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Claim Drafting Tag

BananaIP Counsels > Posts tagged "Claim Drafting"

Claim Drafting – Transitional Phrases

This post was first published on July 17, 2014.

 

A transitional phrase is a part of the claim that connects the preamble and the body. The Transitional phrase determines as to whether a claim is “Open” “Partially Open” or “Closed.”

Open Claim

An Open claim includes additional unrecited elements i.e., if a claim, which is Open, recites elements A, B, C and D, then an article which includes elements A, B, C, D and E infringes the Open claim irrespective of the fact that the article has an extra element E which is not recited in the Open claim.

The term “comprising” in a claim makes the claim Open.

In, Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed. Cir 2005), a famous and much talked about case, the claim at issue recited “A safety razor blade unit comprising a guard, a cap, and a group of first, second and third blades. ” The accused infringing product included four blades. The court said that the word “comprising” makes the claim Open and hence, the scope of the claim encompasses all safety razors satisfying the elements set forth in the claim thus concluding that the accused product infringed the claim.

Patent Claim Drafting – Preamble

This post was first published on July 16, 2014.

 

It would have been very well drummed into a patent professional, Mr. X, who has just started drafting a patent specification that “claims form the heart of a patent application,” or the “name of the game is claim,” and so on. Very few might agree with me if Mr. X has been told to carefully consider the words and/or features and/or the language used in the preamble, as improper drafting of preamble may limit the scope. Well, it is not Mr. X’s fault, nor the trainer’s fault. There are not many case laws or rather widely discussed case laws, elucidating or interpreting in detail the importance of a preamble as there are for definiteness, written description and other statutory requirements. In fact, in 1934 (in In Re Wolf), CCPA held that, “The preamble of a claim is introductory only and should not be considered as a limitation of the subject issue.”

While CCPA’s decision in In re Wolf is still held aloft like a banner, for more of a visual than cognitive effect, there are some case laws in which the federal circuit has touched upon or at certain times went into a little more detail on the importance/interpretation of preamble.

Patent: Basics of Specification Drafting – Presentation by Somashekar Ramakrishna

This image depicts the title Basics of Patent Specification Drafting presented by Mr. Somasekhara. Click on the image for more information.

[slideshare id=45409802&doc=basicsofspecificationdrafting-150304014411-conversion-gate01] The presentation herein, on Basics of Specification Drafting, was delivered by Mr. Somashekar Ramakrishna at the National Law School of India University, Bangalore, for Senior Officials of the Ministry of MSME, Government of India. Starting with specification contents, the presentation covers drafting guidelines, claim drafting basics and examples. For more information about the presentation or the event, you may contact the Sinapse team at [email protected]

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