Drafting Patents

Question 1

What are the relevant factors that the Patent Office will consider when looking at a patent application?

Answer 1

Whether it is:
- Patentable subject matter
- Insufficient
- Claims not clear or concise
- Lack of unity
- Claims not supported
- Added matter

Question 2

What do the UK/National/UPC deal with?

Issues on…

Answer 2

• Infringement
• Validity

Question 3

What do the EPO deal with?

(problem)

Answer 3

Validity ONLY

Question 4

Under what grounds can an opposition arise (EPO)?

Answer 4

a100 EPC
- Not patentable subject matter
- Insufficient
- Added matter
- Claim broadening (a123(3) EPC)

Question 5

What are the main components required for a patent?

Answer 5

1. The description
2. The claims

Question 6

What is in the description?

Answer 6

• Title
• Field
• The prior art
• The statement of invention
• Intro to drawings
• Specific description
• Drawings
• Abstract

Question 7

How do you draft the description?

Answer 7

Structure - suff, a/m
Operation - suff, a/m
Fabrication - suff
Advantages - claim check
Variants - claim check, support

Question 8

How do you break down a claim when drafting?

Answer 8

Balance
1. Independent - the fundamental and inventive part of the invention
2. Dependent - the fall back features

Question 9

Is the claim for the product?

Answer 9

No

Claim is for the invention

Question 10

Where do you put the main point of novely?

Answer 10

In the first claim

Question 11

Do you mention the benefit in the claim?

Answer 11

No

You don’t need to state the benefit, just the part that gives rise to the benefit

Question 12

What goes in the claim?

Answer 12

• Point of novelty
• whatever else you need to put together your inventive step argument

Question 13

What is entailed in the CAFE test?

Answer 13

1. Spot the invention
2. Identify novel feature (validity)
3. Choose main category (infringement)
4. Name claim (infringement)
5. Add other features/interaction (validity)

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