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 the Peripheral claiming approach. For the benefit of my readers who are not acquainted to these approaches, the central claiming approach defines the center of the patent or the heart of the patent. In such an approach, the scope of claim is dependent on the contribution of the Inventor.
On the other hand, the peripheral claiming system defines the boundaries of the invention where the scope of protection has to be defined by the patent seeker and he or she shall not be granted protection beyond what he or she seeks for, regardless of his or her extent of contribution to the technology.
Determining the scope of claim would have been a simple and objective process if the patent system had adhered to any one of these approaches. But today, most of the patent systems have evolved to accept a monstrous combination of these two approaches which leaves most of our patent analysts (including the drafter who drafts that claim) with no choice but to play the guessing game where they are obliged to rely on their gut feel and put up with the fear of unknown, praying and hoping to have guessed it right.
This uncertainty probably does not concern the patent offices because they are not obligated to determine the protection conferred to the patent. Since the scope of protection of a patent is not determined unless it is challenged in the court, most of the patents which come to life, if not challenged, expire without identity.
To be fair to the patent systems, they have tried to lay down some standards with regard to the clarity of the claims which in most cases can aid the calculative guess work to come to more probable inference with regard to the scope of protection. This blogpost generally looks at some of the provisions laid down with regard to clarity of claims in some of the celebrated patent systems.
Disclaimer: This blogpost contains mere observation with regard to a few relevant provisions in the patent law. It is not intended towards proposing any change in the systems.
United States Patent and Trademark Office
The patent law of the United States does not explicitly talk about clarity of claims. Having said that, 35 U.S.C. §112 contains a provision that states that the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. I would like to draw your attention to the phrase ‘distinctly claiming the subject matter’. This may be construed to be a clarity requirement where the drafter has to bring forth the crux of the invention clearly in the wording of the claim.
Furthermore through case laws the court has made it clear that the requirement of definiteness is analyzed in the light of the understanding the claim provides to the person having ordinary skill in the art (Miles Laboratories, Inc. v. Shandon Inc).
Moreover, the US patent courts have time and again stated that scope of claim shall be determined in the light of the claim wording, specification, prosecution history and state of art (Texas Instruments Inc. v. U.S. Inernational Trade Commission).
However, it must be noted that who the person skilled in the art is also usually determined by the courts when the patent is challenged. Hence, for patents those are not dragged into litigation, the determination of the level of understanding of the person with ordinary skill in the art may vary from person to person which certainly will make the determination of claim scope uncertain.
European Patent Office
Europe being an aggregation of states has over 27 patent systems with differential standards. And discussing each one of this may run in volumes. But to our relief we have the European Patent Convention, which determines the grant of most of the patents filed in Europe baring a small set of patents which are filed in the member states directly without adopting the EPC route.
Article 84 of the EPC states that a Patent claim shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description. A technical Board of Appeal decision (T 1055/92 – Clarity/Ampex Corporation) stated that the clarity requirement stated in this article shall be fulfilled if the claim used clear language that did not give rise to misinterpretation of its wording and the claim per se is clear of contradictions. Further more Rule 29 of EPC states that claims shall define the matter for which protection is sought in terms of the technical features of the invention.
In the light of Article 84 and Rule 29 we may be able to safely infer that the wording of the claim should specify the boundary of protection being sought. Having said that, the inference drawn from the claim wording, with regard to the scope of protection, may largely depend on the level of understanding of technology of the interpreter. This may lead to differential interpretation from person to person. This no doubt leaves uncertainty with regard to the scope of protection.
Indian Patent Office
Section 10 of the Indian Patent Act provides that every patent specification should fully and particularly describe the invention and its operation or use and the method by which it is to be performed. The section provides that the applicant should disclose the best mode of carrying out the invention. The patent law does not specify any more provisions relevant for claim interpretation. However, the Manual of patent practice and procedure (MPPP)does provide minimal guidelines in this respect. However, this should be relied on with a pinch of salt as it doesn’t have legal precedence.
Section 2.6 of the MPPP requires the invention to be described completely in the specification to enable a person skilled in the art to be able to carry out the invention by reading the specification.
Section 5.8.1a of the draft manual of Patent Practice and Procedure (Draft MPPP) states that each claim should be in a single sentence and should be clearly worded. This is no doubt ‘clarity of claims’ requirement. Furthermore, 5.8.1g of the draft states that the object of claims is to define clearly the scope of the invention with conciseness, precision and accuracy the monopoly claimed, so that others may know the exact boundaries of the area of protection in which they should not trespass. This mainly focuses on providing a legal certainty to the public with regard to the scope of claim. However, no guidelines have been provided to standardize the analysis of scope and hence any inference drawn with regard to the scope may be based on the interpreter’s level of understanding.
In conclusion, although all the three patent systems provided here have provisions which portray their bonafide intentions to enable the public to interpret the scope of claim, there is still uncertainty with regard to such interpretation and any conclusion drawn may be contaminated by the level of understanding of the interpreter.
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 the Peripheral claiming approach. For the benefit of my readers who are not acquainted to these approaches, the central claiming approach defines the center of the patent or the heart of the patent. In such an approach, the scope of claim is dependent on the contribution of the Inventor.
On the other hand, the peripheral claiming system defines the boundaries of the invention where the scope of protection has to be defined by the patent seeker and he or she shall not be granted protection beyond what he or she seeks for, regardless of his or her extent of contribution to the technology.
Determining the scope of claim would have been a simple and objective process if the patent system had adhered to any one of these approaches. But today, most of the patent systems have evolved to accept a monstrous combination of these two approaches which leaves most of our patent analysts (including the drafter who drafts that claim) with no choice but to play the guessing game where they are obliged to rely on their gut feel and put up with the fear of unknown, praying and hoping to have guessed it right.
This uncertainty probably does not concern the patent offices because they are not obligated to determine the protection conferred to the patent. Since the scope of protection of a patent is not determined unless it is challenged in the court, most of the patents which come to life, if not challenged, expire without identity.
To be fair to the patent systems, they have tried to lay down some standards with regard to the clarity of the claims which in most cases can aid the calculative guess work to come to more probable inference with regard to the scope of protection. This blogpost generally looks at some of the provisions laid down with regard to clarity of claims in some of the celebrated patent systems.
Disclaimer: This blogpost contains mere observation with regard to a few relevant provisions in the patent law. It is not intended towards proposing any change in the systems.
United States Patent and Trademark Office
The patent law of the United States does not explicitly talk about clarity of claims. Having said that, 35 U.S.C. §112 contains a provision that states that the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. I would like to draw your attention to the phrase ‘distinctly claiming the subject matter’. This may be construed to be a clarity requirement where the drafter has to bring forth the crux of the invention clearly in the wording of the claim.
Furthermore through case laws the court has made it clear that the requirement of definiteness is analyzed in the light of the understanding the claim provides to the person having ordinary skill in the art (Miles Laboratories, Inc. v. Shandon Inc).
Moreover, the US patent courts have time and again stated that scope of claim shall be determined in the light of the claim wording, specification, prosecution history and state of art (Texas Instruments Inc. v. U.S. Inernational Trade Commission).
However, it must be noted that who the person skilled in the art is also usually determined by the courts when the patent is challenged. Hence, for patents those are not dragged into litigation, the determination of the level of understanding of the person with ordinary skill in the art may vary from person to person which certainly will make the determination of claim scope uncertain.
European Patent Office
Europe being an aggregation of states has over 27 patent systems with differential standards. And discussing each one of this may run in volumes. But to our relief we have the European Patent Convention, which determines the grant of most of the patents filed in Europe baring a small set of patents which are filed in the member states directly without adopting the EPC route.
Article 84 of the EPC states that a Patent claim shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description. A technical Board of Appeal decision (T 1055/92 – Clarity/Ampex Corporation) stated that the clarity requirement stated in this article shall be fulfilled if the claim used clear language that did not give rise to misinterpretation of its wording and the claim per se is clear of contradictions. Further more Rule 29 of EPC states that claims shall define the matter for which protection is sought in terms of the technical features of the invention.
In the light of Article 84 and Rule 29 we may be able to safely infer that the wording of the claim should specify the boundary of protection being sought. Having said that, the inference drawn from the claim wording, with regard to the scope of protection, may largely depend on the level of understanding of technology of the interpreter. This may lead to differential interpretation from person to person. This no doubt leaves uncertainty with regard to the scope of protection.
Indian Patent Office
Section 10 of the Indian Patent Act provides that every patent specification should fully and particularly describe the invention and its operation or use and the method by which it is to be performed. The section provides that the applicant should disclose the best mode of carrying out the invention. The patent law does not specify any more provisions relevant for claim interpretation. However, the Manual of patent practice and procedure (MPPP)does provide minimal guidelines in this respect. However, this should be relied on with a pinch of salt as it doesn’t have legal precedence.
Section 2.6 of the MPPP requires the invention to be described completely in the specification to enable a person skilled in the art to be able to carry out the invention by reading the specification.
Section 5.8.1a of the draft manual of Patent Practice and Procedure (Draft MPPP) states that each claim should be in a single sentence and should be clearly worded. This is no doubt ‘clarity of claims’ requirement. Furthermore, 5.8.1g of the draft states that the object of claims is to define clearly the scope of the invention with conciseness, precision and accuracy the monopoly claimed, so that others may know the exact boundaries of the area of protection in which they should not trespass. This mainly focuses on providing a legal certainty to the public with regard to the scope of claim. However, no guidelines have been provided to standardize the analysis of scope and hence any inference drawn with regard to the scope may be based on the interpreter’s level of understanding.
In conclusion, although all the three patent systems provided here have provisions which portray their bonafide intentions to enable the public to interpret the scope of claim, there is still uncertainty with regard to such interpretation and any conclusion drawn may be contaminated by the level of understanding of the interpreter.
