Patent claims are the most important part of the application. It defines the scope of the invention. The areas defined in the claims state what is covered under it and what not. Patent claims are the legal basis of any patent protection. It creates a boundary to protect the claims stated for the invention. You need full technical (domain-based) and legal (about USPTO guidelines) knowledge to write patent claims. Since claims are an important deciding factor, you need to know how to proofread patent claims. It is a must before the final application submission.
Proofread Patent Claims- Why?
Any mistake in the claims section can put your overall efforts and money invested in vain. Let’s now explore the reasons why you need to proofread patent claims before final submission.
To finalize major and optional functions of the invention:
Depending on the inventor/applicant’s requested protection type, claims must cover all the important and optional functions of the invention. It must include exiled institutions, people who may try to dodge the laws, and the target audience. The target audience can be the inventor, patent examiner, professionals who went through the entire process, licensees, patent counsel, etc. If you proofreading patent claims, you will lower down the possibility of missing out any major and optional functions of the invention.
To finalize coverage determined by the claims:
You need to construct the claims in a broad or narrow manner in accordance with the existing prior art. Also, keep in mind the inventor/applicant’s request for the protection type. The applicant can take the knowledge on how he can extend the claims to cover maximum protection rights. For this, he can consult an experienced and trustworthy patent attorney from the similar domain. However, you need to ensure that the patent claims do not extend to uncovered areas(too broad). Also, it must not leave invented(too narrow) areas/aspects. The attorney/applicant needs to establish a pretty good balance to present the claims. And, if they proofread patent claims, it will further ensure the minimal probability of error.
To make sure no infringement or copyright issues are left:
The final patent claim draft should exclude all likelihoods of any patent or copyright infringement of the preceding independent claim before a court case is filed. This process called the “Marksman Hearing”. It determines the correctness of the scope and meaning of the patent claims. The hearing is carried out under the local rules of a district court. It is to determine whether the claims are constructed according to the laws of “claim construction”. The construction manner gives the court full authority to perform scrutiny to find possible patent infringement.
To prove infringement, the patent owner should hold proof that a patent claim should bypass all the laws of the patent claim. It is important to make sure that no infringement is found. This is required for further processing of the patent application.
Do you know the universal eight proofreading essentials?
To avoid language-based and legal issues:
A professional will never neglect the benefits of incorporating good quality language. Thus while writing claims, it is necessary to portray them in a comprehensive way which summarizes relevant and detailed data. The language used for writing these drafts are framed by art patents. They pay close attention to meaning recognition, sensitivity to scope, etc. It’s an important part of claim construction. You need to frame the lines in a way so that it reflects the same meaning as desired by the inventor/applicant.
It is the job of the patent attorney to depict the vague line that needs to be prominently described to avoid any legal infringement issues, where the scope of the independent claim ends and the scope of the current patent claim starts. Not only the drafter needs to be careful about the infringement, but he/she must also draft the application precisely by covering proper technical and legal aspects.
To avoid patent application rejection:
Claims define the outlines of legal rights when the patent is granted. According to the Patents Act, 1970 §10(4), every comprehensive specification must end with a patent claim(s) defining the patent scope for which protection is claimed. Independent of the type of patent application filed, the applicant can only hear from the examiner after the first examination when the first Office Action is issued. In most cases, office action is issued by the examiner after going through the examination process at once.
There are four major replies to this office action which can be summarized through a single term ‘FOAM’. It means to ‘Fix’, ‘Amend’, or ‘Try and Make’ arguments that can convince the examiner about the correctness of your application or his/her mistake in examining. The applicant could fix the issues by amending the claims that are notified by the examiner or could simply take a stand for the correctness of the submitted work.
The term ‘Rejection’ will come into glance when the patent examiner is still not satisfied by the office action response submitted by the applicant. This can even happen when claims contains mistakes that are completely considered non-patentable.
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