Drafting of Claims - The Tailor’s Scissors

Edoardo PastoreEuropean Patent Office

Torino, 13-14 October 2011

The presentation and in particular the treatment of the examples reflects the personal opinion of the authors and does in no means prejudice any Examination Division or Opposition Division working on related applications.

Disclaimer:

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The Claims - Function

Why are there claims?

• The extent of the protection conferred by a European Patent shall be determined by the terms of the claims (Art. 69(1)).

• The claims shall define the matter for which protection is sought (Art. 84):– be clear– be concise– be supported by the description

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The Claims - Function

What should a claim comprise?

• The claims shall define the matter for which protection is sought (Art. 84)

• in terms of the technical features of the invention (R. 43(1)).

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The Claims - Subject-Matter

What can a claim cover?

• The subject-matter of a claim should be Art. 52(1)– new, inventive and industrially applicable– in all fields of technology

• It should not relate to– exclusions from patentability or "non-inventions"

Art. 52(2)– exceptions to patentability Art. 53

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Example – The Tailor's Scissors

State of the art:knife, pocket knife

Problem:The tailor finds it difficult to cut paper and fabric because the fabric and paper bend while being cut.

Invention:

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Example – The Tailor's Scissors

Possible Claims to the Tailor's Scissors:

- Cutting means which can cut paper without bending it.

- Cutting means which better cutting paper and fabric.

The claims are not valid because they are unclear. They do not define any structural technical means which achieve the claimed result.

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Example – The Tailor's Scissors

Another possible claim to the Tailor's Scissors:

Cutting means which comprises - two straight cutting elements, - each one comprises an eye ring at one end,whereby the cutting elements are fixed to each other at an intermediate position.

The claim is formally correct!

And it also covers some variants which – without any doubt – are about to be developed: eye

ring

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Example – The Tailor's Scissors

variants covered by the scope of the claim:

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• Once it occurs to the plumber to equip his "cutting means” with an insulating material, he will need to request a licence from the tailor in case he wants to produce them.

• Even there is the possibility for the plumber of getting a patent for the improvement if considered inventive!

Example – The Tailor's Scissors

Unfortunately when formulating his claim, the tailor did not anticipate the "cutting means" needed by the gardener or the butcher...

... and so his claim does not cover them!

does not have ring-shaped grips!

cutting elementis not straight!

• Therefore, neither the gardener not the butcher infringe the tailor's claim.

• They could produce and sell their "cutting means", and the tailor could not stop them, and also cannot ask for "royalties”.

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Example – The Tailor's Scissors

If it had occurred to the tailor - that the eye rings are not essential for cutting the fabric or the paper, or- that the cutting elements cut anyway even without being straight,he could have thought of other claims,which allowed to “chase up” all his competitors:1. Cutting means comprising two cutting elements,

which are fixed to each other at an intermediate position. (independent)

2. Cutting means according to claim 1, in which at least one of the cutting elements comprises an eye ring at one end. (dependent)

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Example – The Tailor's Scissors

...still escapes the office worker, who didn't like the scissors very much, since they make the cutting edges to irregular, and who therefore invented (and patented) the paper guillotine!

What about making the claim broader?Cutting means comprising two elements, which are fixed to each other, whereby at least one element comprises a blade.

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Example – The Tailor's Scissors

However...

the modified claim:Cutting means comprising two elements, which are fixed to each other, whereby at least one element comprises a

blade.

... is not valid for lack of noveltyas the state of the art already shows a pocket knife!

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Any Questions?

Thank you

for your attention!

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