presentation on drafting mechanical claims

Presented By:

Nishant KewalramaniPortfolio ManagerBrain League IP Services

© Brain League IP Services Pvt. Ltd

Anatomy of a Claim

Types of Claims in Mechanical Arts

Writing a claim

Exercise

A claim consists of the following components:

Preamble

Transition phrase/ linking phrase

Body of the claim

I claim/We claim/What is claimed is:

1.An air circulation device, comprising:a base;a plurality of blades attached to said base;a rotary motor attached to top portion of said base; anda rod attached to said base, said rod configured to suspend said base from a ceiling.

Introductory phrase/ preamble (India)

Preamble/ Introductory Phrase (India)

I claim/We claim/What is claimed is:

1.An air circulation device, comprising:a base;a plurality of blades attached to said base;a rotary motor attached to top portion of said base; anda rod attached to said base, said rod configured to suspend said base from a ceiling. Body of the

claim

Transition phrase

Introduction to set the context of the Claim

Names/Defines the subject matter of the claim

Possible intended use or purpose

Should be as short as possible.

Links the preamble and body of the claim

Should be chosen carefully as it affects the scope of the claim.

Commonly used- comprising, consisting, consisting essentially of.

Not so common- including, having, containing etc.

Comprising: Open ended Included but not limited to

Consisting: Close ended Limited to claim elements

Consisting essentially of: Partially open

Elements of the claim & their interconnectivity

New element starts with an article (a, an, the)

Further reference to same element- Antecedent basis (the, said)

Written such that the claim is a single sentence: E.g. An air circulation device, comprising a base…

Stand alone claim

Does not refer to/depend upon any other claim

Generally the broadest claim of the patent specification

Depends upon another claim

Usually adds a limitation to the claim it depends upon

Narrower in scope as compared to the claim on which it depends.

Multiple Dependency: Alternative claiming only According to claim 3 or 4 According to claim 3 and 4- Not allowed

Apparatus Claims: Anything mechanical or electrical having

cooperating parts to accomplish a useful result

Device, machine etc may be used where appropriate.

General pattern of preamble:▪ An apparatus <for performing a specific act>

said apparatus, comprising:

Article of Manufacture Claims

Elements tied together No moving parts General preamble

▪ A <name/category of article>, comprising:▪ E.g. An ash tray, comprising:

Product by Process Claims Article is claimed through the process by

which it is made Covers the claim only when made by that

process. General Preamble:

▪ An <article name> produced according to the process, comprising:

▪ The process elements contain steps of performing the method usually beginning with gerund verb form.

▪ E.g. extracting metal from ore

Introduce each element separately using articles

Show interconnectivity between articles

Use the/said to show antecedent basis for referring to the elements already introduced earlier in a claim

Refer the same element by the same name all throughout.

Negative claiming E.g. Rod is not placed on the bottom

portion of the base. Word around to make an

assertive/positive statement.Claiming holes/empty space

Never claim a hole Claim the surface area containing the

hole

Avoid using comparative words in the claims unless absolutely necessary.

Write functional language only when a suitable structural alternative is not found.

Avoid numbering the steps in a process. E.g. firstly, then etc.

Draft one Independent claim.

Draft one dependent claim dependent on the Independent claim drafted above.

Draft one multiple dependent claim dependent on the Independent and dependent claim above.

THANK YOU

nishant@brainleague.com

http://indianipinfo.blogspot.com/