Filing high-quality patents – which involves drafting and preparing high-quality patent applications–- is the first and most important step in seeking protection for an invention. A well-prepared, high-quality application should result in a patent with a clear scope of protection, which can withstand the subsequent examination procedures and any potential challenges in invalidation proceedings or litigation, thus safeguarding the rights holder’s economic interests.
This chapter explores some of the key issues involved in drafting patent applications, from the perspective of the authors’ own practical experience and expertise.
An effective search can assist the inventor or a patent attorney in outlining the technical background to an invention and the relevant state of the art. Only then can the invention be sufficiently differentiated from the prior art and the differences between them expressly and sufficiently disclosed in the application. This in turn will make it much easier and more convenient for the applicant to respond to any office actions issued by the State Intellectual Property Office (SIPO) and counter any invalidation actions or infringement suits in the future.
Discovering similar technologies through the search can also help the applicant to highlight crucial technical aspects or information relating to its invention, especially with regard to improvements. If relevant references are found to anticipate some claimed subject matter during the search, the applicant should highlight and analyse in detail the differences between those references and the invention. Otherwise, the claimed subject matter anticipated by the references should be abandoned. In addition, if implementations or examples of certain subject matter are found not to be novel or to lack inventive step relative to the reference in the search, they should be excluded from the scope of protection of the claimed patent.
Seeking protection for technical solutions
China’s Patent Law essentially protects technical solutions. Generally, an invention involves multiple technical solutions. To obtain the broadest possible scope of protection and thus safeguard the applicant’s interests, it is important to understand the invention exactly and break it down into one or more technical solutions. By carefully outlining the technical problem to be solved and the technical effects to be achieved through each technical solution, the applicant can determine how these technical solutions or the various combinations thereof can be best protected in the application.
The patent attorney should communicate with the applicant to confirm the main solution(s) for which protection is sought from among these technical solutions. The applicant should also decide whether protection will be sought for any other technical solutions by separately filing further patent application(s), whether these will be combined into the main technical solution for affiliated protection or whether these will be kept as technical secrets. All of these decisions influence the filing strategy and drafting of the claims.
In determining the technical solution to be claimed, technical problems, technical effects and technical features should all be considered. These three aspects are organically interrelated. For any confirmed technical effect, an association should be established between the technical effect and certain specific technical features; in other words, what should be made clear is the technical features that bring about the technical effect. Any technical effect that cannot be explained, verified or derived should not be presented or adopted. Generally, the technical effect of an invention is first confirmed, following which the corresponding technical problem may be identified or summarised. It is possible for one technical effect or multiple technical effects to correspond to one technical problem. The technical effect could be a major technical effect or a minor or subordinate one.
The embodiments, which describe the process or construction of the detailed implementation of an invention, are an important part of the description or specification. They are crucial for sufficiently disclosing, understanding and working the invention, and for supporting and interpreting the claims.
Attention should be paid to the following requirements when drafting the embodiments:
- Concreteness – respective parts constituting a technical solution and the connection between them should be described in detail in the embodiments. The technical means or operational procedures of each embodiment should be concrete and implementable or workable. This generally requires the inclusion of information such as the name, experimental data, detailed processing procedures, results and corresponding technical effects of each product or method provided.
- Highlighting of key points – implementation procedures must always be described when drafting embodiments. However, it is not necessary to describe the structures or process of implementation for all features that constitute a technical solution. Instead, different technical features should be either specifically or simply described in a selective manner. There is generally no need to specifically describe a technical feature that is identical to the prior art (ie, which has been disclosed or is obviously known to those ordinarily skilled in the art). It will suffice to identify, in a simple manner, where this resides and to interpret its role in the requested technical solution. In contrast, for those technical features which are not disclosed in, or differ from, the prior art, a specific description is required.
Embodiments are drafted differently for different types of invention, as follows.
A ‘principle-oriented invention’ is an invention which is based on the discovery of the principles and rules underlying its subject matter. Therefore, embodiments of such inventions should be drafted with an explicit description of the recognised new principles or rules, and this description should comply with the corresponding laws of nature.
Following this description, concrete examples based on those principles should usually be provided, to demonstrate how the principles are embodied and how the pre-determined technical effects are achieved.
For experiment-oriented inventions, which are more common in the chemical field, it is often difficult to predict their possible implementations or implementing effects from the technical solutions alone; these must rather be confirmed or verified through their experimental results. Some products with unclear compositions or structures must also be defined through their performance parameters or manufacturing processes. Consequently, relatively more embodiments are often required for these inventions. In order to reduce the drafting workload, it is necessary to carefully select and compare these embodiments. Multiple embodiments are provided in order to facilitate the generalisation of the technical features which are closely related to implementation of the invention, and to eliminate those technical features which have little or nothing to do with the purpose of the invention.
Inventions of this type are more common in the mechanical and electrical fields. Insofar as the specific structures of products are involved, drawings of those products are usually required, such as mechanical drawings, circuit diagrams, functional block diagrams, flow diagrams and sequence diagrams. These are commonly presented in conjunction with the detailed description of the embodiments. Generally, a representative embodiment should be outlined in the process of drafting, with a variety of possible modifications and alternative solutions described.
The claims define the scope of protection to be granted for the invention and concretely represent or reflect the rights holder’s patent rights. The subject matter, manner of drafting, selection of terms, wording and phrasing of the claims can all affect the scope and effects of the patent right.
When drafting the patent claims, special attention should be paid to the following.
Determining the subject matter for which protection is sought
It is crucial to correctly determine and select the type of subject matter to be claimed when drafting the claims.
First, it should be determined whether the invention for which protection is sought is a product invention or a process invention. In the case of two or more inventions of different types, it should be decided which invention to focus on – the product invention or the process invention.
Product invention protection should generally be sought for any invention that is eligible for such protection, as it offers the strongest protection and is the easiest to enforce under the Patent Law. One of the most important principles in determining whether an invention is a product invention is whether it has revised (or improved) the structure or composition of the product in the prior art, or whether implementation of the invention is based on a new structure or composition.
Having determined that the invention is a product invention, it should then be determined whether any process invention is associated with it. The process inventions that may be associated with a product invention include processes for manufacturing, operating or using a product. A process invention can also exist in parallel with a product invention; in such cases it is generally considered that the product invention is only a way of implementing the process invention, which should be the core of the invention.
Making appropriate summarisation
There are usually two ways of summarising the technical solutions in the claims:
- refining and summarising the point of invention; and
- summarising the technical means.
The first of these involves summarising how the invention was conceived. This will generally follow one of two models. The first is where the invention is based on the discovery of certain new principles – that is, the inventor has discovered these new principles and their applications, and the entire technical solution is implemented on the basis of these principles. In this case the principles and their specific application must be outlined when summarising the technical solution.
The second model involves gradually removing certain features which have little or no connection with the conception of the invention, or no substantive impact on how the technical effect is achieved, based on a full understanding of the technical solution. This model is similar to that for discovery of the invention’s principles, in that it cannot be described through principles alone and must be reflected through a core solution.
The second – most common – way of summarising the technical solutions in the claims involves summarising multiple technical means adopted in detailed embodiments, mainly in three forms:
- general concept summarisation;
- parallel selection summarisation; and
- summarisation by functional or effective features. In this regard, it should be noted that use of functional or effective features under the patent laws of many countries is not without limitation, even though the scope of protection of the claims can be sufficiently extended where these are appropriately adopted. Generally, when summarising the structures of multiple implementations in a product invention with functional or effective features, it should be borne in mind that the definition of the function or effect is directed to one or multiple features of the technical solutions to be protected. The technical problems to be tackled by the invention should not be defined as functions also.
Technical solutions should be summarised at multiple levels when drafting claims, in order to secure different levels of protection and establish as broad a line of defence as possible both in the examination procedures and any subsequent invalidation proceedings.
Support by description
The scope of protection of the claims should be supported by the description. Adequate embodiments should be supplemented where the existing implementation or embodiments are insufficient to support the technical solution claimed by the applicant.
A broader scope of claims will not necessarily result in stronger protection for the invention. The ideal is rather a reasonable scope that is sufficiently supported by the description. Otherwise, the claims will remain unstable, even if the patent is granted. In this event, the applicant cannot enforce its rights with confidence and the patent may ultimately be vulnerable to invalidation.
A high-rise building must be built on solid foundations. Likewise, a patent application is examined – and a patent is granted, assigned, licensed and enforced – on the basis of the application initially drafted by a patent attorney. There will be no high-quality patent if the application is not carefully prepared. The patent attorney should thus be sufficiently flexible and skilful to prepare a high-quality application based on the specifics of the invention and the filing strategy, to ensure that the interests of both inventors and applicants are sufficiently protected.
Ke Li, Richard Yong Wang
This article first appeared in IAM. For further information please visit www.iam-media.com.