Intellectual Property Management Training Cum Writeshop on Technology Disclosure and Claim Drafting, Philippine Council for Agriculture, Aquatic, and Natural Resources Research and Development (PCAARRD), Bulwagang Panday Karunungan, PCAARRD, Los Baños, Laguna (Philippines), 30 August 2012
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Drafting chemical patent specs and claims
1. Patenting “chemical” inventions
An appreciation topic to draft specifications
and claims in the Chemical Field
Caezar Angelito E. Arceo
Registered Patent Agent in the Philippines
(Non-chemical field, 2006; Chemical field, 2007)
Mentor, Patent Agent Qualifying Examinations 2011
Intellectual Property Management Training Cum Writeshop on Technology Disclosure and Claim Drafting
Philippine Council for Agriculture, Aquatic, and Natural Resources Research and Development (PCAARRD)
Bulwagang Panday Karunungan, PCAARRD, Los Baños, Laguna (Philippines)
30 August 2012
2. Special notes
(1) Grateful acknowledgment:
Mr. Noel A. Catibog, PCAARRD Dr. Karl Rackette, EPO
Dr. Patricio S. Faylon, PCAARRD Dr. Ray Coleiro, EPO
Dr. Cecilia P. Reyes, NRCP The World Intellectual Property Office
Ms. Renia C. Corocoto, NRCP The men and women of the Sapalo Velez Bundang &
Mr. Jerry C. Serapion, PhilRice Bulilan Law Offices
Engr. Rey Negre, IPOPHIL Atty. Anna Mariae Celeste V. Jumadla, former boss
Ms. Rosa M. Fernandez, IPOPHIL Atty. Ronilo A. Beronio, former boss
Ms. Virginia M. Aumentado, IPOPHIL
Ms. Rudina Pescante, Patrick Miranda (Singapore)
(2) This presentation was designed not to teach claim drafting, which requires
at least one week training course, but to help interested participants to
appreciate the art, which is necessary for effective chemical claim drafting.
(3) Citing the source of slides in your public presentation/publication is humbly
requested.
(4) May this serve as an invitation to take the Patent Agent Qualifying
Examinations (PAQE).
(5) Enjoy!
3. Outline
1.0 Patenting quick review 3 min
2.0 Claims 10 min
3.0 Scenario: My awesome eureka! 30 min
4.0 The “chemical” claims 15 min
5.0 End 1 min
4. 1.0 Patenting quick review
Our questions:
1.1 What is a patent?
1.2 Why patent?
1.3 What can be patented?
1.4 What cannot be patented?
1.5 What are the requirements of a patent?
1.6 What are the parts of a patent document?
6. 1.2 Why patent?
“There is no reason
anyone would want a computer
in their home.”
- Ken Olsen (1977)
Founding Chair, Digital
Equipment Corporation
1.3 What can be patented?
Any technical solution of a problem
in any field of human activity which
is new, involves an inventive step
and is industrially applicable shall be - Sec. 21, RA 8293
Patentable. It may be, or may relate to, a
product, or process, or an improvement
of any of the foregoing.
7. 1.4 What cannot be patented?
EXCLUSIONS: An invention shall not be
considered new if it forms part of a
(1) Discoveries, scientific prior art.
theories and mathematical
methods; - Sec. 23, RA 8293
(2) Schemes, rules and methods - Rule 203, Patents IRR
of performing mental acts,
playing games or doing Made available to the public
business, and programs for anywhere in the world.
computers; Earlier applications.
(3) Methods for treatment of the - Rule 204, Patents IRR
human or animal body;
(4) Plant varieties or animal
breeds or essentially
biological process for the
Prohibited statements in the application:
production of plants or (1) Contrary to “public order” or morality.
animals. (2) Disparaging other products or
(5) Aesthetic creations; and processes of any person other than the
(6) Anything which is contrary to applicant.
public order or morality. (3) Obviously irrelevant or unnecessary
under the circumstances.
- Sec. 22, RA 8293 - Rule 412, Patents IRR
10. 1.6 What are the parts of a patent document?
Title Abstract
Authors and Affiliations Contact a Claims
patent agent
Abstract
Specifications
Introduction
Review of Literature
Methodology Request for Grant of
Patent (Application
Results and Discussion form)
Summary, Conclusions, Recommendations
Drawings
Literature cited
11. 2.0 Patent claims
Our questions:
2.1 What is a claim?
2.2 Why claim?
2.3 How to draft claims?
17. 2.2 Why claim?
(4) It is a MUST.
“[T]he name of the game
is the claim.”
In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed.Cir.1998)
18. 2.3 How to draft claims?
(1) Use the “Problem and solution approach”
Step 1
Determine the closest prior art.
Step 2
Evaluate the difference between the
closest prior art and the claimed invention.
Step 3
Formulate the technical problem.
Step 4
Determine obviousness.
19. 2.3 How to draft claims?
(2) Follow basic steps in claim drafting.
Step 1
Evaluate the subject matter. Step 2
Identify basic elements of invention.
Step 3
Prepare outline of subject Step 4
matter. Draft set of claims.
Step 5
Prepare drawings/figures (whenever applicable).
Step 6
Draft abstract of disclosure. Based on “Claim Drafting in the Field of Biotechnology”
by Ms. Rosa M. Fernandez and Engr. Herminia T.
Maniquiz, PCARRD presentation, 30-31 August 2007.
21. 3.0 Scenario: My awesome eureka!!!
Our simple question:
3.1 Can you help me file a patent application?
General instructions:
(1) Group yourselves and grab your writing materials.
(2) You may switch on your “specialist knowledge” for this exercise,
provided, that you will accept my disclosures as true.
(3) Listen to my disclosures and ask questions.
(4) Prepare a matrix like this for presentation. Defend your position.
Disclosure Patentable? Reason(s) If yes, list what to claim
23. 3.1 Can you help me file a patent application?
(1) Amazing morphology Leg!
Leg!
Leg! Leg!
Two nuclei!
Leg!
Leg!
Leg!
Leg!
0.01 mm
24. 3.1 Can you help me file a patent application?
(2) Amazing locomotion
Unidirectional speed:
Steering speed: 0.01 mm min-1
0.005 mm min-1
Note: I used a novel
method of determining
speed of this
microorganism!
0.01 mm
25. 3.1 Can you help me file a patent application?
(3) Amazing cell wall
Pinch-proof!!!
Novel compound:
DNA
CTGGTGAAGCCTTCACAGACCCTGTCCCTC
CAGGTGCAGCTGCAGGAGTCGGGCCCAGGA
Protein
LVKPSQTLSLQVQLQESGPG
26. 3.1 Can you help me file a patent application?
(4) Amazing chemical compounds produced
TiO2
Negrein, with unknown use
Catibein, with anti-
dengue properties
??? Unknown structure
27. 3.1 Can you help me file a patent application?
(5) Amazing magical features
If temperature drops
to below 10 degrees
Celsius, it turns to
pink or red!!!
28. 3.1 Can you help me file a patent application?
Sample answer
Disclosure Patentable? Reason(s) If yes, list what to claim
1. Morphology No Naturally occurring
2. Locomotion Speed, Naturally occurring
ability: No
Tool: Yes Perhaps novel method Method of determining speed
3. Cell Wall Features: No “Pinch proof” is a
natural characteristic
of a naturally occurring
organism
Compound: Perhaps novel Allegedly novel compound,
Perhaps compound depending on the patent agent;
Better: with industrial application
4. Chemical Negrein: No No industrial
compound application yet
Catibein: Yes Medical use Catebein’s use; better if structure
is already available
5. “Magic” No No industrial
application yet
29. 4.0 The “chemical” claims
Our questions:
4.1 What are “chemical” inventions?
4.2 How are “chemical” inventions protected?
4.3 What can be claimed in “chemical” inventions?
4.4 What cannot be claimed in “chemical” inventions?
4.5 How to draft “chemical” claims?
30. 4.1 What are “chemical” inventions?
(1) They are not mechanical inventions. ^_^
Relatively tough to claim.
Differences between chemical and non-chemical (mechanical) claims:
Type/format Brief description Chemical Non-chemical
Jepson claims Basic two-part claim type √ √
Beauregard Generally used to circumvent √
claims unpatentability of software
Markush claims Claims species/groups √
Means-plus- Apparatus and its functional √
function features
Product-by- Chemical product as a product of a √
process process
Swiss type Equivalent of “second medical use” √
format in the Philippines
31. 4.1 What are “chemical” inventions?
(2) They encompass a broad range of inventions.
Based on “Claim Drafting in the Field of Biotechnology”
by Ms. Rosa M. Fernandez and Engr. Herminia T.
Maniquiz, PCARRD presentation, 30-31 August 2007.
32. 4.2 How to protect “chemical” inventions?
(1) File a patent application before publication.
Necessary if you intend to file through PCT, or in countries that require
absolute novelty.
Applicable if you intend to upload your sequences or compound
structures in public databases.
Practical re: “First to file rule”.
(2) Test and claim within the group, class, or category.
Applicable for chemical compounds (re: Markush claim).
May be applicable for microoganisms with potential antimicrobial use
(i.e., within the genus instead of species)
(3) Deposit microorganisms.
Budapest Treaty.
Find a suitable (read: cost-effective) depositary institution.
33. 4.3 What can be claimed in “chemical” inventions?
Three types of claims based on the subject matter
1. Claims to a physical entity
Entity Classes/sub-classes Examples
Products Chemical compounds, Insecticide compositions, Has broader
compositions proteins commercial
Microorganisms Vectors for plant application
transformation (conventional
patent agent
Apparatus Machine used to Gene gun view).
manufacture the products
2. Claims to an activity
Entity Classes/sub-classes Examples
Process Chemical production Biopesticide production
Method of application of a “Ballistic” biopesticide
chemical product
Use First use Biopesticide
Second use Biopesticide as foliar spray
3. Combination of both.
“Product-by-process”
34. 4.4 What cannot be claimed in “chemical”
inventions?
(1) Method of treating human or animal bodies.
Methods of surgery or therapy and diagnostic methods.
Any treatment or diagnostic method that will be carried out on the living
human or animal body.
(2) Lacking “industrial applicability”.
Method of contraception vs. “purely cosmetic treatment of a human by
administration of a chemical product”
- p. 55, Ch IV, 4.3, Manual of Substantive Examination Practice
35. 4.4 What cannot be claimed in “chemical”
inventions?
(3) Anything that is contrary to morality or public order.
Example 1: Abortion pill vs. medical drug.
Example 2: Dynamite to kill people vs. blast mountains for mining
purposes.
Example 3: Stem cell to create human parts vs. treat diseases.
Example 4: Sex enhancement drugs vs. medicine for sexual dysfunction.
36. 4.5 How to draft “chemical” claims?
(1) Spot the invention!
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
37. 4.5 How to draft “chemical” claims?
(2) Follow appropriate claim set format.
Preamble
Independent claim
Also known as (1)
main claim; (2)
mother claim.
The most important
claim in the set.
Characterizing portion
Dependent claims
Include all the features of
any other claim(s).
Contain a reference to the
other claim. (i.e., “according
to claim 1”, etc)
38. 4.5 How to draft “chemical” claims?
(3) Follow appropriate claim style.
Type/format Brief description Chemical Non-chemical
Jepson claims Basic two-part claim type √ √
Beauregard Generally used to circumvent √
claims unpatentability of software
Markush claims Claims species/groups √
Means-plus- Apparatus and its functional √
function features
Product-by- Chemical product as a product of a √
process process
Swiss type Equivalent of “second medical use” √
format in the Philippines
39. 4.5 How to draft “chemical” claims?
(3) Follow appropriate claim style.
Type/format Brief description Chemical Non-chemical
Jepson claims Basic two-part claim type √ √
Beauregard Generally used to circumvent √
claims About Jepson of software
unpatentability claims:
Markush claims Claims species/groups √
(1) Basic claim construction acceptable in the Philippines.
Means-plus- (2) Rule 416(a) its functional
Apparatus and and (b) on Patents define the two-part form √
function features a claim should adopt “wherever appropriate.”
which
Product-by- Chemical product as a product of a √
process Example:
process
Swiss type Equivalent of “second medical use” √
“1. A continuous on-line steam purity monitoring system for
format in the Philippines
geothermal power generation plants comprising the steps of
xxx, whereby the sodium concentration in the steam is used
as an indication of purity.”
(Philippine Pat. No. 1-2007-000448)
40. 4.5 How to draft Markush claims: claims?
About
“chemical”
(1) Usually used in chemical patents although also
(3) Follow appropriate claim style.
applicable in other fields.
(2) A "Markush claim" can be considered as a shortened
formulation of a claim. (Rule 605, Rules on Patents)
Type/format (3) Markush grouping is allowable only if all alternatives
Brief description Chemical Non-chemical
have a common property or activity AND a common
Jepson claims Basic two-part claim type √ √
structure is present. (Rule 605, Rules on Patents)
Beauregard Generally used to circumvent √
claims unpatentability of software
Markush claims Claims species/groups √
Means-plus- Apparatus and its functional √
function features Examples:
Product-by- Chemical product as a product of a √
process process “1. A composition comprising a copper compound
and a dimerised thiourea derivative of Formula
Swiss type Equivalent of “second medical use” √
format in the Philippines
wherein the two substituents R, which may...
(Manual of Substantive Examination and Practice)
41. 4.5 How to draft “chemical” claims?
About Product-by-Process claims:
(3) Follow appropriate claiminstyle. inventions, as a chemical
(1) Usually used medical
product can be characterized as the product of a
process. Acceptable if compound is new.
Type/format Brief description #1: Only when a process used is
(2) Application Chemical Non-chemical
Jepson claims Basic two-part claim typethe case of microorganisms.
repeatable, as in √ √
(3) Application #2: A recombinant vector, being a chemical
Beauregard Generally used to circumvent √
product, may be characterized by (i) its formula, (ii) as
claims unpatentability of software
the product of a process, (iii) a combination of
Markush claims √
Claims parameters, or (iv) composition of sub-parts. (p. 161,
species/groups
Means-plus- Ch. 7, Manual of Substantive Examination Practice)
Apparatus and its functional √
function features
Product-by- Chemical product as a product of a √
process process
Swiss type Equivalent of “second medical use” √
Example: format in the Philippines
“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)
42. 4.5 How to draft Swiss-type claims:claims?
About
“chemical”
(1) Equivalent of “second medical use” claim format in the
(3) Follow appropriate claim style.
Philippines.
(2) Allowed even if the compound is already known and the
medical use is also known, but a second medical use was
Type/format Brief description before.
not disclosed Chemical Non-chemical
(3) Some acceptable formats:
Jepson claims Basic two-part claim type √ √
(a) compound X for use as a medicament
Beauregard Generally (b) compound X for use as an analgesic
used to circumvent √
claims unpatentability of software for use in curing disease Y
(c) compound X
√
(d) medicament containing the compound X
Markush claims Claims species/groups
(e) use of X for preparing a medicament
Means-plus- Apparatus and its functional √
function features
Example:
Product-by- Chemical product as a product of a √
process process of an oculosurface selective glucocorticoid for the
“1. Use
Swiss type Equivalent ofof a topical ophthalmic composition for treating
preparation “second medical use” √
format in dry eye conditions, xxx wherein the oculosurface
chronic the Philippines
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)