Patents claims

A patent must end with one or more patent claims which describe the patented subject matter as unambiguously as possible. Patent claims may be considered as the definition of the patent scope for legal purposes. The precedent patent description has to justify all aspects of the patent claims and will be used for this purpose during the examination process. But only in cases of doubt will details of the patent description be used later on to interpret the patent claims. Thus, patent claims must be formulated with the utmost care. The three basic requirements novelty, non-obviousness and utility have to apply to 

On the other hand, patent claims should read as broadly as possible to cover all patentable aspects of the invention. In practice, this conflict between the inventor s intention to keep patent claims as broad as possible and the public s interest to grant patents only on what has actually been invented, disclosed and reduced to practice, has led to the situation that patent applications contain rather broad claims which are subsequently narrowed down during the examination process. 

Since patent examiners on their own initiative cannot recommend to extend the scope of the proposed patent claims, it is probably best to reach for a maximum in the patent application and revise the claims according to the objections from a patent office. However, it is useless to go too far, e.g. by extending patent claims to mere principles, products of nature or undisclosed analogous subjects as well as to known and obvious things. 

Japan and the USA formally limit the protection of a patent to what is literally defined by the claims. In the USA equivalents are also covered by a patent, i.e. infringers using equivalents may be sued. Equivalence is defined by the US Supreme Court as doing substantially the same thing in substantially the same way to get substantially the same result (Graver vs. Linde, 339 U.S. 605, 608, 1950) as a patented invention without literally infringing it. 

The Doctrine of Equivalents applies to the interpretation of claims to establish infringement of existing patent rights in those cases where there is no literal infringement. Anything that comes under the definition of equivalents would have been patentable at the priority date (and should be included in the claims). Thus the Doctrine cannot be used as an argument to negotiate broader claims for a patent at the time of application or prosecution (Kushan, 1992). 

Humpty-Dumpty When I use a word, it means just what I choose it to mean-neither more nor less.  

Alice The question is, whether you can make words mean so many different things.  

Humpty-Dumpty The question is which is to be master - that s all.  

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Sulfomethylation. The reaction of formaldehyde and sodium bisulfite [7631-90-5] with polyacrylamide under alkaline conditions to produce sulfomethylated polyacrylamides has been known for many years (44—46). A more recent pubHcation (47) suggests, however, that the expected sulfomethyl substitution is not obtained under the previously described strongly alkaline conditions of pH 10—12. This C-nmr study indicates that hydrolysis of polyacrylamide occurs and the resulting ammonia reacts with the NaHSO and formaldehyde. A recent patent claims a new high pressure, high temperature process at slightly acid pH for preparation of sulfomethylated polyacrylamide (48). 

Patents claiming specific catalysts and processes for thek use in each of the two reactions have been assigned to Japan Catalytic (45,47—49), Sohio (50), Toyo Soda (51), Rohm and Haas (52), Sumitomo (53), BASF (54), Mitsubishi Petrochemical (56,57), Celanese (55), and others. The catalysts used for these reactions remain based on bismuth molybdate for the first stage and molybdenum vanadium oxides for the second stage, but improvements in minor component composition and catalyst preparation have resulted in yields that can reach the 85—90% range and lifetimes of several years under optimum conditions. Since plants operate under more productive conditions than those optimum for yield and life, the economically most attractive yields and productive lifetimes maybe somewhat lower. 

The final section of an issued patent is the claims, S. A United States patent is requited bylaw to have at least one claim. The claims lepiesent the legal definition and boundaries of the rights resulting from the patent grant. Patent claims are analogous to the legal description which one might find on a tide to real estate. 

Definiteness. Adequate description or definiteness requites that the patent claims provide an outline of those elements which are integral to the appHcation s invention. In turn, the specification acts as a dictionary wherein the reader can interpret and understand the elements in the patent claims. Complementary to the requirement of definiteness is the requirement that the appHcation must disclose the entire invention. The appHcant cannot make a claim of right to the invention where essential elements of the invention are not disclosed in the patent. 

The definiteness requirement serves notice to potential infringers as to the exact boundaries of the patentee owner s rights. Thus, a patent provides a record of what the inventor has brought to the technological field, and also provides other parties with notice as to what conduct is permissible in view of the patent claims. 

Once this process has been completed for each of the essential elements, patent claims maybe drafted which cover the invention. These claims will cover, in the broadest sense, only those elements of the invention which are essential. Narrower, more focused claims, however, should also be included within the patent appHcation. These claims may focus on aspects of the invention that the appHcant beHeves are preferred, or may otherwise represent essential aspects of any commercial product that will stem from the invention. Finally, claims should also be drafted to cover alternative forms of the invention. Such alternative forms of the invention may not necessarily be considered to be preferred commercially, but they may present an area where a competitor could attempt to engineer "around" the invention. 

In order to overcome rejections based on prior pubHcations or patents, the appHcant often must amend the patent claims to include aspects of the invention which are not found in the pubHcations cited by the examiner as a basis for the rejections. The appHcant may also wish to provide properties, characteristics, or advantages of the invention which are unexpected in view of these pubHcations and patents. 

Other concerns which may necessitate a review of a patent after issuance include the discovery of prior art which was not uncovered during the examination of the patent appHcation. A deterrnination should be made as to whether or not the claims in the issued patent are too broad when viewed in light of this prior art. It may also be the case that someone who participated in the examination of the patent appHcation discovered prior patents, Hterature, or activities which they knew of but did not cite to the patent examiner. In such an instance, this prior art must also be reviewed in light of the patent claims to determine whether the claims are too broad. 

The Certificate of Correction. Another mechanism for correcting the patent is the "Certificate of Correction," which is essentially a petition filed by the patentee to correct minor errors in the patent produced either by the U.S. PTO or inadvertentiy by the appHcant. Unlike the Notice of Errors, a Certificate of Correction does result in an additional pubHcation from the U.S. PTO, and anyone requesting a copy of a patent in which a Certificate of Correction has been filed will also obtain the Certificate of Correction. A Certificate of Correction reflects amendments made during the examination of the patent which were entered by the examiner but not found within the issued patent. The omission of such amendments can be in the body of the patent or in the patent claims. The Certificate of Correction may also be used to correct errors in the issued patent which were not present in the patent appHcation when it was filed. If the error was caused by the patent appHcant prior to or during examination, the patent appHcant bears the cost of filing and... 

J. L. Landis, Mechanics of Patent Claim Drafting 2nd ed.. Practising Law Institute, 1974. 

Reduction of Acids. Patents claim catalysts for the hydrogenation of neoacids in the vapor-phase to the neoalcohols in good yields. For example, neopentyl alcohol has been prepared by passing pivaUc acid (obtained by the Koch reaction of isobutylene) over a Cu0/Zn0/Al202 catalyst at... 

Metliylpyridine can also be prepared by the condensation of acrolein and ammonia. Yields of 40—50% are obtained with pyridine as a by-product. Higher yields have been claimed when both propionaldehyde and acrolein have been used. A recent U.S. patent claims better selectivity if the cyclization is carried out in the presence of 2eohtes (3). 

Some commercial durable antistatic finishes have been Hsted in Table 3 (98). Early patents suggest that amino resins (qv) can impart both antisHp and antistatic properties to nylon, acryUc, and polyester fabrics. CycHc polyurethanes, water-soluble amine salts cross-linked with styrene, and water-soluble amine salts of sulfonated polystyrene have been claimed to confer durable antistatic protection. Later patents included dibydroxyethyl sulfone [2580-77-0] hydroxyalkylated cellulose or starch, poly(vinyl alcohol) [9002-86-2] cross-linked with dimethylolethylene urea, chlorotria2ine derivatives, and epoxy-based products. Other patents claim the use of various acryUc polymers and copolymers. Essentially, durable antistats are polyelectrolytes, and the majority of usehil products involve variations of cross-linked polyamines containing polyethoxy segments (92,99—101). 

Electrochemical Process. Several patents claim that ethylene oxide is produced ia good yields ia addition to faradic quantities of substantially pure hydrogen when water and ethylene react ia an electrochemical cell to form ethylene oxide and hydrogen (206—208). The only raw materials that are utilized ia the ethylene oxide formation are ethylene, water, and electrical energy. The electrolyte is regenerated in situ ie, within the electrolytic cell. The addition of oxygen to the ethylene is activated by a catalyst such as elemental silver or its compounds at the anode or its vicinity (206). The common electrolytes used are water-soluble alkah metal phosphates, borates, sulfates, or chromates at ca 22—25°C (207). The process can be either batch or continuous (see Electrochemicalprocessing). 

Surprisingly, no fully detailed syntheses of pyridopyridazines by joining of two heteroatoms have been recorded, although a recent patent claimed the preparation of pyrido-[2,3-c]-, -[3,2-c]-, -[3,4-c]- and -[4,3-c]cinnolines by reduction of 2,2 -dinitro substituted phenylpyridines with a variety of reagents (80GEP2939259). 

More recently, permaleic acid has been recommended as a very satisfactory reagent for the Baeyer-Villiger reaction. It reacts almost as fast as trifluoroperoxyacetic acid and does not require buffering. Unfortunately, neither of these two reagents has been used extensively on 20-keto steroids a patent claims the conversion of progesterone to testosterone acetate with trifluoroperoxyacetic acid, but a later communication describes the ready reaction of 3-keto-A" -steroids with this reagent. 

A French patent claims the successful use of methanol for the 21-bromination of 17a-hydroxy-20-ketopregnanes as well as 21-bromination of 17-desoxy-20-ketopregnanes. This solvent has been successfully employed with dioxane dibromide as the brominating agent. 

Amino- and hydrazino-quinazolines exhibited antibacterial ac-tivity and a patent claim on the in vitro action of 2,4-diamino-quinazolines was rnade. The preparation of thiopegan derivatives as potential antimalarials and antibacterials deserves mention. Complete inhibition of influenza virus in vitro but not in vivo was shown by. 6,8-dichloro-2,4-dihydroxyquinazoline and other cyclic ureas. Activity against trachoma virus was also displayed by several 2-trichloromethylquinazolines. ... 

Patent, n. patent (in the proper sense cf. Ge-brauchsmuster). -amt, n. patent office, -an-meldimg, f. application for a patent, -an-spruchi m. patent claim, -anwalt, m. patent attorney, -beschreibung,/. patent description or specification, -blatt, n. patent gazette. -dauer, /. life of a patent, -ein-spruch, m. patent interference, patentfahig, a. patentable. 

The definition of the patented process offers the opportunity to an innovative chemist to develop a process which bypasses the original patent claims and offers a new legally clear route to an economically attractive product. 

To more fully exploit the key patent claim for the separate condenser, the firm avoided the use of high-pressure steam since it did not absolutely require a condenser. The patent claim for expansive use of steam without a condenser was used only as ammunition to restrict development in that field, although high-pressure steam replaced low-pressure steam during Watt s lifetime, and noncondensing systems... 

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