A well-drafted patent application decides the fate of an
patent claim decides the scope of protection granted on the
invention. Different jurisdictions have different requirements for
drafting a patent claim.
Basic structure of claims:
The basic structure of the claims remains more or less the same,
across jurisdictions. A claim consists of:
PREAMBLE- the introductory
section that indicates the required class of the invention.
TRANSITION TERM– the
term between the preamble and the body of the claim. The two most
common transition terms are "comprising" and
CLAIM BODY- consists of all
the elements of the claim.
The following discussion envisages the comparison of patent
claim construction in India, Europe, and US patent office.
i) Omnibus claims
It is a claim including a reference to the description or the
drawings without stating explicitly any technical features of the
product or process claimed. Omnibus claims are common in the UK and
Indian Patent Practice. However, they are not allowed in the US
patent applications and will be rejected by the patent examiner as
ii) Two-part claims
A two-part claim is also known as an improvement claim
or a Jepson claim. In a two-part claim, the body contains
first part prior art statements and the second part or
"characterizing portion" should state the features which
the invention adds to the prior art. The EPO has a preference for
two-part claims. The USPTO does not follow the two-part claims
system. The IPO is flexible i.e. it is not mandatory to follow the
two-part claim system during claim construction.
2. Reference number in
The reference numbers are enclosed within a pair of parenthesis
in the patent document. The EPO and IPO strongly emphasize the
usage of the reference numerals in order to obtain a better clarity
about the subject matter at hand. In contrast to this, the USPTO
does not involve the usage of reference numbers.
3. Number of independent
According to the IPO, there may be more than one independent
claim in a single patent document if the claims fall under a single
inventive concept. The EPO limits it to one independent claim per
category. The USPTO allows up to three independent claims in a
single patent document without the additional fee.
4. Product by process
In IPO, the product must be characterized by its composition and
not by the process by which it is made. In Europe, while
product-by-process claims are permissible for a new and inventive
product it must be shown that the product can only be described by
its process of manufacture. In the U.S. the claim must highlight
the new and non-obvious product regardless of the process
5. Placement of
In USPTO and IPO, the claims are placed at the end of the patent
specification. In the EPO, not mandatory, but before preferred.
Patent claims are the heart of the patent or patent application
and hence utmost care must be taken while drafting these
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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