06 August 2019

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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.

24 July 2019

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Crossing the Rubicon: A Fork in the Road – Go Right or Left?

Posted by BananaIP Reporter

in Intellectual Property, Patents

This post was first published on 24th July, 2014. Case Analysis of Dr. Aloys Wobben and another vs. Yogesh Mehra and others. CIVIL APPEAL NO. 6718 OF 2013 Facts: Dr. Aloys Wobben (Appellant) owns approximately 2,700 patents in more than 60 countries of which 100 patents are in India in the field of wind turbine generators and wind energy converters. Appellant was carrying out the manufacturing process in India through a joint venture partnership with the Yogesh Mehra and Ajay Mehra (Enercon India Limited) (Respondents). Intellectual Property licence agreements to use the technical know-how of the inventions, was granted to Enercon India Ltd. by the Appellant and...

20 December 2018

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A Conduit for INVALID PATENTS – Section 13(1)(b)

Posted by BananaIP Reporter

in Intellectual Property, Patents

First Publication Date: 8th December 2010. Section 13 of the Indian Patent Act requires the Examiner, to whom an application for a patent is referred to, to search for previous publications which anticipate the invention claimed in the referred patent application. Section 13 recites “Search for anticipation by previous publication and by prior claim (1) The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification- (a) has been anticipated by publication before the date of filing of the applicant’s...

14 December 2018

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Telephone – Inventions that Revolutionized the World

Posted by BananaIP Reporter

in Intellectual Property, Patents

First Publication Date: 27th November 2010 The most common devices used for transmitting the voice signal over a greater distance are pipes and other physical mechanical media. All of us as a child must have used this form for communication. Another device used for centuries for voice communication is lover’s phone or tin can telephone. The classic example is the children's toy made by connecting the bottoms of two paper cups, metal cans, or plastic bottles with string. But the invention which changed the entire scenario of the communication is the telephone. It revolutionized the entire communication system. People could hear...

27 November 2018

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The Gene Returns to its Body

Posted by BananaIP Reporter

in Intellectual Property, Patents

This post was first published on April 1, 2010. I’m still in denial of the summary judgment ruling provided by Judge Robert W. Sweet of United States District Court for the Southern District of New York in Association for Molecular Pathology v. USPTO on March 29th 2010. Looks like all that I read, understood and was convinced that gene patents demands a revisit. The 156 pages summary judgment that was issued on this Monday has for sure taken me by surprise. To give you the context, Myriad Genetics is a gene diagnostic company which in together with University of Utah Research...

27 November 2018

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Claiming with a Purpose, with the Blessings of the Inventor

Posted by BananaIP Reporter

in Intellectual Property, Patents

This post was first published on March 1, 2010. Claims draw the boundary to the invention that is being claimed. The boundary that is being drawn must be carefully done in order to ensure that the claims serve their purpose. The point here is that every claim must have a specific purpose and must be targeted to a potentially infringing product or process, or be targeted to protect a specific implementation (in case of defensive approach). In order for the practitioner to be able to do that, he must have a clear understanding of how a product or process is implemented...

27 November 2018

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Something More About Swiss Type Claims

Posted by BananaIP Reporter

in Intellectual Property, Patents

This post was first published on February 25, 2010. On reading Siddharth’s post on the 19th February decision (G02/08) from the Enlarged Board of Appeal regarding the Swiss type claims, I got motivated to write something about the Swiss type claims and the reason for its birth and death. Like in India, Method of Treatment and Method of diagnosis (in vivo) has always been non patentable subject matter in Europe (Article 52(4)). Furthermore, before the concept of Absolute Novelty was introduced by the European Patent Office, a Second medical use of a drug could not get any kind of protection due to...

27 November 2018

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Swiss Claims are History!

Posted by BananaIP Reporter

in Intellectual Property, Patents

This post was first published on February 24, 2010. If the 19th February decision (G02/08) from the Enlarged Board of Appeal (EBA) at the EPO is to be simplistically interpreted, “Swiss” Type claims are indeed history. As most of our readers must be aware of the nature of a “Swiss” type of claim language. A “Swiss” type claim is essentially used to cover the so called Second, Third and Subsequent uses/medical indications of a known substance or composition. Taking our readers a bit more than a decade back the EBA in its decision (G05/83) had allowed the use of Swiss type claims. The...

26 November 2018

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Story of an Unchallenged Patent: Certainly Uncertain

Posted by BananaIP Reporter

in Intellectual Property, Patents

This post was first published on February 16, 2010. Enabling designing around existing patents to promote progress of Science and technology forms a small but a non trivial part of the rationale behind existence of the patent system. To be able to safely design around patents it is critical to be able to understand the scope of protection rendered to that patent. The best place to start is the claims of patent since it determines the metes and bounds of the patented invention. Traditionally there have been two main approaches to drafting claims. One is the Central claiming approach and the other is...

29 October 2018

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Indian Patent Revocation: K. Manivannan, Vs. Shri M. Mani, Proprietor Valasumani Lathe Works

Posted by BananaIP Reporter

in Intellectual Property, Patents

Characters are pulling a rope written PATENT on top as this article is about Indian Patent Law Basics

First Publication Date: 3rd January 2010 A patent was granted to Valasumani Lathe Works (“VLW”) for an invention titled "IMPROVED THRESHING AND SEPARATING MACHINE". The applicant in the case, Manivannan trading as Kumar Industries, filed an application for revocation of the patent before the Appellate Board. The applicant contended that VLW’s invention was not patentable in the light of the applicant’s patent application relating to a machine for threshing of corn, which was abandoned and the machines of the applicant, which were being used before the application date of VLW. The applicant claimed that the invention was anticipated based on prior...

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