Patent claims requirements

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. 

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. 

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... 

A thornier issue than written description for ESTs and SNPs, however, is that of utility. Section 101 of the patent statute requires that the subject of a patent must be a "useful invention." Under the Guidelines, an application satisfies the utility requirement if the invention has "specific, substantial, and credible" utility such that "a person of ordinary skill in the art" would recognize the claim as credible "in view of disclosure [contained in the patent application] and any other evidence of record. .. that is probative of the applicant s assertions"(Utility Examination Guidelines, 2001). The Guide-... 

After its submission to a patent office, the patent application is briefly reviewed and, if all the required information is provided, a formal filing date is issued. A detailed examination of the patent will then be undertaken by patent office experts, whose assessment will be based upon the four main criteria previously outlined. A report is subsequently issued accepting or rejecting the patent claim. The applicant is given the opportunity to reply, or modify the patent and resubmit it for further evaluation. In some cases, two or three such cycles may be undertaken before the patent is granted (or perhaps finally rejected). 

The use of supported metal complexes in transesterification reactions of TGs is not new. An earlier patent claimed that supported metals in a hydroxylated solid could effectively catalyze transesterification. The catalyst preparation used an inert hydrocarbon solvent to attach transition metal alkoxide species to the support surface. The reaction, however, was carried out in the presence of water. The author claimed that water was essential in preparing materials with good catalytic activity. Among the metals employed, titanium catalysts showed the best activity. However, it was not clear from the preparation method if reproducibility could be easily achieved, an important requirement if such catalysts were to be commercially exploited. 

The company s lawyer responded, The prerequisites for patentability are different from whether your claim is covered by somebody else s claim. Patentability with respect to the prior art requires novelty and nonobviousness. Their issued claim is part of the prior art, and so it will be considered only for whether it renders our claim not novel or obvious. In the last substantive office action we read why the patent examiner thought that the prior art patent claim did not negate the patentability of our claim and for what it s worth, I completely agreed with his reasoning ... 

Without having the patent specification to read we can still manage a little detective work. We do know that the claim requires a pharmaceutical tablet. We also know that the claim requires a compound of formula I. We further appreciate that a pharmaceutical tablet is used for the administration to a subject for a pharmaceutical purpose. In this example, the pharmaceutical tablet being claimed contains the compound of formula I as its sole active ingredient. The purpose of the tablet, as inferred... 

The focus on the claimed invention is sensible from both policy and practical enforcement standpoints. It is not fair to grant a right to exclude that is greater than the scope of disclosure, but it s also not fair to require disclosure beyond the granted right of exclusion. If the patent claims only a composition then it is usually not necessary to describe the best way to make the compound the process to make the compound might even be the subject of a separate patent application or kept as the applicant s trade secret. In such a circumstance, the patent would need only to disclose those details that materially affected the invention as claimed. This issue will be specifically covered in our next case. 

Thus, in the year 1950, an inventor named Tolkmith (IS) presented a patent application claiming a certain methane phosphonic chloride. The only utility stated for the compound was that it was of value as an intermediate for the preparation of more complex phosphorus derivatives and as a constituent of a parasiticide. The Patent Office Board of Appeals in its decision, held that the applicant s showing of utility did not comply with Section 112 of the patent statutes requiring that the manner and process of making and using the invention be described in such exact terms as to enable one skilled in the art to make and use the same. The board went on to say ... 

Independent use patents offer the weakest patent protection. They almost invite others to seek possibilities to circumvent them and they do not cover the products that result from the invented new use. Wherever the necessary requirements are fulfilled, product patents should be applied for. In the first example given above, it seems hardly justified to construct product claims for (all) products made by the modified fermentation process. The excipient with adjuvant effects could probably be patented as a product patent, claiming "vaccines containing substance X as a novel adjuvant" with the non-obvious advantage of a better tolerability or efficacy over existing adjuvants. As for the third example, any advantageous characteristic of the resulting product may be used to justify a product patent. 

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... 

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