

●

Commercial product

●

Commercial environment

●

Possible applications?

●

Likely users / infringers?

●

Strategy for obtaining a patent
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Claim construction
●

Independent claims covering multiple facets
●

●

Based on commercial and strategy considerations

Multiple set of independent claims
●
●

●

Broad, medium, narrow
subject to financial considerations

Dependent claims adding relevant limitations
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Claim construction (contd..)
●

Claim considerations
●

Overlap with prior art

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Circumvention

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Directing towards target infringers

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Review and iterate

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Protecting multiple facets

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Claim constructions
●

Apparatus
●

●

Method
●

●

Sequence of actions

System
●

●

Active elements

Set of discrete elements

article/article of manufacture
●

Passive elements
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Claim constructions
●

Program product / storage device
●

●

Means-plus-function
●

●

When there are alternate elements

Program encoded on an electrical signal
●

●

Storage device like disk

Program transferred as signals (Internet)

Computer readable medium
●

Storage media, signals etc.
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Claim interpretation
and
other considerations

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Claim interpretation
●

●

Claims must be based on matter disclosed in
specification
Specification must have adequate support for
each claim

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Clarity of claims
●

Ambiguous terms
●

●

Glorification
●

●

“like”, “close to”, “almost”, “near” etc
“.. where said greatly improved device comprises
of:”

Appropriate punctuation
●

“A tool for manufacturing a machine comprising: ..”

●

“A tool for manufacturing a machine, comprising:”

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Clarity of claims
●

●

Essential elements
●

●

“A tool for manufacturing a machine, said tool
comprising:”
A claim for improved blades for a fan does not need
to recite the fan motor as an element

Unity of invention
●

One application must have claims relating to one
inventive concept

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Understanding claim structure
●

Every claim set (set of independent and
dependent claims) can be thought as a tree
●

Independent claim will be the trunk

●

Dependent claim will be a branch

●

A dependent on a dependent will be a branch on a
branch and so on...

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Claim differentiation
●

Every claim is assumed to have a different
scope
●

●

Having dependent claims automatically implies that
broader scope of protection is sought through
corresponding independent claim

So it always good to have one or two limitations
pushed to dependent claims

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Caselet
●

providing services using SMS communication

●

providing targeted advertisements

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Caselet – core concepts
●
●

generating user context from user interactions
method of rendering services on a terminal from
using SMS communication

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Caselet – claims
●

A system for providing services using SMS
communication comprising:
●

●

●

●

a terminal with at least an application and at least a
middleware to present services using information
obtained through SMS;
a server to provide SMS responses to SMS
requests from said terminal;
an SMS gateway to marshal and unmarshal
information between said terminal and said server;
an SMS communication link between said terminal,
said SMS gateway and said server.
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Caselet – claims
●

A method for providing services using SMS
communication, the method comprising:
●

●

providing at least an application and at least a middleware in
a terminal;
said application rendering available initial services on said
terminal;

●

user requesting a service;

●

said middleware sending request to a server in SMS;

●

●

said server receiving SMS request and providing response
to said SMS request in SMS; and
said application rendering response on said terminal.
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●

Method of rendering services on a terminal
using SMS communication comprising:
●

●
●

●

receiving an SMS message with data to render
services, said message comprising a plurality of data
fields;
reading menu data fields to construct menu items;
reading service action data fields to map menu items
with service action to be performed; and
rendering a frame with a menu bar with said menu
items.
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Caselet – claims
●

Method of rendering services on a terminal
using SMS communication comprising:
●

●
●

●

receiving at least one SMS message with data to
render services, said message comprising a
plurality of data fields;
reading service action data fields to map menu
items with service action to be performed; and
rendering a frame with a menu bar with said menu
items.
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Caselet – claims
●

●

Method as in claim x, where a service action
data is a short code.
Method as in claim x, where a service action
data is a search string.

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Caselet – claims
●

A program storage device embodied in a computer
readable medium comprising instructions when
executing resulting in a method of rendering services
on a terminal using SMS communication comprising:
●

●

●

●

receiving at least one SMS message with data to render
services, said message comprising a plurality of data fields;
reading service action data fields to map menu items with
service action to be performed; and
rendering a frame with a menu bar with said menu items.

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Caselet – claims
●

A terminal to render services using SMS
communication comprising:
●

●

●

●

a receiving means to receive at least one SMS
message with data to render services, said message
comprising a plurality of data fields;
a reading means to read menu data fields to construct
menu items;
a reading to read service action data fields to map
menu items with service action to be performed; and
A rendering means to render a frame with a menu bar
with said menu items.
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Questions?
Contact:

Arun Narasani
Founder, ipMetrix
arun@ipmetrix.com

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Patent Specification Drafting Series: Claim Drafting & Analysis, By Arun Narasani

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