Nuances in Patent Claim Scope

7/31/2019 Nuances in Patent Claim Scope

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Vikram Pratap Singh [email protected]

Copyright 2012, Intellecture 1


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Introduction to claims

Patent claim types

Claim construction and application

Scope of protection



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Part of patentspecification

Heart and soul of aninvention

Defines the metes andbounds of an invention



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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 doesnot exist.



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Preamble

Transition phrase

Body

A gel composition fortreatment of pain

comprising; 2-10

percent by weightBenzocaine and atleast

one of propylene glycol

and glycerine as a co-solvent.



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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



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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 impuritiescomprising...

2. apparatus for shaking articles to dislodge impurities,the apparatus comprising...

7Copyright 2012, Intellecture


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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



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It recites the elements that define theinvention

Describes how these elements structurally,physically or functionally co-operate witheach other to make the invention or how theelements should be interconnected

All the unnecessary elements should beremoved which will limit the claim



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Independent Stand on their own

E.g. - A gel composition for treatmentof 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 thebase 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 apolyethylene article to increase its receptivity to a printing ink,which comprises



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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 ofsodium dichromate in an acid selected from the groupconsisting of concentrated sulfuric, nitric and phosphoricacids.



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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 surfacetreated in accordance with the process of claim 5.



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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)

E.g. An apparatus substantially as herein abovedescribed in the specification with reference to theaccompanying drawings



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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



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Why claimconstruction?

"The court must properlyinterpret the claims, because an

improper claim construction maydistort the infringementandvalidity analyses."

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



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A gel composition for

treatment of pain comprising;

2-10 % by weight Benzocainein atleast in part as the free

base; and

atleast one of propylene

glycol and glycerine as a

solvent.

Infringing?

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.

PATENT PRODUCT



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Claim Construction

Comparison

Claim by claim -

element by element

X

A

B



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A gel composition for

treatment of pain comprising;

2-10 % by weightBenzocaine in atleast in part

as the free base; and

atleast one of propylene

glycol and glycerine as a

solvent.

Infringing?

A gel for treating

neuropathies causing pain at

a site by inducing analgesia.

The gel is administered

intradermally.

The gel has 10 % by weightof Benzocaine and glycerine

as solvent.

PATENT PRODUCT



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PATENT

What I claim is a gel

composition for treatmentof pain comprising;

2-10 % by weightBenzocaine in atleast in

part as the free base; and

propyl paraben.

PRODUCT

A gel for treatingneuropathies causing painat a site by inducinganalgesia.

The gel is administeredintradermally.

The gel has 10% by weightof Benzocaine and methylparaben.



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In substance equivalent if the infringing goods are made with the same

objectin view which is obtained by the patentedproduct, then a minor variation does not meanthat there is no infringement. A person is guilty

of infringement if he makes what is in substancethe equivalentof the patented article- RajPrakash 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 insubstantially the same way and accomplishsubstantially the same result, they are thesame, even though they differ in name, form orshape.- Graver Tank & Mfg. Co. V. Linde Air

Products Co.

1 literal scope boundary

2 range of equivalent

3 accused product

1

2

3



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The differences between theaccused product or processand the claimed invention

must be "insubstantial."

The range of equivalentsgranted under the doctrine

cannot extend so far as toensnare that which waspublicly done before the"prior art.

1 literal scope boundary

2 range of equivalent

3 prior art

1

2

3



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The patentee cannotrecapture subjectmatter relinquished

during the applicationprocess (under thedoctrine ofprosecution historyestoppel).

PHE bars applicationof DOE



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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 - Sulphurdioxide fumes without pressure

Lallubhai v. Chimanlal case



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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



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Claim 1. A hydrosolwhich comprises solid

particles of a

cyclosporin and astabilizer which

maintains the size

distribution of saidparticles

Cyclosporin not verysoluble 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 containscyclosporin dissolved in a small amount ofethanol instead of water.

Hydrosol formation, when ingested

Infringing?

Novartis Pharmaceuticals Corp. v. Eon Labs Mfg. 363 F.3d 1306 (Fed.Cir., 2004)



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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 moxifloxacinand sodium chloride

1. Aqueous formulation, comprisingmoxifloxacin hydrochloride andsodium chloride.

8. A method of treating or preventinga disease comprising administering toa host in need thereof an effectiveamount of an aqueous solution ...

9. Acombination preparationcomprising an aqueous solution ofmoxifloxacin hydrochloride and anaqueous solution comprising sodiumchloride...

US 1, 8 and 9

Europe and India 1 and 9

Patents referred: EP1206281

US6548079

IN214011



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Aripiprazole complex formulation and method

1. An inclusion complex of aripiprazole in asubstituted beta- cyclodextrin.

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

22. A method for administering injectablearipiprazole to a patient in need oftreatment

24. A method of treating schizophrenia,which comprises administering [US] 22. Use of the formulation as defined in Claim 5 for

the manufacture of a medicament for treatingschizophrenia (Europe)

US 1, 4, 22 and 24

Europe 1, 4, 24 (corresponding

claims swiss type seeclaim 22 in EP patent)

India 4 (including limitations)

Patents referred: EP1542668

US7115587

IN244698



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Think from the worst possible scenario ofinfringement

The infringer should have a great difficulty indesigning 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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