PAPER DII NOTES



PAPER A NOTES AND TEMPLATE

1. Read the paper 3 times 2

2. What can you claim? 2

2.1. General 2

2.2. Claim types: 3

2.3. Types of invention: 3

2.4. PRODUCT CLAIMS 3

2.4.1. Intermediates 4

2.4.2. Product-by-process 4

2.4.3. Composition 4

2.4.4. Combination 5

2.4.5. Further product 5

2.4.6. Apparatus 5

2.4.7. Kit claims 5

2.5. USE / METHODS OF USING CLAIMS 5

2.5.1. 1st medical use 5

2.5.2. 2nd medical use 5

2.5.3. Combination therapy 6

2.5.4. 2nd non-medical 6

2.6. PROCESS CLAIMS 6

2.6.1. For making product 6

2.6.2. Methods in which product is used 6

2.6.3. Cosmetic methods 6

3. Read prior art 6

4. Final check 7

5. Template 8

ALWAYS PLAN CLAIMS PROPERLY IN ROUGH

( THIS WILL SAVE TIME IN THE LONG RUN!

Overview:

|Identify all documents on the platform |90m |

|- Is everything there that should be? | |

|- Client’s letter | |

|- Additional letter / information from client? | |

|- Prior art documents – how many? | |

|- Watch for “hidden” PA, cited in the letter or in the other PA documents | |

| | |

|Read and analyse the documents | |

|Determine subject matter to be claimed | |

|Draft independent claims |60m |

|Draft dependent claims |30m |

|Check the claims |15m |

|Draft introduction |30m |

|Draft supplementary note (if necessary) | |

|Final check |15m |

| |4h |

Read the paper 3 times

1. just read – absorb the invention

1. record key words and phrases

2. annotate / record AS YOU GO ALONG

3. record:

1. problems (P)

2. solutions (S)

3. disadvantages (D)

4. advantages (A)

5. objects to claim (O)

6. essential elements (E)

2. record the points of interest

3. record sentences/words that mean features are essential

1. must / has to be / should be / is / are / provided that / is necessary / have / only / is required

4. record features described as advantageous

1. preferred / preferably / typically / usually / for example / normally / optimal / suitable / advantageous / good / better / best results / especially / particularly / special mention / may be

5. Draw out the described invention

1. Diagrammatically

1. Exhaustively list all raw materials (objects) on the left hand side

2. Exhaustively identify all links (operations) between objects disclosed in the letter

3. Cross out all objects and all operations disclosed in PA

4. What remains is your independent claims!

2. Feature Table

1. Exhaustively list all features of all embodiments

2. Exhaustively list all features of all disclosures

3. Cross out all objects and all operations disclosed in PA

4. What remains is your independent product claim(s)!

5. Are there process claims also?

Write the independent claims out:

- Claim with fewest limitations == claim 1 (even if the scope of protection is narrower.

- Use the exact language of the letter and the prior art, do not invent language!

Ask yourself:

- What is the technical problem that I have identified

- Does it have the broadest possible scope

- When I compare my invention to the CPA does the ESSENTIAL DIFFERENCE actually solve that problem

- Is it a problem the applicant actually wants to solve

- Has the applicant told me NOT to claim something that still works anyway. Should I therefore include that in my claims

Then check:

Is my claim Novel

My claim must be associated with an advantage (for IS)

1. The PA should be completely silent as to the advantages of invention

2. The Invention should be quantitatively better (usually supported by data)

3. The PA may even teach away from invention

What can you claim?

1 General

DO NOT claims things the client tells you not to or says are not of interest

DO NOT claim things which have a negligible effect

Think about all possible independent claims – ESPECIALLY PRODUCT CLAIMS

Draw a spider diagram on A3

ALWAYS PLAN CLAIMS PROPERLY IN ROUGH!

- Independent claims

- Dependent claims

& number them

( THIS WILL SAVE TIME IN THE LONG RUN!

2 Claim types:

[pic]

3 Types of invention:

TYPE A – A substance which is applied to a target to achieve a beneficial effect

• Compound / composition / formulation / product by process?

• Process for making compound

• Use of compound

➢ Different formulae in product / method / use claims if novelty only PA?

➢ Where one of the process or use claims is independently inventive – unity?

TYPE B – A substance which is used to make a process work

• Product

• Process with product / process to make product

• Use of product for process

TYPE C – A substance that can be processed into a useful article

• Product / article / things comprising article

• Process for making product / article / things comprising article

• Of product in manufacture of article

➢ Must claim all products and articles made from products

4 PRODUCT CLAIMS

Is there a new product?

Product per se defined in terms of chemical structure

if this is not possible, then

Product per se defined in terms of physical parameters

(consider including test method, ASTM)

if this is not possible, then

“Product X having parameter Y determined by ASTM […]”

Product X obtainable by the process according to claim […]

(the big hint here is if the client says that they have a product which works well but they are not sure why)

Need product per se to be patentable

1 Intermediates

Is there a starting material/intermediate adapted for making the product?

Intermediate product per se (defined as above)

(does it have the same structural features and solve the same problem?

Product Y

• Inventive step follows “process effect” – i.e. if process is inventive the intermediates will be – T22/82

• T65/82 – intermediates of an analogy process must be independently inventive over structurally CPA

2 Product-by-process

Product X obtainable by the process according to […]

• The big hint for this one is the client says they have a product which is working well but they are not sure why

• Common where the product is a polymer, remember that product must be patentable in own right (T150/82) – it doesn’t become patentable by virtue of the new process

3 Composition

Is the product used in a composition of some sort?

A composition comprising product X and [...]

(is the product combined with a pharmaceutically/agriculturally acceptable excipient/carrier? – check examples, are you novel???)

(can the product be combined with something else to produce a synergistic new effect?)

A composition comprising product X and a carrier

• “A pharmaceutical composition comprising X and a pharmaceutical acceptable excipient / carrier”

• Can also include claims to the way composition is administered but remember “orally adminstrable” not “orally administered” of unallowable therapy step

• “An agricultural composition comprising X and an agriculturally acceptable excipient / carrier”

• “A polymerisable composition consisting / comprising monomers …

4 Combination

A combination comprising X and […]

• If the product / composition can be combined with something else to product a synergistic new effect

5 Further product

Does the product have an end marketable form?

• A contact lens comprising …

• A capsule comprising …

• A reactor lined with walls formed from …

6 Apparatus

A reactor for the particular reaction …

• If there is a new apparatus to make the product

7 Kit claims

Can the product be supplied as a part of a kit?

A kit comprising…

(components of the kit, when mixed together, have to provide a new joint effect which goes beyond the simple juxtaposition of the features)

(a product containing X and Y as a combined preparation for simultaneous, separate or sequential use in…therapy)

A kit comprising …

• T9/81 – for a kit claim to be valid, kit must have functional unity through a purpose directed application – the components of the kit, when mixed together, have to provide a new joint effect which goes beyond the simple juxtaposition of the two features

5 USE / METHODS OF USING CLAIMS

Use of X for …

1 1st medical use

Compound X for use as a medicament

• When the product has never been used in therapy before

• A.54(4) EPC, T128/82

2 2nd medical use

Compound X for use in the treatment of disease Y

• Compound previously known for a different therapeutic use

• A.54(5) EPC

• New 2nd medical use language required (no “Swiss-type” claims)

3 Combination therapy

A product containing X and Y as a combined preparation for simultaneous, separate or sequential use in the treatment of Z”

• T9/81

4 2nd non-medical

Use of compound X as a friction reducing additive / herbicide

• G2/88, G6/88 – Mobil oil

• Claim novel even where application inherently occurring in PA use as long as new application not appreciated

6 PROCESS CLAIMS

1 For making product

A process for making X comprising the steps of …

• May be novel and inventive in own right (e.g. increased yield)

• Analogy process – conventional process for making novel and inventive product (T119/82)

• Independent novel and inventive process and analogy process claims may have different scope as the analogy process must be limited to novel and inventive products – in this situation the two processes will lack unity

2 Methods in which product is used

A method of killing insects in which substance X is applied to weeds

3 Cosmetic methods

A process for preventing hair loss / weight loss to achieve a beneficial cosmetic effect wherein …

• T144/83 – weight loss case, patentable s-m because not something normally thought of as a desirable medical effect

Read prior art

Mark whether they are relevant for novelty only or for novelty and inventive step

1. does what is described fall within the description of client’s invention? – novelty

2. is the prior art solving a similar, or the same, problem? – inventive step

3. is it an accidental anticipation?

4. Is it A.54(3) EPC art?

Check if PA is enabling (e.g. discloses compound with no way of making it, T206/83, E.g. chem. abstracts gives structure and no synthesis) – BE CAREFUL

Identify CPA

Re-evaluate technical problem solved in view of prior art

Tick off features of client’s letter as they appear in PA

Novel claim must be associated with an advantage (for IS)

1. PA completely silent as to advantages of invention

2. Invention is quantitatively better (usually supported by data)

3. PA teaches away from invention

DISCLAIMERS???

DISCLAIMERS – use them to disclaim novelty only PA (i.e. PA not aimed at solving the same problem as your invention)

Make sure any disclaimer actually gives novelty (i.e. read prior art carefully!) and try to disclaim only what’s necessary (i.e. use wording from prior art).

Two- part format?

Look for any isolated examples that may be claimed (whilst maintaining unity of invention) which fall outside scope of claims limited in view of prior art.

Make sure compositions in % can add up to 100 % - add “the usual impurities” if not.

Only insert dependent claims to features with a genuine, stated advantage (not merely preferred for unspecified reasons).

Make sure claims singly dependent (i.e. compound of any one of claims X-Y).

If in doubt, go for a more restrictive approach rather than a “clever” attempt to get novelty (e.g. by arguing that the prior art is not enabling).

Avoid “suitable for” statements – wouldn’t use these in practice.

Be wary of changing “consists” to “comprises”.

If dismissed any particular claims, can mention in Notes to Client (can’t do any harm).

Final check of the claims

Prior art:

• Check PA carefully – remembering examples

• Is PA enabling? E.g. chem. abstracts gives structure and no synthesis

• What is actually disclosed? E.g. “R = C1-C6” discloses R = Me but not R = C6 as lots of isomers for this / “up to C4” does not disclose Me or Bu

Make the broadest claim number 1 – even if it is not a product claim.

When have main claim – CHECK IT IS NOVEL AND INVENTIVE

• Do all (Novel) examples/embodiments fall within the scope of the claim?

• Can I argue inventive step for each independent claim?

• Are all essential features included?

• Are the claims clear (A.84 EPC)?

• Are there any superfluous technical features?

• Ensure there is no free beer language “result to be achieved”

• Check that functional language is supported by the content of the paper

• Unity – do all the claims solve the same problem

• Are the dependencies OK – do the claims correctly cascade, no contradictions

Template

TITLE (optional)

Short, general

TECHNICAL FIELD / STATEMENT OF INVENTION

The present invention relates to [products], [processes for making them], [and their use in…]

(Keep brief – no advantages – just statements)

BACKGROUND OF INVENTION

General description of the field (usually supplied by the client)

(do for ALL prior art, even if in different field)

Identify the problems with the prior art (not derogatory).

Set up the problem ready for the problem-solution approach – need to have in mind our advantages.

The problem solved by the present invention is [….] The present invention solves this problem by [……] Neither D1 nor D2 teach or suggest that [..why not obvious…]

The subject matter of the invention also provides advantageous properties. In particular [….advantages…]

SUMMARY OF INVENTION

In a first aspect, the present invention provides a […] as defined in

In a second aspect the present invention provides a [….] as defined in

Do this for every independent claim.

The present invention solves all of the problems associated with the prior art and in particular………(indication of the advantages)

DETAILED DESCRIPTION

Preferably [ ] is [ ] because [STATED ADVANTAGE]

This section must provide basis for all of the dependent claims

Can mostly cut and paste the exam paper

Make sure that when cutting and pasting, you check the wording of the bits put in – don’t want any “we have done” type things

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