Mechanics of Claim Construction and Drafting PDF

MECHANICS OF CLAIM
CONSTRUCTION AND
DRAFTING
Connexios Life Sciences Pvt. Ltd.
QUID PRO QUO

PATENT SYSTEM
RIGHTS v. DUTY
DUTY
SPECIFICATION
DESCRIPTION
SUFFICIENCY
ENABLEMENT
BEST MODE
CLAIMS
CLEAR AND UNAMBIGUOUS
Connexios Life Sciences 2010
CLAIMS
Claims define the metes and bounds of an invention

Claim Limits the extent of protection
What is not claimed is disclaimed!
Claims determine the value of your patent
Each claim is a representation of your invention.
Single sentence ending with a period.
The Drafters Dilemma
Implications of
Claiming too broadly
Claiming too narrow
Claiming just right:

This is an art and requires lots of imagination
Claim must be adequately supported by the
description
Must avoid
Not claiming what the client wants
Claiming what the client does not use or need
One way road
Cannot broaden the claims of a granted

patent
Cannot broaden the disclosure and the
claims beyond what has been included
when drafting the application that was
filed
You are responsible for getting the scope
of protection the inventor deserves
You do not get a second chance
PARTS OF CLAIM
Three parts
Introductory Phrase
Introduces
the subject matter of the invention
Body
defines
a particular embodiment of the invention
Transition
Phrase
joins
the introductory phrase and the body of

claim
Open ended v. close ended claims
Example
Example
I claim a pencil having an eraser fastened
to one end.
Introductory phrase - a pencil
Transition phrase having
Body an eraser fastened to one end
TYPES OF CLAIMS
Independent Claims
Do
not depend on any other claim

Generally defines the essential novel
features of the most preferred
embodiments of a product or a process.
A
pencil having an eraser fastened to one end.
TYPES OF CLAIMS
Dependent Claims
Depend on either an independent claim or another
dependent claim
Multiple-dependent claims
The pencil as in claim 1, where said eraser is

fastened to said pencil on one end using an
adhesive.
The pencil as claimed in claim 1 and 2 wherein

the said adhesive is glue.
TYPES OF CLAIM
Process Claims
A
Process Claim is used for process

inventions and has to clearly define the
steps involved in the process.
Product Claims
A
product claim may be claimed as an

apparatus, a system, a device, an article or
any other product.
OTHER CLAIM TYPES
Markush Claims
Product by process claims
Fingerprint claims
Structure Claim
Composition Claim
Gene Sequence claim
Diagnostic method claim
REMEMBER
To Generalize is the Key
Exercise
Describe
The Cat Sat on the Mat
Prior Art to be excluded
In other words.
The feline mammal occupying, a wholly
if not entirely sedentary position, a
horizontally-spread woven textile floorcovering, as is sometimes but not always
the case".
In your booty
Take home 1
Generalize to such an extent that your
patent is close to prior art but can be
clearly differentiated from the prior art
CHEMICAL AND
PHARMACEUTICAL CLAIM
DRAFTING
TYPES OF CLAIMS
Product claims
Process claims
PRODUCT RELATED CLAIMS
New Chemical entity including a

molecule or a compound
Combination
Compositions
NEW CHEMICAL ENTITY

CLAIMS
A chemical molecule developed in the

early discovery stage which later
translates into a drug product is generally
referred to as a new chemical entity.
Actual molecular structure of the NCE in the

claim
Actual Structure example
A compound having the formula
Scope of protection rendered by the claim stated in the

illustration is limited to the compound bearing the molecular
structure.
MARKUSH TYPE CLAIM
Include a chemical entity along with the

various variants of the same
Close ended claims
Claim by grouping
Example: Markush claim
A compound having the formula
Wherein X is selected from a group consisting of Cl, Br, F and I.
FINGERPRINT CLAIM
When the exact structure is not known but

the characteristics of the structure is
sufficient to distinguish the compound
from existing prior art.
e.g.:
What is claimed is
A chemical entity characterized by molecular
weight of 280, having a pH of 6.5, which has a
melting point of 123 degree Celsius and a boiling
point of 180 degree Celsius.
PRODUCT BY PROCESS
CLAIM
When the product cannot be clearly
defined and is best defined by the
process of preparing the same
eg. Polyjuice Potion
Example
Polyjuice potion:
A potion that transforms one person to another

person he desires to look and sound like
What is claimed is a potion prepared by:

Mixing 12 lacewing flies that have been stewed for
21 days;
1 ounce of crude Antimony;
4 leeches that have been unsucculated;
1 pinch of powdered horn of a Bicorn that has been
"lunar extracted; and
Extract of The-Transfigured-Being-To-Be
followed by 21 days of brewing in a oak barrel.
OMNIBUS CLAIMS
Reference is made to the specification

Usually not allowed in most jurisdiction
Its a play safe claiming strategy
Example
A compound for treating Hemophilia,

wherein the compound is substantially
as discussed in the specification.
CHEMICAL COMPOSITION OR
COMBINATION CLAIMS
Novel Combination product patents

including two or more already known
chemical compounds.
These compounds may be available in the

public domain. But so long as the
combination is novel, they can be
patented.
A composition claim usually shall include

several components both essential and
non essential for the invention.
Example 1
What is claimed is
A shampoo composition comprising
a. 25 % of Alkyl ether sulphate;
b. 10% of Dimethicone;
c. 2% of imidazole and
d. 63% water.
Example 2
What is claimed is
1. A shampoo composition comprising
20- 30% of at least one Surfactant;
5-15% of at least one conditioning agent;
1-3% of at least one anti fungal agent and
water.
2. The shampoo composition as claimed in claim 1,
wherein the antifungal agent is selected from a group
consisting of pyrazole, imidazole, triazole, tetrazole
and pentazole.
3. The shampoo composition in claim 1 wherein said anti
fungal agent is imidazole.
Example 3
A shampoo composition comprising

20- 30% of at least one Surfactant;
5-15% of at least one conditioning agent;
1-3% of at least one anti fungal agent and
Water
wherein the antifungal agent is selected from a group
consisting of pyrazole, imidazole, triazole, tetrazole and
pentazole.
PROCESS RELATED CLAIMS
A process claim enumerates the step

wise process for manufacturing the
compound or formulation
Steps to be enumerated in the logical

order.
Example
A process for preparing a modified

phosphocalcic compound comprising:
a) adding a gem-biphosphonic acid or an alkali metal or

alkaline-earth metal salt thereof to a suspension of a
precursor phosphocalcic compound in ultrapure
water;
b) stirring the reaction medium at room temperature
and
c) recovering the formed compound there from by
centrifugation.
Exercise 1
Biphenyl Propionic acid
Rough Structure
Sample for Exercise 1

A compound wherein the compound is
What is claimed is a compound wherein

ring P is an aromatic ring optionally having substituent(s),
ring Q is an aromatic ring optionally further having substituent(s)
besides YCOOH,
and X and Y are each independently a spacer, or a salt thereof or a
prodrug thereof.
Take Home 2:
Nothing is unfair when you define the

scope of your invention.
Examiners are always stingy
BIOTECHNOLOGY CLAIMS
TYPE OF CLAIMS
Product related claims

Process related claims
PRODUCT RELATED CLAIMS
Gene sequence
Amino Acid sequence
Vector and host used for expression of
the gene
An antibody against the protein /
sequence and a kit made from the
antibody / sequence
GENE/AMINO ACID
SEQUENCES: Example: 1
What is claimed is
An isolated nucleic acid comprising a nucleic

acid sequence
ATGGGCCTAACGTGAGGGAATTCGAAATT
Or
What is claimed is
An
isolated nucleic acid molecule comprising a

nucleic acid Sequence of SEQ ID no. 1.
GENE/AMINO ACID
A nucleic acid molecule comprising a

nucleic acid sequence that hybridizes to
SEQ ID no.1 under stringent conditions.
GENE/AMINO ACID
SEQUENCES:
Example: 3
A nucleic acid molecule comprising
1) SEQ ID no.1
OR
2) a nucleic acid sequence that
hybridizes to SEQ ID no.1 under
stringent conditions
GENE/AMINO ACID
What is claimed is
An isolated nucleic acid molecule which
encodes a polypeptide comprising the
amino acid sequence
Met Ala Asp Asp Cys Glu Phe Val Gly Ser Ala
Val
Or
An isolated nucleic acid molecule which

encodes a polypeptide comprising the
amino acid sequence of SEQ ID NO 2.
OTHER CLAIMS
Vector:
A vector comprising a nucleic acid molecule

as claimed in Claim 1.
Host Cell:
A
transgenic host cell that contains the

vector comprising a nucleic acid molecule
comprising the nucleic acid sequence of
SEQ ID no.1.
ANTIBODY
Isolated Antibody:
An isolated antibody or fragment thereof
comprising the amino acid sequence of
of SEQ ID no. 2.
Antibody Kit:
A
kit comprising the antibody or

fragment thereof of claim 1.
PROCESS RELATED CLAIMS
Method of expression claims

Biotechnological process claims
METHOD OF EXPRESSION
CLAIMS
A method of expressing a target protein or
polypeptide comprising the steps of:
A) transfecting a host cell with the expression

vector of claim 2;
B) culturing the host cell transfected with the
expression vector under conditions that
permit expression of the target protein or
polypeptide; and
C) isolating the target protein or polypeptide.
BIOTECHNOLOGICAL PROCESS
CLAIMS
A process for making an insulin precursor or
an insulin analog precursor, said method
comprising
(i) culturing a host cell comprising a
polynucleotide sequence encoding an insulin
precursor or an insulin analog precursor
according to claim 1 under suitable culture
conditions for expression of said precursor;
and
(ii) isolating the expressed precursor.
DIAGNOSTIC METHODS
Product
Process
PRODUCT
A diagnostic kit used for detecting malaria
antibodies in a biological sample comprising of
the protein encoded by SEQ ID NO.1 where the
said protein is brought in contact with the
biological sample under appropriate conditions
which allow the formation of an immune
complex, wherein said peptide is labeled with a
detectable label.
PROCESS
A method for in vitro diagnosis of malaria
antibodies in a biological sample, comprising
(i) contacting said biological sample with a
composition comprising a protein encoded by
SEQ ID no1 under appropriate conditions which
allow the formation of an immune complex,
wherein said peptide is labeled with a detectable
label, and
(ii) detecting the presence of said immune
complexes visually or mechanically.
Exercise 2
An isolated nucleic acid encoding a
flavonoid methyltransferase molecule
bearing the SEQ ID no 1 and its amino
acid sequence bearing SEQ ID no 2
Sample Claim Exercise 2

An isolated nucleic acid molecule according to any
one of claims 1 to 3 having the nucleotide
sequence comprising:
(i) a nucleotide sequence set forth in SEQ ID NO:1;
(ii) a nucleotide sequence capable of hybridizing
under low stringency conditions to SEQ ID NO: 1 or
its complementary form;
(iv) a nucleotide sequence capable of encoding the
amino acid sequence set forth in SEQ ID NO:2;
wherein said nucleotide sequence encodes a FMT
molecule or a mutant, part, fragment or portion
thereof or a functional and/or structural equivalent
or homolog thereof.
MULTILATERAL
APPLICATION
Claim Dependency
First Medical Use
Second Medical Indication/Swiss Claim/New Use
claim
Process Claims
Product by process
Gene Sequence: Isolated and Purified/Synthetic
Method of treatment, Diagnosis
Combination Claim
DRAFTING TIPS
Pre drafting
Understand the invention
Identify the crux of the invention
Consider all possible embodiments
Plan the structure
Play the role of a devils advocate
DRAFTING TIPS
While Drafting
Keep the inventor informed.
Draft Claim outline before starting to draft the
description. Finalize the claim after
specification is drafted
Avoid Unnecessary information
Keep in mind the level of PHOSITA while
drafting the claim.
Final Take home:
Be frugal with words

Clarity
Every word Anchored
Be greedy, But do not lose focus of what
your invention is
Remember, Its all about:

PRECISION!
CLARITY!
IMAGINATION!
FORESIGHT!
Final Exercise:
Herbal formulation with melon extract:
Exercise 3
Herbal Preparation
The medicinal preparation comprises of:
1.
2.
3.
4.
5.
Melon Extract (40%)

Aloe Vera Extract (10%)
Saffron (5%)
Papaya extract (20%)
Water
Sample claims
1. A personal care composition comprising of
a) 20-60% of melon extract;
b) 0-10% of moisturizing agent;
c) 3-7% of anti oxidative agent;
d)10-30% of cleansing agent; and
e) a suitable solvent.
1. The personal care composition claimed in claim
1 where in the said cleansing agent is selected
from a group consisting of papaya extract,
cucumber extract and strawberry extract.
2. The personal care composition claimed in claim
1 and 2 where in the cleansing agent is papaya
extract.
Sample claims
4. The personal care composition claimed
in claim 1, where in the composition is
administered as a serum.
5. The personal care composition claimed
in claim 1, where in the composition is
used for treatment of vitiligo.
THANKYOU FOR YOUR

PATIENCE
Vinita Radhakrishnan
Manager, Intellectual Property,
Connexios Life Sciences Pvt. Ltd.
vinita.r@connexios.com

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MECHANICS OF CLAIM

QUID PRO QUO

CLEAR AND UNAMBIGUOUS

Connexios Life Sciences 2010

Claims define the metes and bounds of an invention

Connexios Life Sciences 2010

The Drafters Dilemma

Claiming just right:

Connexios Life Sciences 2010

One way road

Cannot broaden the claims of a granted

the subject matter of the invention

a particular embodiment of the invention

the introductory phrase and the body of

Connexios Life Sciences 2010

Connexios Life Sciences 2010

Connexios Life Sciences 2010

not depend on any other claim

pencil having an eraser fastened to one end.

Connexios Life Sciences 2010

The pencil as in claim 1, where said eraser is

The pencil as claimed in claim 1 and 2 wherein

Process Claim is used for process

product claim may be claimed as an

Connexios Life Sciences 2010

OTHER CLAIM TYPES

Connexios Life Sciences 2010

Connexios Life Sciences 2010

Connexios Life Sciences 2010

Connexios Life Sciences 2010

The Cat Sat on the Mat

Connexios Life Sciences 2010

Prior Art to be excluded

Connexios Life Sciences 2010

Connexios Life Sciences 2010

Connexios Life Sciences 2010

Connexios Life Sciences 2010

Connexios Life Sciences 2010

Connexios Life Sciences 2010

PRODUCT RELATED CLAIMS

New Chemical entity including a

Connexios Life Sciences 2010

NEW CHEMICAL ENTITY

A chemical molecule developed in the

Actual molecular structure of the NCE in the

Connexios Life Sciences 2010

Actual Structure example

A compound having the formula

Scope of protection rendered by the claim stated in the

MARKUSH TYPE CLAIM

Include a chemical entity along with the

Connexios Life Sciences 2010

Example: Markush claim

A compound having the formula

Wherein X is selected from a group consisting of Cl, Br, F and I.

Connexios Life Sciences 2010

When the exact structure is not known but

Connexios Life Sciences 2010

eg. Polyjuice Potion

Connexios Life Sciences 2010

A potion that transforms one person to another

What is claimed is a potion prepared by:

Reference is made to the specification