Nuances in Patent Claim Scope

Vikram Pratap Singh Thakur vikram@brainleague.
com
Copyright 2012, Intellecture
Introduction to claims
Patent claim types

Claim construction and application Scope of protection
Part of patent specification Heart and soul of an invention Defines the metes and bounds of an invention
Copyright 2012, Intellecture 3
The central claiming system

claims identify the "centre" of the patented invention Protection on the basis of the inventors contribution
The peripheral claiming system

claims identify the exact periphery, or boundary of the
conferred protection Protection on what is claimed Allows for easy infringement analysis
Purely central or peripheral claiming system does not exist.

Preamble
Transition phrase Body
A gel composition for treatment of pain comprising; 2-10 percent by weight Benzocaine and atleast one of propylene glycol and glycerine as a cosolvent.
Preamble A gel composition for treatment of pain Transition Phrase comprising Body 2-10 percent by weight Benzocaine and at least one of propylene glycol and glycerine as a co-
solvent.
Claim elements
2-10 percent by weight Benzocaine
Propylene glycol or Glycerine
Introduces the invention It sets out the basic class of the invention Remove ambiguity as far as possible
Example 1. apparatus for shaking articles to dislodge impurities comprising... 2. apparatus for shaking articles to dislodge impurities, the apparatus comprising...
Connects the preamble to the body
Defines how to interpret the elements

Two types of transitional phrases
Open ended Comprising Closed ended Consisting of Consisting essentially of
It recites the elements that define the invention Describes how these elements structurally, physically or functionally co-operate with each other to make the invention or how the elements should be interconnected All the unnecessary elements should be removed which will limit the claim
Independent
Stand on their own E.g. - A gel composition for treatment of pain comprising
Dependant
Depend on another claim The gel as claimed in claim 1, wherein .... Advantage Clarifies the independent claim language claim differentiation Stand after a possible invalidity of the base claim
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Product claim

New chemical entity Claimed generally by structure or name A compound of general formula X Considered superior claim type
Process (method) claim

Steps performed If no order expressed, no order is claimed Avoid numbering or using terms suggesting specific order,
unless important E.g. Claim 1 - A process for treating the surface of a polyethylene article to increase its receptivity to a printing ink, which comprises
Markush claim
Eugene Markush the first inventor to use it successfully in a US
Patent application. An alternative to writing or in claims selected from the group consisting of A, B, and C. define alternative chemical ingredients - have a common property useful in the combination claimed
E.g. Claim 1 - A process for treating the surface of a
polyethylene article to increase its receptivity to a printing ink, which comprises: exposing the surface of the article to a saturated solution of sodium dichromate in an acid selected from the group consisting of concentrated sulfuric, nitric and phosphoric acids.
Product by process claim

product cannot be described in any other manner
than by the process by which it was made Product to be novel and non-obvious Disadvantageous in comparison to product claims
Infringement product and process; Invalidate - product
"Product obtained by the process of claim X,"
E.g. 8. A polyethylene article having a surface
treated in accordance with the process of claim 5.

Omnibus claim
Involves giving a reference to the description or the
drawings without stating explicitly any technical features "An x as shown in Figure y Not allowed in US Not allowable, unless absolutely necessary (Europe) No legal basis - desirable to avoid (India) described in the specification with reference to the accompanying drawings
E.g. An apparatus substantially as herein above
Swiss type claim

cover the subsequent medical use of a known
substance or composition "Use of substance X in the manufacture of a medicament for the treatment of condition Y EPO Swiss type claim format no longer acceptable
"A product X for the treatment of disease Y"
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Intrinsic factors
Specification
Prosecution history
Extrinsic factors
Dictionary Encyclopaedia
Expert testimony
Why claim construction?
- Amazon.com v. BarnesandNoble.com (Fed. Cir. 2001)
"The court must properly interpret the claims, because an improper claim construction may distort the infringement and validity analyses."
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PATENT
A gel composition for treatment of pain comprising; 2-10 % by weight Benzocaine in atleast in part as the free base; and atleast one of propylene glycol and glycerine as a solvent.

PRODUCT
A gel for treating neuropathies causing pain at a site by inducing analgesia. The gel is administered intradermally. The gel has 10 % by weight of Benzocaine and glycerine as solvent.
Infringing?
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Claim Construction Comparison Claim by claim B X A
element by element
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PATENT
A gel composition for treatment of pain comprising; 2-10 % by weight Benzocaine in atleast in part as the free base; and atleast one of propylene glycol and glycerine as a solvent.

PRODUCT
A gel for treating neuropathies causing pain at a site by inducing analgesia. The gel is administered intradermally. The gel has 10 % by weight of Benzocaine and glycerine as solvent.
Infringing?
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PATENT
PRODUCT
What I claim is a gel composition for treatment of pain comprising;

2-10 % by weight Benzocaine in atleast in part as the free base; and propyl paraben.
A gel for treating neuropathies causing pain at a site by inducing analgesia.

The gel is administered intradermally. The gel has 10% by weight of Benzocaine and methyl paraben.
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In substance equivalent
if the infringing goods are made with the same
1 literal scope boundary

2 range of equivalent 3 accused product
object in view which is obtained by the patented product, then a minor variation does not mean that there is no infringement. A person is guilty of infringement if he makes what is in substance the equivalent of the patented article - Raj Prakash Vs. Mangat Ram (1977)
Function / Way / Result Test

The doctrine of equivalents is founded on the
theory that, if two devices do the same work in substantially the same way and accomplish substantially the same result, they are the same, even though they differ in name, form or shape. - Graver Tank & Mfg. Co. V. Linde Air Products Co. Copyright 2012, Intellecture
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The differences between the accused product or process and the claimed invention must be "insubstantial."
The range of equivalents granted under the doctrine cannot extend so far as to ensnare that which was publicly done before the "prior art.
1 literal scope boundary

2 range of equivalent 3 prior art
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The patentee cannot recapture subject matter relinquished during the application process (under the doctrine of prosecution history estoppel). PHE bars application of DOE
Facts

a filtering process for the purification of a dye solution Amendment by patentee (pH 6-9) Alleged infringing process (pH 5) Infringement under Doctrine of equivalents ?
Amendment during prosecution:

purpose not related to patentability demonstrated court
decides based on purpose Patent holder unable to establish purpose estoppel applies
Hilton Davis v. Warner Jenkinson case
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Process of treating dry fruits Elements

Sulphuric Acid - Washing Soda
Bleaching powder (3%) Bleaching powder (4.5%) Acetic acid - muriatic acid Sulphur dioxide fumes under pressure - Sulphur
dioxide fumes without pressure

Lallubhai v. Chimanlal case
Patent
heating the resulting batter-coated dough to a
temperature in the range of about 400 F to 850 F.
Product
Dough is heated at a temperature at 400 F.
Infringement?
Case - Chef America V. Lamb Weston
Claim 1. A hydrosol which comprises solid particles of a cyclosporin and a stabilizer which maintains the size distribution of said particles
Cyclosporin not very soluble in water, difficult to administer

Cyclosporin formulation as a hydrosol Hydrosol in injectable form
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Product is in the form of a capsule that contains cyclosporin dissolved in a small amount of ethanol instead of water. Hydrosol formation, when ingested Infringing?
Novartis Pharmaceuticals Corp. v. Eon Labs Mfg. 363 F.3d 1306 (Fed.Cir., 2004)
Broad definition
a dispersion of solid particles in aqueous colloidal
solution formed in the patients stomach
Limited definition
medicinal preparation formed outside the body.
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Formulation containing moxifloxacin and sodium chloride
US
1, 8 and 9
1. Aqueous formulation, comprising moxifloxacin hydrochloride and sodium chloride. 8. A method of treating or preventing a disease comprising administering to a host in need thereof an effective amount of an aqueous solution ... 9. A combination preparation comprising an aqueous solution of moxifloxacin hydrochloride and an aqueous solution comprising sodium chloride...
Europe and India

1 and 9
Patents referred:

EP1206281 US6548079 IN214011
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Aripiprazole complex formulation and method
US
1, 4, 22 and 24
1. An inclusion complex of aripiprazole in a substituted beta- cyclodextrin.
Europe
1, 4, 24 (corresponding
4. A pharmaceutical formulation comprising aripiprazole and a substituted (3-cyclodextrin.

22. A method for administering injectable aripiprazole to a patient in need of treatment 24. A method of treating schizophrenia, which comprises administering [US]
22. Use of the formulation as defined in Claim 5 for
claims swiss type see claim 22 in EP patent)
India
4 (including limitations)
Patents referred:

the manufacture of a medicament for treating schizophrenia (Europe)
EP1542668 US7115587 IN244698
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Think from the worst possible scenario of infringement
The infringer should have a great difficulty in designing around the claims. Clearly define claim terms in the specification.
Be cautious when responding to Examination reports Include claim types based on the countries of interest
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Nuances in Patent Claim Scope

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Nuances in Patent Claim Scope

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Vikram Pratap Singh Thakur vikram@brainleague.

Copyright 2012, Intellecture

Patent claim types

Copyright 2012, Intellecture

The central claiming system

The peripheral claiming system

Purely central or peripheral claiming system does not exist.

Copyright 2012, Intellecture

Copyright 2012, Intellecture

Connects the preamble to the body

Defines how to interpret the elements

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Process (method) claim

Product by process claim

"Product obtained by the process of claim X,"

E.g. 8. A polyethylene article having a surface

treated in accordance with the process of claim 5.

E.g. An apparatus substantially as herein above

Swiss type claim

Copyright 2012, Intellecture

Why claim construction?

- Amazon.com v. BarnesandNoble.com (Fed. Cir. 2001)

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Claim Construction Comparison Claim by claim B X A

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What I claim is a gel composition for treatment of pain comprising;

A gel for treating neuropathies causing pain at a site by inducing analgesia.

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1 literal scope boundary

Function / Way / Result Test

1 literal scope boundary

Amendment during prosecution:

Process of treating dry fruits Elements

dioxide fumes without pressure

temperature in the range of about 400 F to 850 F.

Cyclosporin not very soluble in water, difficult to administer

Copyright 2012, Intellecture

solution formed in the patients stomach

Copyright 2012, Intellecture

Copyright 2012, Intellecture

Formulation containing moxifloxacin and sodium chloride

Europe and India

EP1206281 US6548079 IN214011

Copyright 2012, Intellecture

Aripiprazole complex formulation and method

1. An inclusion complex of aripiprazole in a substituted beta- cyclodextrin.

4. A pharmaceutical formulation comprising aripiprazole and a substituted (3-cyclodextrin.

claims swiss type see claim 22 in EP patent)

the manufacture of a medicament for treating schizophrenia (Europe)

EP1542668 US7115587 IN244698

Copyright 2012, Intellecture

Think from the worst possible scenario of infringement

Copyright 2012, Intellecture

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