Publications
 
PATENTS-DRAFTING OF CLAIMS
 
R.Muralidharan
Advocate & Patent Attorney
56/1,  4th Main, 18th Cross,
Malleshwaram, Bangalore – 560055
Phone : +91-(080) 3346166
Telefax: +91-(080) 3314404
e-mail: mailto:%20manumurali@eth.net
                 mailto:%20manumurali%20@justice.com


Importance of Priority date and the right of Indian nationals  to lodge a  provisional   specification. It is the duty of the patent lawyer to ensure that the applicant gets the earliest priority date. Remember ,the  world thinks that Alexander Graham Bell invented the phone.  Actually, he was the first one to patent while the inventor did not bother very much about it. However, foreign applicants do not have as right to lodge a Provisional Specification. In the case of Indian applicants it is always safer to file a Provisional Specification first, followed by a Complete specification within a year .Ideally, a Patent Specification involves  a synergy between the inventor and the patent lawyer. A Provisional Specification ,followed by the Complete Specification provides sufficient time for this .

Types of specification

 
 
PROVISIONAL
COMPLETE
1.
 Done to achieve the earliest priority  date need not contain claims.  This constitutes the date of Patent, if sealed.
2.
  When the invention itself is at the conceptual stage and a lot of fine tuning have to be done.  When the invention is ready to market or when everything about the invention is known.
3.
  Discloses the nature of invention the crux of it.  Discloses the best manner of performing the invention…
i.e. if you give this invention to a person skilled in the art, she must be able to perform the invention without further clarification.
4.
  It need not have details It must have all the details. 
5.
 Follow the format for drafting Provisional Specifications…

a)  Area of invention
b)  Status of PRIOR ART-
    i.e.  what is already known to the industry.
c)  Problems with the prior art…
d)  How this invention solves the problems.
e)  Description of the drawings 
f)   Drawings
 

 Format as in Provisional, but it must also have

f.   Statement of Invention
g.  Claims.
h.  Drawings.
 

How to protect an invention?
 
Assume that the inventor of the Ball pen refill has come to you, to protect his/her invention…Remember, the world does not yet know  the ball pen.
 
A ball pen comprises of two or more parts…,each one of them can be protected…,and they will have to be protected by different applications, as under law, an application can only relate to a single invention.

The crux of the invention, namely the ball pen refill comprise the following parts:

a)  a slender plastic tube, open  at  both  ends with  a diameter of 1.5 to 2.5mm,nothing novel in view of the fact that we know plastic/polyester or metal tubes of such nature, hence it cannot be protected…
 
b)  The invention really lies in the solid, yet flowing ink that has been made for the first time.  Hence, the solid ink, being a new chemical compound can be protected.  In India, we don’t permit the patentability of substances manufactured by a chemical reaction.  Hence, the process of making the special solid ink must be patented in India.  But, since this new invention is of universal application, a PCT application for the new ink, as well as the process must be made.
 
c)  In addition to the ink, the writing tip of the ball pen is new- this will also qualify for the grant of a patent…you need to typically define the ball pen writing tip as follows:

1.  A ball pen writing point made of any alloy of sufficient strength, that is sharp at the point which comes into contact with the paper, the sharpness varying from 2.5mm to5.00mm,as may be desired, the said sharp point having a minute aperture to facilitate the flow of the specially made ink, that is solid, the said ink stored in a slender plastic/polyester tube having a diameter of 3mm to 6mm and the other blunt end of the said writing point having screws/recess to fit into the slender plastic tube having the said ink…and to function as a pen that does not have solid ink.

This first claim is called the Main Claim.

Thee other claims are dependent on the main claim, and hence are called the dependent claims.
 
The last of the claims is usually called the Omnibus claim-this refers not only to the description in the body of the specification, but to the drawings as well.
 
In India, a mechanical device,like a pen refill must be defined  in terms of its

 a)  Parts/units.

 b)  how each of the parts/units is connected to each other

 c)  what is the role performed by each part/unit

 d)  how the various parts/units of the device discharge cumulative       

 e)  if needed the novelty can be pinpointed by a ‘characterization clause’

Once you introduce a spring to push the refill writing point out of the pen socket and to keep it within the casing when not in use, this is an improvement.  This would have to be protected by a separate application as this is a different invention.

Similarly, a Microtip pen, a further improvement of the writing point, but using a liquid ink absorbed in a sponge ,is a further  improvement and that would qualify for a new patent.