How to Pass P3 (now FD2) - Drafting of Specifications

How to Pass P3 a CIPA Study Guide Iain Russell

2010

Author’s Prelude‌ I would sincerely like to thank Tim Roberts without whom I would never have had the opportunity to write this guide. I would also like to thank Doug Ealey for taking the initiative to prepare his study guide for the P2 exam, without which I doubt this guide would exist, and my colleagues whose patience and assistance has been invaluable. Finally, I would like to thank Tibor Gold who has kindly reviewed and edited this guide, Iain Ross who has worked wonders with his publication and formatting skills and the JEB for taking the time to review the guide and make suggestions for improvements.

Please feel free to visit the website that accompanies this guide at www.howtopassp3.com and e-mail me at help@howtopassp3.com if you need to.

Iain Russell London, July 2010

How to Pass P3 a CIPA Study Guide Iain Russell

2010 Edition

The moral rights of the author have been asserted.

All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. Š 2010 Iain Russell Published and placed on sale by: The Chartered Institute of Patent Attorneys 95 Chancery Lane London WC2A 1DT United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-42-4 Printed and bound by The Nuffield Press Ltd, Abingdon, Oxon

How to Pass P3 CONTENTS

Overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 1. Spotting the invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 2. Claiming the invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 3. Dependent claims and omnibus claims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 4. Everything else . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 5. Abstract. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29 6. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33 7. Worked example – 2007 P3 paper . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35 8. Brushing up our drafting, by E.W.E. Micklethwait . . . . . . . . . . . . . . . . . . . . 71 9. Claim drafting – the British tradition, by M.J. Daley. . . . . . . . . . . . . . . . . . . 89 Past paper – P3 2007 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97

Overview Preparing patent applications is the essence of our profession. It is where our profession started, and is a skill which sets us apart from others in the IP field. Without patent applications, there is no patent infringement, there are no validity issues, no concerns over amendments and none of the complications concerning when a fee is due or whether a time limit is extendible. The purpose of P3 is to test whether you can prepare a decent UK patent application.

So, how do you pass P3? The following is advice from someone who certainly knows what you need to be doing to pass P3: Students want complete focus on passing the paper rather than doing the job, though if they can do the job they can easily pass the paper!

P3, as with the other Finals papers, is about picking up at least 50 marks in the allotted time.

Knowing where you can score marks and how to score those marks is the subject of this guide.

The most important part of the paper is actually spotting and claiming the invention. Once you have done that, the rest of the paper is, in theory, straightforward.

One point to emphasise at the outset is that you should make sure you know the Examiners’ Comments like the back of your hand; see www.jointexaminationboard.org.uk/examcomments.php or the ‘P3 Resource’ page on the website that accompanies this guide at www.howtopassp3.com.

They tell you how you gain marks and how you lose them. You should be completely familiar with the Examiners’ Comments for at least the last five years in each exam you take. Equally, you should make sure you have read and digested the syllabus for P3, with its description of the aims of the paper and the competencies it requires; see the relevant pages of the above JEB website.

I would also recommend reviewing Paul Cole’s Fundamentals of Patent Drafting book (available from CIPA), which includes the excellent ‘Brushing Up On Our Drafting’ papers by Micklethwait and ‘Claim Drafting’ by Daley, annexed to the end of this work [see pages 71 and 89]. I have intentionally not duplicated some of the material covered in Paul’s book in this guide.

This guide has been reviewed by the P3 examiners and is considered to be a good summary of what the examiners are looking for in P3.

How to Pass P3 • 2010

1

1. Spotting the Invention This is the most important part of P3. If you get this wrong, it won’t be easy to pass.

If you get this right, then you stand a good chance of passing.

1.1 Claiming the product or problem vs. claiming the invention There are usually four intertwined aspects of a P3 paper and when drafting in real life, which need to be distinguished: • The problem – usually some drawback of the prior art that has motivated the client to come up with an invention; • The product – the particular article by means of which the client has solved the problem; • The advantage – usually a positive expression of the problem; why the client’s product is an improvement over the prior art; and • The invention – none of the above and what you need to protect!

So, you’re neither trying to claim the actual product (typically very narrow) the client has made nor the problem (typically too broad) that has been solved, but something in between; the invention.

The examiners comment on this issue sufficiently frequently that it should be taken very seriously: 2007: At the very least, the independent claim should be novel over the prior art and should also cover the embodiment(s). Somewhere between these extremes is the claim which provides the widest practicable protection.

2004: In most cases, candidates who failed did so because their main claim was too narrow by at least two integers.

2003: However, far too many candidates unnecessarily limited themselves claiming still what they saw, rather than the arguable invention.

2002: Very few candidates demonstrated that they had stood back from the apparatus to consider, in the light of the given prior art and what must be accepted as common general knowledge, what the invention might be. A lot of candidates claimed what they saw, in the drawings [emphases added].

On the one hand, you would know that if your client was the first person to come up with the idea of a Bluetooth® headset for a mobile phone, you would try to use broad claim language such as ‘wireless connection’ or ‘remote connection’ – or something along those lines – rather than limit the claim to ‘Bluetooth’. However, it can get quite tricky in the exam when there are so many features in the client’s description and drawings that seem to be essential to the product itself. This will be discussed later.

How to Pass P3 • 2010

3

1. Spotting the Invention On the other hand, you can’t claim the result to be achieved, i.e. the underlying problem to be solved. Indeed, an examiner has informed me that, often: The biggest problem on the drafting side is using purely functional language.

The IPO’s Manual of Patent Practice (MPP) discusses this in more detail: 14.120: The area defined by the claims must be as precise as the invention allows. As a general rule, claims which attempt to define the invention, or a feature thereof, by a result to be achieved should not be allowed. However, they may be allowed if the invention can only be defined in such terms and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description and involving nothing more than trial and error. In No-Fume Ltd v Frank Pitchford Co Ltd, 52 RPC 231, a claim to an ash receptacle for smokers in which the dimensions of certain parts were such that smoke from objects thrown into the receptacle did not emanate from the receptacle was allowed on the grounds that the invention could be realised by dimensions other than those disclosed, by experiments not involving inventive ingenuity. However, claims of this kind are generally undesirable and it should be noted that the No-Fume claim was allowed solely because the invention did not admit of precise definition independently of the result achieved. Any claim which includes a subordinate clause prefaced by words such as ‘so that’ or ‘the arrangement being such that’ requires special consideration from this point of view.

Examples of claiming the result to be achieved that spring to mind are ‘means for automatically’ doing something, often solving the underlying problem, without giving any hints as to how it does that thing.

For example, suppose that your client identified a problem with conventional cars in that you need to turn on the lights manually when it gets dark. Sometimes, you might forget to do this.

Your client thinks that it would be a good idea if there were a product that could automatically turn on the lights when it gets dark. A claim to something like ‘means for automatically turning on the car lights when it gets dark’ seeks to protect anything that solves this problem and would run the risk of merely claiming the underlying problem or the result to be achieved. Of course, as set out in the above MPP extract, this depends upon the context. In this example, you might need to claim a sensor to detect the light level and a controller which is arranged to cause the car lights to turn on whenever the light level drops below a certain value.

However, this does not mean that it is never appropriate to use ‘means for’ language, which is often referred to as ‘functional language’. I take the following from the 2008 Examiners’ Comments (my emphasis added), which also offers a word of warning about relying too heavily on a ‘No-Fume’ argument as a blanket justification for broad claim drafting: Paul Cole’s book on the fundamentals of patent drafting discusses the strength of a ‘functional claim’. ‘Means plus function’ is a well-recognised style of drafting and good marks can be achieved with that style. However, claims limited by the result to be achieved (e.g. ‘No-Fume’ type claims) often run the risk of being no more than a ‘free beer’-type claim… because they lack any distinguishing structure. Candidates should refer to the No-Fume decision, and also the patent 4

The Chartered Institute of Patent Attorneys

1. Spotting the Invention specification itself, GB253528. The patent claim does recite structure. Thus, simply claiming the result to be achieved without reference to any structure did not score well. The examiners noticed that many candidates who seemed to fall into this trap often had a similar formulation of claim where one or two integers were recited, followed by a clause beginning ‘wherein’ or ‘such that’, followed by the desired result of the [invention]. Candidates may benefit from reviewing their claims to see if they have used such a formulation and, if so, considering carefully whether they have included sufficient detail for the claimed structure to enable the [advantage] to be achieved. To this end, one possible technique which may be helpful to candidates would be to try to sketch the apparatus as set out in the claim that has been drafted; this often helps highlight shortfalls in wording and helps test whether all the apparatus features which the candidate may have intended to be present in order to achieve the desired functionality are in fact present in the claim.

The examiners returned to the ‘free beer’-type claims in the 2009 Examiners’ Comments explaining that it was not such a common error in 2009 answers: As mentioned in last year’s Examiners’ Comments, ‘means plus function’ is a well-recognised style of drafting and good marks can be achieved with that style. Claims limited simply by the result to be achieved (e.g. ‘no-fume’ type claims) often run the risk of being no more than a ‘free beer’ type claim – ‘anything which… – because they lack any distinguishing structure. Very few candidates this year seemed to fall into this trap.

Overall then, you need to find some sort of balance between claiming the product and claiming the problem, which is claiming the invention.

In the exam itself, it is usually easy to spot the advantage the examiners are looking for you to protect. Indeed, an examiner has told me that: The question tends to have a clear steer by referring to a problem solved and/or an advantage given – so what is the minimum structure necessary to achieve that?

Some people highlight any advantages that they spot and check whether any of them crops up more than once, which might suggest that it is important. Other people make a note of all of the advantages and decide whether one particular advantage stands out as being especially important. It is useful to practise both of these techniques and see if they work for you. If not, try something else. If you plan to use this technique, words like: ‘so that’, ‘in this way’, ‘accordingly’, ‘as a result’, ‘improve’, ‘help’, ‘advantageously’, ‘better’, etc, are worth looking out for.

How to Pass P3 • 2010

5

2. Claiming the Invention Once you have spotted the invention, you have to claim it. You probably have between one and two hours in the exam to get claim 1 right. While there isn’t a major need to rush getting claim 1 correct, there is insufficient time to change your mind later in the exam. However, do bear in mind that the remainder of the paper is worth about 50% of the marks in P3, so don’t run out of time!

I offer this slightly reassuring piece of information from an examiner: A main claim with an extra limitation can still pass with a good description, etc. A claim that is too broad (e.g. which covers prior art) might also pass if there is a good sub-claim and good description as one can often argue that it is too broad just because it is poorly worded.

You can take from this that there isn’t one exact claim that you need to hit on the head to get through the exam.

When I recently marked a set of P3 papers for an Informals tutorial, I had a good idea of whether I thought the paper would be likely to pass by the time I’d reached claim 3. By that point, I could assess whether the correct invention had been spotted and the level of ability in drafting independent and dependent claims.

2.1 Preamble This is the first bit of the claim that sort of sets the scene. It should be closely tied to the client’s business with an eye on infringers. Don’t confuse it with the ‘preamble’ of a claim in two-part form as preferred by the European Patent Office, setting out the relevant features of the closest single piece of prior art and to be followed by a ‘characterising clause’. There is no requirement for claims to be in two-part form under UK practice. From the Examiners’ Comments: 2008: In this question you are told that the client [does a certain job] and he has produced a [thing] which he wishes to disclose to a manufacturer. That is the business which it is your task to protect.

2007: In this question you are told that the client is a [job] and he has produced a [thing] which he wishes to disclose to a manufacturer. That is accordingly the business which it is your task to protect.

2005: In this question you are told at the outset that the client is a manufacturer of [stuff]. That is accordingly the business which it is your first task to protect. The client tells you that he has devised a new apparatus […].

If your client is a car engine designer who has invented, and is going to sell, a new engine for a car, would you claim the car including the engine or the engine itself? If the client’s competitors are going to be other car engine designers and manufacturers and not necessarily car manufacturers, you should claim the engine itself rather than have to rely on contributory infringement.

How to Pass P3 • 2010

7

2. Claiming the Invention If your client was a mechanic who had devised an improvement of a spark plug in a car engine, you should claim the spark plug itself and not the engine comprising the spark plug.

However, what would happen if your client came up with the idea of using some sort of existing engine in a lawnmower? You can’t claim that engine ‘for use in a lawnmower’ because that product was already suitable for use in a lawnmower! Similarly, you probably can’t get away with just calling it ‘a lawnmower engine’ and then listing all the known features. You might sometimes get away with this in practice, but it does leave your patent open to attack; for a notable exception – and it is an exception – where such an attack failed, see the Workbench case referred to in Paul Cole’s book at pages. 277-296.

Another issue is how you decide on the exact wording to use for the preamble. Again, there is no hard and fast rule.

For example, I had a job interview in which the task was to draft a claim to a stapler. I started out by drafting a claim to ‘An apparatus for temporarily fixing a plurality of sheets of paperlike material together, the apparatus comprising…’, but then decided that ‘A stapler comprising’ would do just as good a job and in fewer words. My interviewer asked why I opted to call it a ‘stapler’ instead of the other verbose expression and I responded: ‘well, that’s what it is’. He was pretty happy with that. The moral of that story is that although you don’t want to draft the preamble too narrowly, remember to take a step back and think about what you’re writing.

Be very cautious about using the word ‘system’ in the preamble as it can be quite ambiguous whether it relates to apparatus- or method-type features. From the 2005 Examiners’ Comments: A few candidates used the word ‘system’ for ‘apparatus’, perhaps because that was the word the client used. Traditionally this has been frowned upon as being ambiguous (particularly where highly functional language is used) and in the present instance ‘apparatus’ is preferred.

Also, be careful about using the word ‘in’ in the preamble as it can often cause confusion as to which entity you’re claiming. For example, are the following claims limited to the car engine: In a car engine, a spark plug comprising…

and A spark plug in a car engine, the spark plug comprising…?

It would normally be better to claim either: A spark plug for [use in] a car engine, the spark plug comprising…

or A car engine comprising a spark plug, the spark plug comprising…

This gives you the preamble of the claim.

8

The Chartered Institute of Patent Attorneys

2. Claiming the Invention

2.2 Essential features You then need to ensure that the claim includes the functional or structural features that are essential for achieving the advantage. You have to put your thinking hat on here and ask whether something is essential to achieving that advantage or not.

For instance, using the above headset example [chapter 1, page 3], Bluetooth may not be essential to the advantage of being able to have a hands-free conversation on your phone. If not, your claim should not be limited to it. However, with reference back to chapter 1, a claim simply to ‘A hands-free mobile phone headset’ is just claiming the problem or result to be achieved. Something like ‘A mobile phone headset comprising a transceiver operable to communicate wirelessly with a mobile phone’ would be more sensible.

Again, one of the tips I have received from an examiner that I’ve already mentioned above is that: The question is what is the minimum structure necessary to achieve the problem solved by the invention/the advantage of the invention? [emphasis added] Although it is important – imperative even – to include enough structure in your claims to support the associated advantage, features that do not relate to that advantage can lead to unnecessary limitations (and a loss of marks) as highlighted in the 2009 Examiners’ Comments.

[T]his year, some candidates unnecessarily limited their independent claims by including features which do not relate to the ‘invention’ they are claiming. Typically these features are mentioned but then not subsequently referred to in the remainder of the claim. The question therefore arises of why was that limiting feature included at all? It is recognised that this is something that is sometimes can be difficult to spot and to be self-critical over. To help with this problem, candidates may consider trying to sketch out their claims since this often reveals features which have no interaction with others in the claim, and so are not contributing to the definition of the invention. This can be helpful in two ways: the first is that the feature may not be necessary at all and can be removed; the second is that the feature needs to be present, but its interaction with the other features has been omitted and needs to be included…

Can’t say a lot more than that.

2.3 How features interact Think about how those essential features interact with each other to achieve the advantage. I frequently had what I call ‘floating blobs’ in my claims. By a ‘floating blob’, I mean something that has no relationship with the other integers in the claim. An example of bad ‘floating’ would be something like: A vehicle having a set of pedals and a wheel…

Are we describing pedals such as bicycle pedals that are used to drive the main propulsion How to Pass P3 • 2010

9

2. Claiming the Invention wheels? Are we describing the three driver’s pedals in a manual car and the steering wheel, the spare wheel, a ‘wheel’ in the engine…? It’s not clear what the physical or functional link between the two entities is! In the first example, we would be better claiming something like A vehicle having a set of pedals and a wheel driveable by the pedals,

or A vehicle having a wheel driveable by a set of pedals

(if we don’t actually want to claim the pedals) People often recommend drawing exactly what your claim recites and seeing if you’re ‘floating’.

If you can do this, that’s great, but I normally ended up drawing what I thought the claim said (everything nicely connected!) rather than what it actually said. I do definitely suggest that you ‘try this at home’ though.

I also like a suggestion made by Gwilym Roberts in a P3 handout I have in my P3 file. This was to imagine that you are an ant walking over the object that you are claiming. Start from one end and walk to the other describing what you see. In this way, you can check that every step of the ant’s journey is documented and that there are no gaps created by floating blobs into which the ant would fall.

Another approach is to work in a radial manner, starting in the middle of the object you’re describing and then working outwards.

2.4 Possible claim format I really don’t think it’s possible to come up with a template for a claim, either for the exam or in real life. It depends on whether you’re drafting a product claim or a process claim, how close it is to the prior art, whether you’re drafting structurally or functionally, etc.

Although I often found the following claim format useful for P3, do not assume that this is always the correct way to claim an invention in P3, because it isn’t! For example, in the 2006 paper, this format would not be appropriate.

A [preamble], comprising: – [list the essential features, what they do and how they are physically and/or functionally interrelated] – wherein, in use, [elaborate on how they interact, in use, to provide the advantage of the invention]

There must be some structural or functional distinction over the prior art that gives rise to the advantage. You cannot just claim the advantage. Here is an excerpt from the 2008 Examiners’ Comments that I emphasised in chapter 1: The examiners noticed that many candidates who seemed to fall into this trap often had a similar 10

The Chartered Institute of Patent Attorneys

2. Claiming the Invention formulation of claim where one or two integers were recited, followed by a clause beginning ‘wherein’ or ‘such that’, followed by the desired result of the [invention]. Candidates may benefit from reviewing their claims to see if they have used such a formulation and, if so, considering carefully whether they have included sufficient detail for the claimed structure to enable the [advantage] to be achieved. [emphasis added].

I suggest reading that a couple of times to understand what the examiners don’t want to see.

2.5 Claim categories I have no idea what you will be expected to claim in the exam, but you want to cover as many potential infringements as appropriate. I would be very surprised if there was a P3 paper that didn’t require a product claim, but you never know.

It is useful to memorise a list of additional claim categories before the exam and then check whether any of these were necessary. The list below does not include things like second medical use claims as they hadn’t come up in P3 before. You might want to add them to the list anyway: • • • • • • • •

C1/Method of using a product C2/Method of manufacturing a product C3/Method of assembling a product C4/’Look up’ (product as part of a bigger product – e.g. car comprising an engine according to claim 1) C5/’Look down’ (should have already done this) C6/Kit (i.e. in disassembled form) C7/Any other patentable bits that might be sold (e.g. consumables) C8/Computer program, signal, readable medium (perhaps not claim, but add support in description for foreign applications)

However, one thing that is bad practice and annoys the examiners is a number of independent claims in the same category drafted in a ‘shotgun’ approach: 2008: As mentioned in previous years, drafting multiple independent claims in a shotgun fashion, where each had slightly differing scope, was felt to show a lack of judgement on the part of the candidate and rarely scored highly. This approach can also cause considerable difficulty for the candidate when drafting the introductory portion of the application, as well as causing unity problems and increased expense to the client. If the additional independent claims are not likely to be pursued in divisional applications, why include them?

2007: As mentioned in previous years, drafting multiple independent claims in a shotgun fashion to cover a variety of novel features showed a lack of judgement on the part of the candidate and rarely scored highly. This approach can also cause considerable difficulty to the candidate when drafting the introductory portion of the application, as well as causing unnecessary unity problems.

How to Pass P3 • 2010

11

2. Claiming the Invention 2006: Drafting multiple independent claims in a shotgun fashion, where each had slightly differing scope, presumably in the hope that at least one of the claims may align with that expected by the examiners rarely scored highly.

An example of ‘shotgunning’ would be to have three independent claims that each includes one novel feature over the prior art, but with none of the claims being unitary. If you have lots of claims, each with different scope, it might not be clear to the examiners what you consider the main invention to be.

Another thing that annoys the examiners is the unnecessary inclusion of method claims directed to the use of an apparatus that would not realistically ever be enforced: 2008: In this case, method claims were not expected. It might be argued that a method claim could be of benefit in preventing use of the product… by [competitors], but a product claim was felt to be sufficient.

2007: In this case method claims were not expected. The client is in contact with a manufacturer and the manufacture and sale of the products, rather than licensing use, seems the most practicable way of exploiting the invention.

2006: In this case method claims were not expected.

Having said that, another paper required a method claim to a method of manufacture because of the nature of the client’s business: Claims… to at least an apparatus and to a process (method) for making the [thing].

Regardless of whether or not you would include a method claim in real life, think about whether a method claim is necessary for the exam. Who is going to infringe it? If it’s just a member of the public in their own private domain, would you really launch infringement proceedings against them, especially if they could rely on the private and non-commercial acts defence?

Likewise, if the method claim would only be infringed by your client’s customers, you need to think whether it is still worth including it.

As there is no negative marking in the sense of losing marks already gained by including unnecessary material, you won’t formally lose a mark for including a method claim when it’s not needed, but you want to keep the person marking your script on your side as much as possible; and you cannot afford to waste precious time writing redundant or impractical stuff.

2.5 Checking the claim This is one of the easiest steps to skip in the exam when the clock is running down and you want to start collecting the easy marks for the description, etc, but it’s so important to do this step. Do use a three-point test for the claim at this stage:

12

The Chartered Institute of Patent Attorneys

2. Claiming the Invention • Check 1 – have I got enough structure: m Look at the claim in isolation; does it suitably define the invention in terms of function or structure so that it can achieve the advantage? m Have I claimed the underlying problem or a result to be achieved rather than the invention? m Am I ‘floating’?

• Check 2 – novelty: m Try to make the prior art infringe (or anticipate) the claim. If the claim clearly reads onto the prior art, you stand a good chance of failing.

• Check 3 – is it too narrow: m Have I covered all of the client’s embodiments? m Have I claimed the product rather than the invention? m

Can any of the terms in the claim be generalised more or even completely omitted: ‘is there any other way on earth that this particular thing could be done’? If so, you can probably remove or generalise it.

2.6 Common general knowledge (‘CGK’) What about common general knowledge? There is quite a disparity between Examiners’ Comments on this, which is a bit frustrating. For example, in 2003: Within the realm of common general knowledge must surely come [something that was supposed to be taken into account].

And in a fictional comment from the client in the 2001 Examiners’ Comments: I’m a bit puzzled. The first nine of these claims appear to me to cover your standard [thing].

Whereas the 2008 question paper itself states that: You should assume that the prior art presented by the client is the only relevant prior art, do not rely on any personal knowledge you may have in this field.

The general advice is probably not to over-think CGK too much.

You should also remember only to take into account prior art referred to in the exam paper.

Do not take into account any of your own personal, specialist knowledge of the prior art in the exam.

How to Pass P3 • 2010

13

3. Dependent Claims and Omnibus Claims 3.1 Structure and what to claim The thing I found (and find) the hardest about drafting dependent claims is knowing how to order the claims without them reading ‘… when dependent upon any claim other than claim 7, except when claim 7 is dependent on claim 5’. This doesn’t create a great impression in the exam and gets a bit tricky when you actually amend the claims in real life.

If you use what I call the ‘Integer Tree’ approach, ordering the dependent claims should be easy. The Integer Tree is a visual representation of all of the features you might claim, arranged with the broadest features at the top of the tree and any narrower features progressively lower down. For example, suppose your exam paper concerned an electric tin opener. Your Integer Tree might look like this: Electric Tin Opener Electric Power Source

Handles

Internal Battery

Plastic

Mains Supply

Cutter Metal

Wood

Circular

Non-circular

From the Integer Tree, you should be able to get a good idea of which features are subsidiaries of which other features (directly below) and which are alternatives (on the same level), which makes ordering the dependent claims a bit easier.

If your main claim were to ‘An electric tin opener having a cutter and an electrical power source arranged to drive the cutter’, claim 2 could specify that the electric power source is an internal battery, claim 3 could specify that the electrical power source is a mains supply, claim 4 could introduce handles and be dependent on any of the preceding claims, etc…

It is also important not to include too many dependent claims. I believe that 15 is probably the maximum that you should be drafting, but sometimes it is ten. I learned the hard way, by accidentally drafting about 15 claims in the exam and then noticing that only ten were required.

I had to cross out some claims, renumber others. It cost me valuable time in the exam and made my answer look quite messy. The moral of the story is: CHECK THE PAPER. Only pick features that have some sort of advantage associated with them for dependent claims. If the feature doesn’t have an advantage, then it is unlikely that you would limit claim 1 to include that feature in real life and so it doesn’t provide a very useful fallback position should claim 1 turn out to be invalid.

You also want to have a good scan of the drawings to check if there are any features that are not in the written description of the client’s product but are shown in the drawings. This quite often happens in P3 as it does in real life.

How to Pass P3 • 2010

15

3. Dependent Claims and Omnibus Claims

3.2 Omnibus claim From the 2009 paper: An apparatus omnibus claim was expected.

From the 2007 paper: An apparatus omnibus claim is expected in a UK application.

From the 2005 paper: Apparatus and process omnibus claims were also expected.

A [thing] substantially as described herein with reference to [‘the accompanying drawings’ if all of the drawings show the invention, or, ‘Figures X, Y and Z’ if some of them show the prior art]

Remember to add an omnibus claim in the following form or using your own preferred wording: Be aware that an omnibus claim should not be dependent on the preceding claims and, as such, should not start: ‘A device according to any of the preceding claims, substantially as described herein…’. Such an omnibus claim would include all the features of those earlier claim combinations and would, thus, be more limiting than an independent omnibus claim.

That’s about it on dependent and omnibus claims.

16

The Chartered Institute of Patent Attorneys

4. Everything Else This is where you can pick up easy marks. These can mean the difference between scraping a pass and getting a fail. If your main claim is terrible, you probably won’t be able to pass by getting all of these bits correct. Conversely, if your main claim is amazing, you can afford to drop a couple of marks in this section. The problem is that since you have no idea how many marks you will get for your claim, you should make sure that you get as many marks as possible in this section. To quote some advice from an examiner: Some candidates seem to spend all their time on the claims and then throw anything on to the paper for the rest.

Indeed, in the 2009 Examiners’ Comments, the impatience of the description and good time management was emphasised: Some candidates produced acceptable claims, but scored poorly on the description, in some case through lack of time. Candidates should apportion their time with the marking schedule in mind: 2 hours for reading, analysis and drafting the main claim(s); 1 hour for the dependent claims; 1 hour for the introduction, specific description and abstract seems a reasonable allocation of time. Refer also to the paper P3 Notes 2009 by Iain Russell on the JEB web site.

I’m going to introduce each of these requirements with an extract from recent examiners’ Comments and then provide some of my own thoughts. I’ll also make a note of the number of marks that was awarded for meeting each of these requirements in the 2009 paper:

4.1 Title of Application (1 Mark) The body of the specification should start with a title (Rule 12(4)&(6)). The title ought not to be narrower in scope than the independent claims.

The title is just the preamble of your independent claims. If claim 1 starts ‘A tin opener’, your title is ‘A Tin Opener’ or ‘Tin Opener’. If claim 1 starts ‘A method for heating frozen food’ and your independent apparatus claim starts ‘Apparatus for heating frozen food’, your title should be something like ‘Method and Apparatus for heating Frozen Food’. A really easy mark!

4.2 Field of the Invention (1 Mark) The introductory portion of the description ought to explain the field of the invention sufficiently to assist the search examiner in determining the technical classification. Again, the field of the invention ought not to be narrower in scope than the subject matter of the independent claim(s).

How to Pass P3 • 2010

17

4. Everything Else You don’t need a heading for this, but you need to explain the field in which the invention lies.

This can be done in the form: ‘The [present] invention relates to [preamble of claims]’. Some people apparently don’t like the word ‘present’ here. I can’t see the problem with it and still use it when I draft, but I don’t think it adds a lot. So, an example would be: ‘The [present] invention relates to a tin opener’, or ‘The [present] invention relates to a method and apparatus for heating frozen food’

Another possibility is to introduce the statement of invention with the wording: ‘This invention relates to…’.

Keep it short and sweet and it’s another easy mark.

4.3 Background / prior art (3 Marks) The introductory portion of the description ought to acknowledge the known and relevant prior art and set the scene for the invention.

Again, you don’t need a title for this. Just describe the relevant background art. Art wouldn’t be relevant if it’s in a completely different field, or is concerned with a completely different problem. Sometimes, although this doesn’t always work, I look at the preamble of my claim, e.g. ‘a tin opener’ because this should be consistent with the field of the invention. If something is in a different field to the invention, it is unlikely to be relevant.

Then, look at the prior art. If the prior art was, say, a circular saw, do not discuss it even though it kind of looks a bit similar to the cutter on a tin opener and you could probably open a tin with it in a similar, but more scary, way. Also, do not bother describing how you can use a flat-head screwdriver to prise open a tin of paint if we’re talking about opening tins of food, because it’s a different problem altogether. Nor is there a need to tell the examiner, a skilled person or a Judge, that tins of food contain food and have lids that need to be opened to enable you to get at the contents. Definitely don’t say that a tin opener is a device which is used to open tins! Again, think about what you’re writing.

Don’t give too many hints about any major problems with the prior art, because the invention might seem a bit obvious if you give too much away. Just set the scene and tell a story. However, keep in mind the EPO’s problem-and-solution approach, but make sure that you do not present the prior art in such a way as to ‘dumb-down’ the invention. For example, which of these makes an electric tin opener sound more inventive over a mechanical one: It can be quite tricky to use a conventional mechanical tin opener to open a tin quickly, reliably and safely.

or

18

The Chartered Institute of Patent Attorneys

4. Everything Else It can be very tiring for some people, particularly the elderly and/or infirm, to open tins because of the amount of physical strength and energy it takes to open the tin.

It would be good if there were some way to open the tin automatically without the users having to exert themselves too much physically.

Don’t invent ridiculous problems with the prior art and certainly don’t be too critical of it. It is not ‘nearly impossible’ to open a tin with a manual tin opener, but it can be quite tiresome. As a slight aside, I remember once preparing a draft application and being quite critical of a prior art document only to realise that the prior art document was an application belonging to my client. Good job I checked before I sent out the draft! In the exam, if the client says that he has improved upon one of his own products, remember not to be too disparaging.

Some people apparently copy out the background section from the P3 paper almost verbatim.

Remember that what you are doing is describing the prior art given in the paper. You shouldn’t blindly copy what the client has written without showing that you have understood why it is relevant. Of course, you wouldn’t want to say ‘I found this’ and ‘it seemed to me that…’ or ‘the prior art is rubbish because…’, even if that’s how the client describes it in their letter.

This part is trickier than getting the title and field of the invention right, but, let’s be honest, it shouldn’t be too hard.

4.4 Statements of invention and advantage (3 Marks) It was expected that the description should then include a summary of the invention, which provides some justification for the chosen claims including, to a general extent, the dependent claims. This justification may include an indication of any benefits or advantages provided by the independent and dependent claims. Care should be taken to distinguish between the use of the terms ‘the invention’, ‘aspects of the invention’, ‘preferred features’ and ‘embodiments of the invention’.

Notwithstanding the obvious benefits to the client of setting out a cogent introduction and summary of invention, which provides an initial justification/arguments in favour of the novelty and inventive step of the drafted claims, for the purposes of the examination this section is particularly helpful to the examiners when reviewing the drafted claims, particularly where unexpected wording is used.

Although this examination paper is drafted with a particular result in mind, the examiners acknowledge that other solutions sometimes arise unexpectedly; a well-constructed introduction may well prove invaluable in those circumstances. Also, candidates would continue to be well advised to carefully review their arguments set out in the introduction against their drafted claims and summary of invention section to ensure that they are consistent. This may be useful to candidates as an internal check to help ensure that they do not fall into the trap of failing to claim what they clearly understood the invention to be. [emphasis added] Suppose the claims are: 1. A tin opener having an electrical energy source.

2. A tin opener according to claim 1, wherein the electrical energy source is a battery.

How to Pass P3 • 2010

19

4. Everything Else For the exam, your statements of invention and advantage could be set out as follows:

According to a first aspect of the invention, there is provided a [insert preamble of claim 1] according to claim 1. [Then explain what the advantage of claim 1 is]

According to a first aspect of the invention, there is provided a tin opener according to claim 1. The fact that the tin opener has an electrical energy source means that less physical energy is required on the user’s part to open the tin.

or

According to a first aspect of the invention, there is provided a [copy claim 1 from the preamble onwards]. [Then explain what the advantage of claim 1 is]

According to a first aspect of the invention, there is provided a tin opener having an electrical energy source. The fact that the tin opener has an electrical energy source means that less physical energy is required on the user’s part to open the tin.

It shouldn’t matter too much which of these variants you use.

The UK Intellectual Property Office promotes use of the first one (which they call ‘compact consistory clauses’) in their Code of Practice and it does cut down on page numbers and translation costs. However, I know of a situation (not my own, fortunately) in which a description was filed with the compact clauses, but around half of the pages of the claims were accidentally not filed. It’s a lot harder to argue that the missing claims are supported based on the drawings and specific description than if the full statements of invention which would have been exact copies of the missing claims had been present. However, if you are using the compact form, please bear in mind the examiners’ views on referring to claim numbers (from the 2009 Examiners’ Comments): Quite a few candidates are resorting to a preamble which just refers to claim numbers. Whilst this is acceptable and might save time, candidates should be careful to ensure that this brevity does not lead to inadequate supporting discussion.

For the dependent claims, either:

Preferably, [then take the wording from your first dependent claim]. [Then explain what the advantage of this feature is]

20

The Chartered Institute of Patent Attorneys

4. Everything Else Preferably, the electrical energy source is a battery. Batteries are readily available and…

or

[Use a conditional wording adaptation of your first dependent claim]. [Then explain what the advantage of this feature is]

The electrical energy source may be a battery. Batteries are readily available and…

You then repeat this for all of the dependent claims. When you hit the next independent claim, you’re claiming another aspect of the invention. For example, you might be claiming a method instead of an apparatus, a transmitter instead of a receiver, etc. Thus, you use the following wording or the second alternative wording above:

According to a second aspect of the invention, there is provided a [insert preamble of second independent claim] according to [number of second independent claim].

[Then explain what the advantage of that independent claim is]

According to a second aspect of the invention, there is provided a method of opening a tin according to claim 8. This method is particularly effective since the user can rely on the electrical energy source and need not over-exert themselves physically to open the can.

You should not include a statement of invention for an omnibus claim.

4.5 List of figures (2 Marks) A list of figures ought to be provided (Rule 12(7)). Candidates are reminded that the drawings generally show embodiments of the invention and ought to be described as such. Consistent reference numerals ought to be used in the description and different drawings when referring to the same feature.

You might want to introduce the drawings with something along the following lines:

[Preferred embodiments of] The [present] invention will now be described, by way of example only, with reference to the accompanying drawings, in which:

or How to Pass P3 • 2010

21

4. Everything Else

The above and other aspects of the [present] invention will now be described, by way of example only, with reference to the accompanying drawings, in which:

There is absolutely no reason why you cannot learn one of these, or your own way of introducing the drawings, by heart. I certainly did and it was one less thing to worry about in the exam.

In the same way as the description of the prior art discussed above under heading 4.3, there’s not a lot of point including drawings of prior art that aren’t relevant to the invention or something that’s so well known, no one would need to see a drawing of it.

You then need to explain what the Figures show. The following explanations might be useful, especially to those who do not draft mechanical patents in practice. It’s not a bad idea to make a crib sheet of any terms that you’re likely to use with an explanation of what they actually mean, if you have time: • • • • •

Figure X is a side view of Y = an orthogonal side view of Y Figure X is a plan view of Y = Y from above; Figure X is an underneath view of Y = Y from below; Figure X is a perspective view of Y = shows the perspective of Y, usually at an angle; Figure X is an exploded view of Y = components of Y are shown disassembled, that is,

away from their natural position; • Figure X is a sectional view of Y along the line A-A’ of Figure Z = imagine chopping Y along the line A-A’ and this is what you’d see. It is kind to the reader to put arrows pointing at right angles from the ends section line to show which of the two chopped parts of Figure Z you are viewing in Figure X; • Figure X is a part-sectional view of Y = some of it is shown in section, some of it isn’t; • Figure X shows Y being [insert method step] = might be useful; and • Figure X is a part-cutaway view of Y = part of Y is effectively transparent.

Some people prefer to say, for example, ‘Figure 1 is a side view of an embodiment of a Y in accordance with the present invention’ to emphasise that what is shown is merely one embodiment of the invention and not the only way of realising it.

It can sometimes be useful to refer to one Figure when describing another. For example: Figure 4 is a perspective view of the engine shown in Figure 3.

You might also wish to add that:

In the drawings, like parts are denoted by like reference numerals.

22

The Chartered Institute of Patent Attorneys

4. Everything Else

4.6 Labelling the figures (2 Marks) There are only a couple of things to remember here. Each page of figures needs to be numbered in the form ‘1/2’, ‘2/4’ or whatever. Each figure also needs to be numbered in the form ‘Fig. 1 (Prior Art)’, ‘Fig. 2’, ‘Fig. 3’, etc.

Also make sure that your leading lines start and terminate as close as possible to their respective reference number and the corresponding feature. A ‘squiggle’ somewhere between the two might not get you all the marks and is quite difficult to follow in practice. You could always use a ruler to draw the leading lines if you have time.

These marks are easy to get if you remember to do them. It would be good to get into the routine of labelling the pages and figures when you start working on them.

4.7 Specific description (18 Marks) The body of the specification should continue with the description (Rule 12(4)).

The specific description setting out the structure of the apparatus in some detail, followed by its mode of operation, was looked for, with variations or other embodiments described separately and subsequently and in as much detail as possible. Again, candidates are reminded that the specific description generally describes embodiments of the invention and the wording of the text should therefore reflect this. The use of the word ‘preferably’ in the specific description can lead to doubt as to whether the feature being referred to is actually a part of the particular embodiment being described. ‘Preferred features’ should be set out in the introduction /summary of the invention and the dependent claims.

Something mentioned as a ‘preferred feature’ in the description of an embodiment is not necessarily separable from the other elements of that embodiment. Hence, in practice, it might not be possible to pluck that feature on its own from the specific description when seeking to amend claim 1.

Candidates are reminded that a purpose of the description is to satisfy section 14(3) and to ensure that the application does not fall foul of section 72(1)(c).

It would be advisable, therefore, that all the claimed features are clearly disclosed and that the terminology of the claims can be followed through to the specific description.

For simple mechanical cases, at least, one test of a specific description is whether it can be understood without the drawings. Some candidates did little other than refer to the drawings.

Perhaps less practised candidates opening their specific description with the words ‘Figure 1 shows…’ lead themselves into the trap of a description which relies too heavily on looking at the drawings.

The 2008 marking scheme explains what is required for the specific description as: How to Pass P3 • 2010

23

4. Everything Else Sufficient in detail to provide enabling disclosure of claims, provide back-up positions for all features, especially if not claimed.

4.7.1

Purpose of the specific description

The specific description should describe what is shown in the drawings; not what might or could be shown in the drawings. I have this advice from an examiner: Specific description: Do not say ‘preferably’. Describe what is there, then add in any variations mentioned by the client as modifications/other embodiments.

It should be possible to read and understand the specific description without looking at the drawings, which means that candidates must do more than simply copy out what the client has said.

Taking 2008… some candidates did little more than say the device is as shown in the drawings.

If you look through some of the Examiners’ Comments, they promote using the tried-and-tested drafting method of: apparatus, use, alternatives: 2006, 2005: In the specific description, the time-honoured strict setting out of the structure of the apparatus in some detail, followed by its mode of operation, was looked for, with all alternative embodiments described separately and subsequently and also in detail.

This means that you start by describing what the thing is in terms of its physical and functional features. You wouldn’t say the following in the specific (clue in the name!) description: The tin opener preferably has a battery, although it might have X, Y, or Z instead and, of course, could instead of opening tins be used to open…

Describe the particular embodiment shown in the figure to which you’re referring. I think this is good practice in real life too. Sometimes you read specifications that have so many alternatives in the first few pages, you forget what the overall apparatus is as you’re trying to remember that the upper surface may be flat, ribbed, convex or concave and the bottom surface may be…

4.7.2

Describing the figures

From the 2006 Examiners’ Comments: It would be advisable that all the claimed features are clearly disclosed. It is good sign if the specific description can be understood without looking at the drawings. Consistent reference numerals should to be used in the description and different drawings when referring to the same feature.

Please do remember, however, that although the reader should not need to look at the drawings to understand the specific description, it is very likely that you will need to describe features that 24

The Chartered Institute of Patent Attorneys

4. Everything Else are not shown in the drawings. I reproduce an extract from the 2009 Examiners’ Comments which mentions the required level of detail.

Some candidates did little other than refer to the drawings. Perhaps less practised candidates opening their specific description with the words ‘Figure 1 shows…’ lead themselves into the trap of a description which relies too heavily on looking at the drawings.

I usually introduce the first figure I’m going to describe with something like: Figure 1 shows an electric tin opener 1 having…

Some people prefer the following wording: Referring to Figure 1, there is shown a tin opener 1 having…

I don’t think it really matters which of these or whatever else you use, but the reason I prefer the first one is that it makes life a lot easier if you have to scan back through the specific description searching for the description of a particular Figure (in the exam or several years down the line in real life) if the word ‘Figure’ appears at the start of a paragraph. In fact, in real life, I normally put ‘FIG. 1 shows…’ so that it really stands out.

4.7.3

Assigning reference numerals

You might want to start numbering from 10, for example, to avoid confusion with figure numbers. Also, a common technique is to use even numbers only, allowing you to adopt an intervening odd number if you find that you have forgotten to label a part to which you have referred in the description. Regions of a part might be given suffixes. All parts and regions to which you refer should have a reference number. For example: ‘a handle 24 has an aperture 26 at one end 28 (or 24a, if you prefer)’. Another technique is to start at a number higher than the number of figures, say ten, work up to 15 and then jump to 20 and work up to 25, etc (e.g. 10, 11, 12, 13, 14, 15, 20, 21, …). This gives you the 6-9s if you need them.

Remember that like features in each embodiment should be given the same reference signs.

So, for example, if Figure 1 shows something from above and Figure 2 shows the same thing from below, that thing should be given the same reference sign for both Figures 1 and 2. When you move on to a figure showing another embodiment, you can then move to new reference numerals.

If you want to emphasise the similarities and differences compared to previous embodiments, you can use the same references throughout for parts/features in common and different references for parts/features which differ between the various embodiments. Some practitioners prefer not to have exact correspondence between the reference numerals for the same or functionally equivalent part in different embodiments. For example you could add 100 each time to the reference number of the part in the first embodiment to provide the reference number to the same or functionally equivalent part in the second and further embodiments, so e.g. ‘part 34’ in the first embodiment, ‘part 134’ in the second embodiment, ‘part 234’ in the third, and so on.

How to Pass P3 • 2010

25

4. Everything Else One tip for keeping track of reference numerals and their corresponding feature is to create a rough ‘dictionary’ of reference signs and features, although this should not be handed in with your answer in the exam. This might look something like: Ref #

Feature

10

Handle

12

Blade

14

Pivot

16

…

Remember that you should include reference numerals in the specific description, but they are not to be placed in parentheses. The only exception to this is, perhaps, if you’re currently describing one figure and need to refer to a feature shown in another figure. In this case, you might want to put something like: Figure 4 shows a pen 40 which is almost identical to the pen 10 of Figure 1, except that the helical spring (14: Fig. 1) is replaced with a leaf spring 46.

4.7.4

Describing the product and its use

Try to use natural language as much as possible in the specific description. There is no need to use flowery language when natural language will suffice. It reminds me of an actual e-mail I saw that was sent to a landlord complaining that ‘there was an odour somewhat reminiscent of natural gas that was emanating from around the boiler’ and was ‘more than slightly detectible by the human nose’. Surely ‘the boiler seems to be leaking gas’ would have been fine. The point is that there is a temptation to use flowery, vague and waffly language in the specific description, whereas conciseness and precision are more useful.

Then, once you have described what the thing is, explain how it is used. Again, this should be a specific mode of operation, rather than all of the possibilities lumped in together. I usually start this part very simply with the words: In use,…

You then need to explain how the apparatus works, i.e. how the end-user operates it, how it is used to manufacture something or whatever else might be necessary.

Then, you can explain any alternatives or modifications that are relevant to that embodiment.

If there are only a handful of alternatives in the whole paper, I’d be tempted to leave them until the end of the specific description (see below).

Then, you repeat the ‘apparatus, use, alternatives’ approach as appropriate for the other figures.

Once you have described everything, you can then explain that, although you have described something specific, other modifications are within the terms of the claims. You could introduce the modifications using the following wording: 26

The Chartered Institute of Patent Attorneys

4. Everything Else

Various modifications will be apparent to those skilled in the art. For example, instead of the upper surface being flat, it may be ribbed, convex or concave…

If you’re not going to be listing any alternatives or modifications, such a boilerplate clause seems quite superfluous.

How to Pass P3 • 2010

27

5. Abstract

5. Abstract

5.1 Abstract (5 Marks) The abstract commences with the title (Rule 15(1)), and then indicates the technical field (Rule 15(3)(a)), the technical explanation of the invention (Rule 15(3)(b)) and the principal use of the invention (Rule 15(3)(c)). The abstract should indicate the figure which should accompany the abstract when published (Rule 15(4)). Where a feature of the invention included in the abstract is illustrated in a drawing, the feature must be followed by the reference for that feature used in that drawing (Rule 15(6)).

From the 2009 marking scheme, you could get five marks for: Title, tech field, tech explanation, principle [sic] use, figure, reference numerals These have to be some of the easiest marks to get in P3, but the score is often very low, as explained by a P3 examiner: Abstract: Typically five marks are available and candidates usually score one or two. They should be very familiar with the relevant UK rules. In particular, a title and reference numbers should be provided, a Figure should be specified, and the problem and solution should be identified. It is not acceptable simply to write out claim 1. It should be broken into sentences and, better still, claimtype language should not be used at all. It should be 5 easy marks!

Indeed, the low quality or omission of an abstract altogether still appears to be a problem, as can be seen from the 2009 Examiners’ Comments: Some candidates omitted an Abstract. They cannot gain any points allocated to an Abstract that isn’t there. Too many candidates included the unnecessary phrases ‘The invention comprises…’ or ‘According to the invention’ in their Abstract.

Summing up the above, you need the following six components to get the full five marks, so it is worth learning them off by heart: • • • • • •

Title Technical field Explanation Principal use Figure Reference signs (without brackets in the UK!)

I’ve copied the following from the Manual of Patent Practice, which highlights most of the pitfalls of preparing an abstract (my emphasis added in parts): How to Pass P3 • 2010

29

5. Abstract 14.173:

The abstract must have a title which encapsulates the invention.

14.174:

The abstract title can be different from the title given to the application on filing. The latter is unlikely to make a suitable abstract title if, as is generally the case, it is expressed in broad terms to avoid disclosure of the invention in the Journal before the application itself is published. If the abstract title is unsuitable (for example if it is too long or too vague) the examiner should amend it. Examples of titles which are regarded as unsuitable are: (a) any title including such expressions as ‘improvements in or relating to’ or ‘and the like’ (b) titles such as ‘chemical compound’ or ‘control circuit’, which give little or no indication of the invention (c) over-long titles which are apparently intended merely to indicate that the specification contains claims in certain categories (process, apparatus, etc), e.g.

‘Gas-permeable seamless pipe structure and method and apparatus for production thereof’, or ‘Method of bleeding a hydraulic system and means therefor’ (d) over-long titles which contain matter, for example relating to possible fields of application of the invention, more properly to be found in the body of the abstract (e) titles including a trade mark.

14.175:

The text of the abstract should comply with r.15(2), (3) and (7), which read: (2) The abstract must contain a concise summary of the matter contained in the specification.

(3) That summary must include – (a) an indication of the technical field to which the invention belongs; (b) a technical explanation of the invention; (c) the principal use of the invention.

(7) The abstract must not contain any statement on the merits or value of the invention or its speculative application.

14.182:

An abstract should normally contain not more than 150 words, as it is unlikely to be considered to be concise if it extends beyond 150 words. There is space on the front page which will accompany the printed specification for little more than 200 words, and abstracts should be reduced to this length, unless a longer text is essential.

Unnecessary phrases such as ‘the invention relates to’ or ‘and the like’ may be deleted, and an unduly long introductory statement which only indicates what is old and wellknown may be curtailed or deleted. While the removal of such superfluous matter is of particular importance when the abstract is longer than 150 words, it may also be deleted even if the abstract is short.

30

The Chartered Institute of Patent Attorneys

5. Abstract 14.183:

It is not necessary for the abstract to indicate the kind of protection sought by the claims.

Thus for example if an apparatus has been described in the abstract and the specification includes claims to a method of using the apparatus and/or to an article produced by the apparatus, there is no need for the abstract to indicate this if the technical features of the method and article are implicit in the description of the apparatus.

The legal phraseology or the sentence structure used in patent claims, should be avoided in abstracts. Thus an abstract that is identical to, or closely resembles, an independent claim should not be filed, nor should an abstract use words commonly associated with patent claims such as ‘said’ and ‘means’.

14.188:

Drawings particularly for the abstract are not required and should not be filed. The applicant is required to indicate on the abstract which figure, or, exceptionally, figures of any drawings of the specification should accompany the abstract when published. If he has not done so it is up to the search examiner to decide which figure(s) should be used. The search examiner may decide that one or more figures other than those suggested by the applicant may be used instead or additionally if he considers that they better characterise the invention.

Normally not more than one figure should accompany the abstract. Exceptionally two figures may be used provided that, when sufficiently reduced in size to be accommodated on the front page of the application, they, together with the reference characters thereon, would still be readable.

14.189:

It should be clearly apparent from the abstract what the or each accompanying figure represents. To aid identification of features mentioned in the abstract, relevant reference numerals which appear in the selected figure(s) should be freely used in the abstract.

Numerals which appear only in other drawings should normally not be used, although exceptionally, a numeral which is considered necessary for an understanding of the abstract but appears only in these other drawings, may be referred to. Such reference should be bracketed, e.g. (29, Fig 16), without any additional wording such as ‘see’ or ‘not shown’.

When this expedient is adopted it should be ensured that reference numerals which do appear in the abstract drawing(s) are without brackets.

An example of a reasonable abstract which would get most of the available five marks could be something like: Electric Tin Opener An electric tin opener 1 has an internal battery 4 which is used to drive a small motor 2, which in turn causes a cutter 3 automatically to open the lid 7 of a tin 6.

The fact that the tin opener 1 is electric obviates the need to expend significant amounts of physical energy opening the tin 6, which can make opening tins 6 easier for the elderly or infirm.

[Figure 3]

How to Pass P3 • 2010

31

5. Abstract An example of a not-so-good abstract which might only get a mark or two (or possibly none; I don’t know!) would be something like: Apparatus and Method for Removing the Lid of a Tin-like Object Containing a Food-like Substance The present invention relates to, but is not limited to, an apparatus (1) for removing the lid (7) of a tin-like object (6) which contains food, a beverage or the like, the apparatus (1) comprising: motor means (2) driveable by an associated power supply means (4) and lid-removal means (3) driveable by said motor means (2), whereby the lid-removal means (3) can remove the lid (7) of the tin-like object (6). The apparatus (1) of the present invention is an improvement over the well-known mechanical tin opener because it is almost impossible to get lids off tins using the latter. The present invention also extends to a method of opening a tin-like object (6) using the abovementioned apparatus (1).

32

The Chartered Institute of Patent Attorneys

6. General

6. General

6.1 Notes to the examiner From the Examiners’ Comments: 2008: Notes to the examiner are rarely useful and do not gain marks since they do not form part of the drafted specification on which candidates are being examined.

If you feel the need to explain why you have done something to the examiner, you stand a good chance of failing. Your answer should be clear in itself.

6.2 Other tips 2008: Other perennial advice is worth repeating also: write on every other line and perhaps make each claim the subject of a new page, or at least leave very large gaps between them, to make plenty of room for later amendments.

• Write on every other line. I kept forgetting to do this in practice papers as I had other things on my mind, so I prepared a pad of lined paper on which I put a cross at the start of alternate lines so that I knew not to write on them, which looked like this:

X X

I wouldn’t suggest doing that in the exam itself, but it might be a useful trick to get you into the habit of missing alternate lines.

• Plain English is usually quite good enough for claim drafting.

• Avoid the word ‘said’ in claims. Use ‘the’ instead. ‘Said’ really annoys some people including me. If, for some reason, you are referring to something which is not intended to be part of the claimed invention, you might use ‘said’ when referring back to it: A can opener for a can of paint, said can having a lid which is a snap fit inside a rim, the can opener having…

• Does the word ‘predetermined’ really add anything to claims? I often end up with it in a draft claim when I’m trying to avoid explaining how something actually works or can’t really decide how I want to claim it. It’s one of those terms that can look useful, but often does not have a lot of meaning. I sometimes call these words ‘ghost’ words. Other examples How to Pass P3 • 2010

33

6. General that should be considered on a case-by-case basis are ‘automatically’, ‘whereby’, ‘such that’, ‘so that’, ‘given’ and the like.

• There are some ‘patentese’ words that can be a bit unnecessary in claims (in my opinion).

They are quite difficult for people who don’t have English as their natural language, and also some clients, to understand quickly. Some of the words below can be a bit ambiguous in that it’s sometimes not clear to which earlier entity you’re referring. The same goes for any pronoun used in the claims. They can be useful in making the claims more readable but elegance, while desirable, has to take second place to clarity:  Wherein = ‘in which’  Whereupon = ‘upon which’  Whereunder (!) = ‘under which’  Wherebetween (!) = ‘between which’  Therebetween = ‘between them’  Whereat = ‘at which point/position’  Whereby = ‘so that’ or ‘such that’  Aforementioned = ‘the’  Above-mentioned = ‘the’  The said = ‘the’

• Remember that method-like steps should not appear in apparatus claims and vice versa. For example, wording such as ‘a tin opener comprising a motor driving a cutter’ is sloppy.

Wording such as ‘a tin opener comprising a motor arranged to drive a cutter’ would be better.

• I always started each claim on a new page, but this might be a bit excessive. It’s worth having a page for claim 1 itself and leaving a good gap (4+ lines) between the dependent claims though.

• Remember the repercussive effect. If claim 1 is directed to a car having wheels and claim 2 specifies that ‘the wheels are round’, this implies that claim 1 covers wheels that aren’t round which could lead to claim 1 covering unworkable embodiments.

• Be careful with antecedence in the claims. Only use ‘the’ in the claims to refer back to something that has already been mentioned earlier in the claim. An exception to this would be something like ‘the larger of variable A and variable B’, where one is always larger than the other. Also, UK drafting style need not be quite as obsessive as US drafting when it comes to inherent features. For example, it is perfectly acceptable to say ‘the length of the rod’ after having introduced ‘a rod’. It is unnecessary first to say ‘a rod having a length’.

----------Good luck in the exams!

34

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper We roughly know what to do and what not to do for the P3 exam now. However, actually answering a P3 paper involves understanding what’s being asked of you in the exam and applying everything we’ve learned so far.

Below, we first look at a typical P3 question paper in detail. We will then work out a possible answer to the paper, section by section.

In the exam itself, it is a good idea firstly to read through the entire paper fully to familiarise yourself with the technology and the terminology and to get a general overview of what is expected from you in your answer. It is then a good idea to read through the paper again carefully, making notes as you go along. You often hear people saying that you need to understand and appreciate the relevance of every word and sentence in the context of the paper. This is certainly the case with P3. Below, we’re going to look at the 2007 P3 paper on a paragraph-by-paragraph basis, assuming that we have already carefully read the paper a couple of times.

By way of little bit of background information, I prepared a ‘draft’ worked example which was very similar to what is shown below. It was reviewed by several P3 examiners, who proposed a few changes (which I’ll highlight below) to bring it more into line with what they are looking for in the exam. Let’s hope that you will benefit from my slight embarrassment of having the examiners revise my example!

P3 2007: Mr Buzz’s Beehive Smoker Section 1 – Introduction You arrive in the office and listen to your answerphone. You have a message from your client, Mr Buzz, who called you from hospital earlier today. His message was as follows: ‘You remember we spoke about my new smoker recently, well there have been some developments. I thought the idea was so good that I arranged an open day today at my beehives to demonstrate it. I seem to remember you saying that I shouldn’t tell anyone about the idea before the patent was filed but it was only some people from the local bee-keeping association and a journalist from the HoneyBee Post who will be publishing his online article on Friday.

Anyway, to cut a long story short, I had a slight accident with one of the hives. As a result, I was rushed to hospital in anaphylactic shock and it’s a bit painful to talk at the moment.

However, the smoker worked a treat. I sent you details of the invention last Friday. Can you please just get on and file the patent application for me as I’m not going to be able to come into your office or take visitors for a while and I would like to approach a manufacturer as soon as I get out of hospital; it would be helpful if I could tell them that a patent application had already been filed.’

How to Pass P3 • 2010

35

7. Worked example – 2007 P3 paper Although this is only the introduction, it does have several significant pieces of information in it. Sometimes, this section includes a description of the prior art or some hint of the invention, although it does not in this instance.

The introduction tells us that our client is called Mr Buzz, he has some beehives and he wants us to file an application today because of an imminent disclosure and we can’t check any information with him. He wants us to file an application for his new ‘smoker’ based only on the information he sent us last Friday.

He also explains that he is going to approach a manufacturer soon so we will need to make sure that our claims would be useful to a manufacturer (e.g. to enable him to manufacture and sell the new smoker to the exclusion of others).

Section 2 – Information You look through your post and find a letter from Mr Buzz, together with sheets detailing his smoker, which read as follows:

Mr Buzz’s idea relates to a ‘smoker’.

Section 2.1 – Problem and prior art 1 (CO2) ‘It’s always a bit tricky opening and examining beehives, the bees never seem to get used to it and they can sometimes sting quite ferociously. Some people administer carbon dioxide to the hive, which causes the bees to pass out.’

Mr Buzz tells us that bees quite understandably dislike their beehives being disturbed and often sting the bee-keeper as a result. I expect that this is the general problem that Mr Buzz’s smoker is going to solve, but I do not know this yet. It certainly looks like it could be a, or the, problem associated with the prior art.

We are also told, in effect, that it is known to administer CO2 to make the bees pass out so that they do not sting the bee-keeper. We accept this as a prior art method of solving the problem. I use the term ‘method’ intentionally. We don’t know what apparatus is used to administer the CO2 at this stage.

36

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper

Section 2.2 – Prior art 2 (generate smoke) Another popular technique is to try to make the area around the hive smoky. The bees smell the smoke and gorge on honey. This seems to distract them whilst you examine the hive and it is thought that, like humans, they don’t really fancy a fight with a full belly and so the amount of stinging is drastically reduced. The smoke can be made in lots of different ways.

Now we’re told that another prior art way of solving the previously mentioned problem of stopping the bees stinging is generating some smoke around the beehive, again to stop them stinging. All we’re told about the smoke is that it can be made in several ways; we don’t know exactly how.

Section 2.3 – Prior art 3 (damp straw) A technique which I and many other bee-keepers have used for some years is to get a tight bundle of damp straw and use a blow torch to get it lighted. The straw then burns and generates plenty of smoke. You can waft this around and try to blow it into the hive, although you have to watch out for burning embers and, if you get too close, you can burn through your protective veil.

We’re told that a further prior art way of solving the problem of stopping the bees from stinging is to get a damp bundle of straw, light it and use the lit straw to generate smoke. This sounds like it is a specific ‘apparatus’ (albeit a primitive one) for generating the smoke mentioned above in prior art 2. However, although the lit straw can generate the smoke to stop the bees from stinging, it produces burning embers which can burn through a bee-keeper’s veil if he gets too close to the lit straw when blowing it. This safety issue is a disadvantage associated with the lit straw.

Section 3.1 – Client’s product (notice that I have used the word ‘product’ rather than ‘invention’) My smoker makes this process much easier. As you can see from the drawings, the straw or other suitable material, is enclosed within the cylindrical smoker firebox and smoulders inside.

The smoker is made of copper and is around 30 cm high.

You’ll see that I’ve changed the section numbering from 2 to 3. This is because the client is now talking about his new smoker which makes the process of generating the smoke to stop the bees from stinging simpler. The words ‘[my] smoker’ unambiguously tell you that he is talking about his new smoker rather than anything in the prior art.

How to Pass P3 • 2010

37

7. Worked example – 2007 P3 paper He’s also told me about some drawings (reproduced below). I’ll refer to them as and when I need them.

So what else is he telling us? His new smoker can use straw ‘or other suitable material’. This immediately makes me think that if I decide to specify this in the main claim, I should not limit the claim to ‘straw’ because this would exclude the other suitable material from the scope of the claims. As a consequence of this, I’m also starting to think whether I would even want straw in the claim anyway. This is because it’s going to be a consumable of the smoker and I wouldn’t want a competitor to be outside the scope of my client’s claim just by not selling a/the consumable with an otherwise identical smoker.

The P3 examiners suggested that I point out that although it could be argued that selling the smoker without the fuel might constitute indirect (or contributory) infringement in the UK, some countries do not have such provisions. Accordingly, it is usually preferable to rely on direct infringement wherever possible. In some cases, this might not be possible and you will need to rely on contributory infringement where available.

A new term ‘cylindrical smoker firebox’ is introduced. As soon as I read this, I think: must the firebox – whatever it is – be cylindrical? Geometric terms can cause pretty serious limitations in claims, so be very careful when you see them: what exactly does the term ‘cylinder’ mean?

At this stage, I’m not entirely sure what he means by a ‘firebox’, but an intelligent guess in view of everything that’s gone before in the paper would be some form of box or hollow body that contains fire or, perhaps, the straw or other suitable material. This interpretation seems quite likely given that the client says that the straw or other suitable material ‘smoulders inside [the cylindrical smoker firebox]’. A quick glance at FIG. 2 confirms that the firebox is the main hollow body of the smoker.

The client tells us that his smoker is made of copper and is around 30cm high. My gut feeling is that neither of these attributes of his smoker is going to turn out to be essential to achieve the advantage associated with his invention, but I can’t be certain yet. If it turns out that these attributes do need to go in an independent claim, I’ll certainly be wondering whether copper could be generalised and why ‘around 30cm’ is such an advantageous height for the smoker.

Section 3.2 – Client’s product (lid) The hinged lid on top of the firebox forms a chimney which narrows towards the top. This enables the smoke to be concentrated into a narrow plume which can be directed into the hive. The offset chimney facilitates ease of use since the smoker can be held generally upright, whilst the smoke plume exits at an angle. Holding the smoker upright is desirable since otherwise the material in the firebox gets disturbed which reduces the efficiency of the smoker and can cause it to go out.

Right, I’m going to have to keep an eye on FIGs. 1 and 2 to work out exactly what he’s describing.

We know that the firebox has a lid. We also know that, in the client’s product, the lid is hinged. Does the lid have to be hinged or could it be connected to the top of the firebox by some other means? I don’t know how important the lid or the hinged connection is at this stage.

38

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper The lid has a chimney which narrows, as can be seen in FIGs. 1 and 2. We are told by the client in the following sentence that this narrowing chimney has an associated advantage of enabling the smoke to be concentrated into a narrow plume which can be directed into the hive.

This sounds sensible because if you didn’t have a lid and chimney, the smoke could just drift out the top of the firebox and how would you direct it towards the beehives?

He then talks about ‘[the] offset chimney’. He’s not referred to an offset chimney before, but in the light of the drawings, it’s clear that he means that the narrowing chimney is offset somehow. I’ll come back to this in a moment.

He also tells us that the advantage of the offset chimney being offset is that it makes the smoker easier to use. This is because the smoker can be held upright, i.e. in a natural vertical orientation, but the smoke can be directed out of the firebox at an angle. Holding the smoker upright is desirable because if you tilt the smoker, the material in the firebox gets disturbed, which can reduce the efficiency of the smoker or can even cause it to stop producing smoke. This also seems sensible.

Returning to the word ‘offset’, I have to confess that in the light of what is shown in the drawings, the fact that Mr Buzz explained that the smoke leaves ‘at an angle’ and that the advantage associated with the chimney being offset, I had immediately assumed and understood that ‘offset’ meant angled relative to the axis of the firebox.

However, the P3 examiners have pointed out that the term ‘offset’ is open to interpretation.

It probably means that the axis is either vertically offset from, but collinear with, the firebox axis or that the chimney is at an angle to the firebox axis. There are, thus, two different possible interpretations of the word ‘offset’. I feel that the second interpretation is more sensible because he explains that the offset nature of the chimney allows the bee-keeper to hold the smoker upright, but this needs some discussion in the specific description to avoid ambiguity. Since construction or interpretation is examined more heavily in P6, I refer you to Chapter 4 of Nigel Frankland’s How To Pass P6 guide, published in 2010 by CIPA, which explains interpretation in more detail.

As this stage, Mr Buzz has identified a feature of his new smoker which gives rise to an advantage. Whilst he is clearly describing a feature that has an associated advantage, is that feature essential to the invention? In other words, can we decide whether or not the form of the chimney is the ‘invention’ that we are seeking to protect? Mr Buzz has said that the offset chimney facilitates use of the smoker and increases its efficiency, but is this the main advantage that we are seeking to protect? At this stage, I suggest that the answer is that we cannot be certain.

How to Pass P3 • 2010

39

7. Worked example – 2007 P3 paper

Section 2.4, 2.5 and 3.3 – Client’s product (grate) and some sneaky prior art (garden incinerator/woodburning stove) As the straw burns, most of the ash falls through the grate at the bottom of the firebox. In this way, the firebox is similar to a garden incinerator of the ‘dustbin’ type, or a conventional woodburning stove; only in the incinerator the grate is open to the air below; the whole thing being raised off the ground on legs. There are additional holes in the sides of the incinerator or at the bottom of the woodburning stove to encourage plenty of airflow. The plentiful airflow reduces smoking to a minimum. The known ‘dustbin’ incinerator has a removable lid with a central, vertical chimney whilst woodburning stoves are provided with a chimney in a variety of orientations to suit the room in which they are fitted.

The firebox has a grate at its lower end through which the ash can fall. Fair enough.

The next part of this section of the paper highlights some of the real-life difficulties that you can encounter when drafting applications based on information from clients. Mr Buzz has suddenly thrown in some more prior art in a section of text that initially relates to his new smoker. Notice the words ‘conventional’ and ‘known’. These words make it clear that the known and conventional objects being described are to be taken as prior art [and may form part of the common general knowledge of a person skilled in the art] over which we must define patentably.

So, we are told that another piece of prior art is a known (= prior art) dustbin garden incinerator and that yet another piece of prior art is a conventional (= prior art) woodburning stove.

We are told that a difference between the client’s firebox and a known incinerator is that although the incinerator also has a grate through which ash can fall, that grate is open to the air at its lower end and sits on legs. As we can see from FIG. 2, our grate is not open to the air below and is spaced from the ground by the lower part of the firebox.

Both the known incinerator and the conventional stove have additional holes – at the sides of the incinerator and the bottom of the stove – to encourage airflow and minimize smoking. It looks from FIG. 2 like we might have a hole (called an ‘inlet tube’) in our smoker, but Mr Buzz hasn’t told us anything about this yet. Also, it is interesting that the holes in the stove and incinerator are said to reduce smoking. That sounds like the opposite of what we’re trying to achieve with our smoker (there’s a clue in the name).

The known incinerator has a removable lid with a central vertical chimney. So, this chimney is neither described as being a ‘narrowing’ one nor an ‘offset’ one as is the case with Mr Buzz’s smoker. The lid is said to be removable, so it’s probably not a hinged lid.

However, the conventional stoves can have chimneys ‘in a variety of orientations to suit the room in which they are fitted’, which suggests that the chimneys are inclined in some cases.

40

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper

Section 3.4 – Client’s product (cage/shield) Surrounding the outside of the smoker firebox is a cage or shield (not shown in the sectional view, Fig. 2). The cage can simply be a ‘U’-shaped sheet of metal, although this tends to get quite hot and so I use a strong, typically stainless steel, wire mesh which secures e.g. to the bracket holding the bellows. Even when the firebox gets really hot, the cage is generally cool enough not to cause a severe burn if touched, particularly when wearing gloves.

We’re now told that the smoker has a cage or shield.

The cage ‘can’ be a U-shaped sheet of metal. The word ‘can’ means that the cage need not be a U-shaped sheet of metal. This strongly suggests that the feature should not be in the independent claim, but might be suitable for a dependent claim. Given that the U-shaped sheet can apparently get hot, what would its associated advantage be? I’m not certain that there is one so, at this stage, I’m not sure that it’s going to warrant a dependent claim.

Mr Buzz normally uses a strong ‘typically’ stainless steel wire mesh. ‘Typically’ again indicates that the wire mesh need not be made out of stainless steel. We’re told that the wire mesh is secured to ‘the bracket holding the bellows’. Mr Buzz hasn’t introduced either the bracket or the bellows before, but we can see what he means from FIG. 2. The advantage of having the cage is that even when the firebox reaches a high temperature, the cage is not at such a temperature that would cause a severe burn if touched, e.g. when wearing gloves. So, the advantage of the cage is linked to the safety aspects of operating the smoker.

Section 3.4 – Client’s product (bellows/fan) One valve of the bellows attached to the firebox allows air to be sucked in, whilst the other enables the air to be blown out through an air exit hole. The bellows are fitted with a return spring. They can be depressed to cause air to be expelled and then will automatically reinflate ready for subsequent use. There is no particular reason why a mechanical or electrical fan couldn’t be used in preference to the bellows.

The bellows that are shown in FIGs. 1 and 2 are now introduced. The bellows are said to have an air inlet and an air outlet valve and a return spring which causes the bellows to reinflate automatically after they have been depressed. Thus, we are told of an advantage associated with the return spring. However, we’re also informed that, in fact, bellows per se are not essential at all; a mechanical or electrical fan could be used instead and so neither bellows nor a fan should appear explicitly in the main claim. This makes me think more generally that perhaps any form of driven air supply might be suitable.

How to Pass P3 • 2010

41

7. Worked example – 2007 P3 paper

Section 3.5 – Client’s product (air inlet tube) The amount of ambient air which can enter the firebox is restricted by the air inlet tube, which is the only inlet for the air. This ensures the generation of smoke in a controlled manner by causing the straw to smoulder rather than burn, due to the relatively low amount of oxygen available. The smoker can produce small amounts of smoke from the air provided through the air inlet tube. More smoke can be produced by squeezing the bellows a few times to increase temporarily the amount of oxygen and the flow of air in the firebox. This drives accumulated smoke out of the chimney and also increases smouldering combustion, without producing flame.

So, we have a single air inlet in the form of an ‘air inlet tube’. I’m not sure that I’d want to use the words ‘single’ or ‘only’ in a claim because they are rather limiting. Could a competitor avoid infringement by having a few other very small air inlet tubes? It’s a possibility, so just bear it in mind.

The air inlet tube restricts the amount of air entering the firebox so that the straw smoulders rather than burns and produces smoke in a controlled manner. The advantage associated with the air inlet tube is that it controls the generation of smoke.

The smoker produces small amounts of smoke from the ambient air surrounding the air inlet tube even when the bellows are not being used. Thus, the bellows, fan or even any kind of driven air supply appears not to be necessary for the smoker to function properly. The bellows can be used to increase airflow and thereby to drive smoke out of the chimney and increase smouldering combustion, all without producing a flame. However, this section tells us that the driven air supply is not essential and should not be included in the main independent claim.

This section tells us how smoke is produced using a restricted air supply.

Section 3.6 – Client’s product (bellows cone, long inlet tube, no inlet tube) A cone can be fitted to the air exit hole of the bellows. This concentrates and speeds the air emitted. In turn, the air column travels further into the firebox and the column of air draws in additional surrounding air which increases the volume of air delivered. The air exit hole and the air inlet tube need to be aligned to enable air to pass from the bellows into the firebox. A reasonably long air inlet tube oriented horizontally helps to reduce the amount of convected air drawn into the firebox between puffs which helps to control the smouldering. But provided that the firebox inlet hole is not too large, satisfactory results can be obtained even without any tube.

Another apparently optional feature (highlighted by the use of the word ‘can’) is a cone at the air exit hole of the bellows. The purpose of the cone is to concentrate the emitted air in a particular way so that it travels further into the firebox and draws in more surrounding air.

42

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper The air exit hole and air inlet tube on the firebox ‘need to be’ aligned. What does ‘need to be’ mean in this context? Should this feature be in the main independent claim? Well, we have already established that a driven air supply is not essential. Thus, the air exit hole is also not essential. If the air exit hole is not essential, then it should not be included in the main independent claim and, thus, neither should the relationship between it and the air inlet tube.

The air exit hole is not essential to claim 1 because the bellows are not essential, but it might be essential to the use of the bellows in real life.

Another feature which is not explained as being essential is a ‘reasonably long air inlet tube’.

A subjective relative term like ‘reasonably’ should jump out if you were thinking of using it verbatim in claim language. I can readily foresee an IPO examiner, a judge or your boss saying that ‘reasonably’ is vague and unclear and I would tend to agree. In any case, the advantage associated with the reasonably long air inlet tube is that is helps control smouldering. This sounds like a good technical advantage. Particularly in view of the final sentence of that section, the relatively long tube is not essential and that feature could form the basis of a decent dependent claim.

The final sentence of that section explains that, in fact, no air inlet tube is required at all as long as the firebox air inlet hole isn’t too large. Although the results are only satisfactory, it still works. We can take from this final sentence that the tube should not be included in the main independent claim.

Section 3.7 – Client’s product (position of air inlet tube) If the air inlet tube is located right at the bottom of the firebox, then the airflow can become clogged by ash. If the air inlet tube is located above the grate, then the burning ash is disturbed.

Somewhere between these two seems to give the best results.

The air inlet tube, which we know is optional from section 3.6, can be located at the bottom of the firebox, above the grate, or somewhere in between. We are told of disadvantages associated with the first two positions. From this, we can infer that locating the air inlet tube – when provided – between the base and the grate has the advantage of the tube not becoming clogged by ash while also not disturbing any ash. The specific position of the air inlet tube feature is an ideal candidate for a dependent claim.

Section 3.8 – Client’s product (smoker lid and smoker material) The lid can also be pushed or screwed on but this can make filling the firebox difficult, particularly when the lid is hot and, once removed, the lid is easily lost. If the lid is pushed on, it is held in place by a friction fit and a loop of springy wire can be used to help the lid be removed without burning your fingers. Also, the smoker can be made of steel or another suitable metal.

How to Pass P3 • 2010

43

7. Worked example – 2007 P3 paper In section 3.2, we found out that the lid could be hingedly attached to the firebox. Here, we are told that it could also be a push-fit or a screw-fit. Either way, because the lid can be removed, it can apparently get lost and it can also be trickier to handle because it gets hot. Implicitly, one of the advantages of a hinged lid is that you are less likely to lose it and you may not have the same concerns about hot lids with a hinged lid. Again, we can see from this section that a hinged lid is not essential and shouldn’t be included in the main independent claim since there alternative lid types.

A push-fit lid can be difficult to remove from the smoker because it is an interference fit – i.e. a fit that relies on the friction between the inside of the lid and the outside of the firebox.

However, by using a loop of springy wire, it is easier to remove the lid.

The smoker can be made of steel or any other suitable material. Thus, the main independent claim should not be limited to a particular material, particularly not to copper which was mentioned at the beginning of the paper.

Section 3.9 – Client’s product (summary of advantage) As you can see, using this arrangement, smoke can readily be produced in a safe and controllable manner.’

There is quite a tendency to skip this final section and not read it. It’s a short sentence and you’ve probably come to a conclusion about what the invention is before you’ve got this far.

However, this sentence tells you what the advantage associated with the invention is. From this, you may be able to work out what the invention is, i.e. the minimum necessary to produce smoke in a safe and controllable manner. Sorry for the underlining, but this is important.

Section 3.10 – Instructions (what the client wants) Prepare a full patent specification for filing at the UK Patent Office which will form the basis for the widest practicable protection for your client. Include no more than ten dependent claims in your answer.

Marks will be awarded as follows: Introduction, review of prior art and statement of invention – 10% Specific description – 20% Main claim(s) – 40% Other claims – 25% Abstract – 5%

Again, it’s important to read this bit carefully. Do you need to prepare an abstract? Do you need to prepare statements of invention? Sometimes, you may not need to. In this case, you need to prepare 44

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper all the usual stuff. With reference to section 3.1 of the main part of this guide, make sure you check how many dependent claims the examiners are looking for. In this case, they only want ten dependent claims. There is no point in including 20 dependent claims because: a) presumably only the first ten will get marked and they may not be the strongest out of the full set of 20; and b) I imagine that it does not fill the examiner with confidence that you have read the client’s instructions carefully.

Section 3.11 – Figures

How to Pass P3 • 2010

45

7. Worked example – 2007 P3 paper An essential final part of extracting all of the useful information from the client’s documents is to look through the drawings. Is anything useful disclosed that he hasn’t explained above? It’s really good practice to get used to this. The number of times real-life clients give you a written description of a Figure and then you spot something else in the Figure that hasn’t been described is quite remarkable.

Also, do you understand how the invention works?

Let’s look at FIG. 1. I can see the bellows, the bracket, the cone on the air exit hole of the bellows, the air inlet tube on the firebox, the firebox itself, the cage, the hinged lid and the chimney. I know about all of these already.

However, I can also see what looks like a solid handle on the lid. I know that I can have a wire one, but this is some other type of handle.

I’d be lying if I said that, upon inspection of FIG. 1, I’d notice the hook on the left, but I’ll come to that in a second.

Looking at FIG. 2 confirms that the suspected handle is, indeed, a handle. It’s there for insulating purposes, as explained in the text on the drawings. The advantage is clearly that it reduces heat transfer from the lid to the bee-keeper’s hands. We can deduce that it’s not essential because there is an alternative in the wire loop.

The mysterious hook shown in FIG. 1 is also detailed in FIG. 2. The advantage of the hook is that it allows the smoker to be hung from a wall so that it is always to hand. It’s not explained as being essential but certainly seems like it might be an optional feature that warrants a dependent claim.

A liner is also shown in FIG. 2 that has not been discussed in the text. It is a ventilated protective inner sleeve that can be replaced when heat damage becomes severe. The liner thus appears to protect the inside of the firebox from severe heat damage.

Aside from these new features, we already know about the chimney, hinge, firebox, grate, inlet tube, bracket, return spring, bellows, valves in the bellows and the cone on the air outlet hole of the bellow.

Where do we go from here?

Great. So we now know exactly what the client’s product is. It’s as shown in FIGs. 1 and 2 and as described in Mr Buzz’s letter.

Here’s my Integer Tree (see section 3.1 of the main part of this guide). We didn’t have quite enough space to fit the full Integer Tree on one page, but the lower part of the Tree on page 47 is a horizontal continuation of the upper part, where corresponding rows of the Tree are given the same reference letter (A, B, C). If you would like to have a continuous version, please visit the website that accompanies this book at: www.howtopassp3.com. You don’t need to write this out in the exam, but you can do if it helps. I would conservatively allow 15 minutes of exam time to prepare the Integer Tree if you do decide to use one because it can sometimes be a little tricky to work out which features are on which levels and which features are subsidiaries, etc. It’s really just a way to visualise and organize all of the features that are probably in your head at this stage. I have been trying to think of situations where the Integer Tree might lead you in the wrong direction or might cause you to claim more narrowly or broadly than you might otherwise do. As long as you treat the Integer Tree as one of many tools that are part of your drafting arsenal and do not rely on it exclusively, I can’t see any major problems with it. If you can see any problems or find a situation where it does more harm than good, please e-mail me and let me know.

46

The Chartered Institute of Patent Attorneys

How to Pass P3 • 2010

Bellows

C

Hinged

Friction Fit

Insulating

Firebox

And

Wire Loop

Handle

Of

On

Tube

Attachment

Bottom

Cone

Horizontal

Grate

With

Long

Between

Aligned

Reasonably

Tube

Restricted Air Inlet

B

Hook

Lid

Liner

A

C

B

A

Metal

Hole

Narrowing

Offset

Chimney

shaped

Inlet

Copper

Other

Valves

Cone

Electrical

Driven Air Supply

Steel

Stainless

Bellows Return Spring

Mesh

Steel

Stainless

Bracket

Smoker

U-

Air

Leg

Cylindrical

Mechanical

Fan

30cm

Approx. height

Material

And

Cage/Shield

Support

Grate

Firebox

Smoker

7. Worked example – 2007 P3 paper

47

7. Worked example – 2007 P3 paper You can always represent the different levels of the Integer Tree horizontally instead as shown below. This is possibly an easier way to organize the features in the exam: ●

Smoker ○

Firebox ●

Liner

●

Hook

●

Air inlet ●

●

Aligned with cone on bellows

○

Positioned between grate and bottom of firebox

Air inlet hole

●

Cage/Shield ●

U-shaped metal

●

Stainless steel mesh

Material ●

Copper

●

Stainless steel

●

Other material

●

Approx. 30cm height

●

Cylindrical

Lid

●

●

Attachment ●

Hinged

●

Friction fit

Handle ●

Insulating

●

Wire loop

Chimney ●

Narrowing

●

Offset

Driven air supply ●

Connected to firebox by means of a bracket

●

Bellows

●

48

Reasonably long horizontal tube

○

Grate And Support Leg

●

○

○

●

●

○

Tube

●

Return spring

●

Valves

●

Cone

Fan ●

Electrical

●

Mechanical

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper Now we need to spot and claim the invention. You’ll probably know by now what I’m going to say now: don’t claim the product, claim the invention (see section 1.1 of the main part of this guide).

Think back to the Catchphrase quiz show (if you know it) where the moral of the story was to ‘say what you see’. I don’t think that having the host Roy Walker tell you this necessarily made the answer any more apparent, but the purpose was to stop you thinking too far away from what was shown on the screen.

My catchphrase for claiming the invention would be: ‘don’t claim exactly what you see’. As we deduced above, the main independent claim doesn’t need the hook, the handle or even the bellows but these are all shown in the Figures.

Just to labour the point, a claim to what is shown in the Figures – the client’s product – might be something like: A smoker comprising a firebox for containing combustible fuel and bellows attached to the firebox by means of a bracket, the firebox comprising a hinged lid having an offset chimney and an insulating handle, a hook for hanging the smoker on a wall, a protective liner, a ventilated grate on which the combustible fuel can rest, the grate being supported by a support leg and an air inlet tube, and the bellows comprising a first board having air inlet valve, a second board having an air outlet valve having a cone fitted thereto, the first and second boards being connected by a gaiter and a return spring between the first and second boards.

There are quite a lot of features (underlined) in this claim. How many of these features could a competitor easily omit or replace to avoid infringement?

Now, I doubt that anyone would leave all of these features in the claim. If you have carried out a detailed analysis of the paper like we did above, you could go through this claim and cross out or generalise the features that aren’t essential. But how far would you actually go? I dare bet that there would be some unnecessary ‘residue’, i.e. some leftover features that are not needed in the claim. If you decided to keep the bellows, or generalised it to a driven air supply, would you have crossed out the bracket or generalised it to connecting member or the like?

Either way, it’s an unnecessary feature to have in the main claim.

The other extreme is just claiming the underlying problem (see section 2.2 of the main part of this guide). This really does not go down well with the P3 examiners. A claim that might amount to nothing more than seeking to protect the underlying problem would be something like: A smoker, comprising means arranged to generate smoke in a safe and controllable manner

or A smoker, comprising a firebox operable to generate smoke in a safe and controllable manner

or A smoker arranged to generate plentiful smoke substantially without a flame

How to Pass P3 • 2010

49

7. Worked example – 2007 P3 paper As always, there’s a fine line between a claim that’s too broad or too narrow, but it just feels like the above claims are lacking a little explanation as to how the smoke is generated in that manner.

Let’s look at this again, from a ‘top-down’ perspective: what’s the invention? What are the necessary structural or functional features I need in the claim to support the advantage associated with the invention? This approach implicitly involves a consideration of the prior art since the invention is evident only in the light of the prior art.

From the review above, I have a good idea of the prior art. I know from Mr Buzz’s description that his smoker makes bee-smoking easier by having smouldering fuel inside the firebox. This produces smoke in a safe and controllable manner. Checking through the prior art, I’m happy that this is an advantage of Mr Buzz’s smoker over all of pieces of prior art.

In sections 3.2 and 3.3, we noted an advantage associated with having the offset chimney.

However, in the light of the remainder of the description, it is fairly clear that the main advantage we need to protect is that of producing smoke in a safe and controlled manner; the advantage of improved ease of use and efficiency is a subsidiary advantage. With reference to section 2.5 of the main part of this guide, remember that the examiners don’t want to see multiple independent claims drafted in a ‘shotgun’ fashion where each independent claim has a different novel feature (especially if those claims are not unitary). It should be fairly clear – as it was in one of the past papers – when multiple independent claims in the same category are necessary.

Returning to the previously mentioned advantage of generating smoke in a safe and controllable manner, the only prior art I’m worried about is the straw, the incinerator and the stove.

The difference between Mr Buzz’s smoker and the bundle of straw is that he places the smouldering fuel inside the firebox to make the smoking operation safer. However, the incinerator and stove already use fireboxes to contain their fuel, so let’s look at the incinerator and firebox more closely.

The incinerator and stove try to encourage airflow to reduce smoking to a minimum by having an open bottom and/or additional air holes to increase the amount of airflow into the firebox. Well, this is pretty different to our smoker. We restrict (see section 3.5 above) the amount of air entering the firebox so that we get controlled smoldering of the fuel without flame and Mr Buzz keeps going on about this being the main advantage of his smoker.

And that’s it. I’ve spotted the client’s invention! All I have to do now is put that into a claim.

By having a firebox which contains the smouldering fuel, Mr Buzz’s smoker is safer than the straw bundle, but by restricting the amount of air entering the firebox, Mr Buzz’s smoker generates plenty of smoke in a controlled manner.

So, what physical or functional features give rise to these advantages? Is it the hook? No. Is it the lid? Nope. It’s not even the bellows. It’s the firebox and the fact that the firebox has this restricted air inlet.

Using this information, here’s what I’d do next: I need to think about the preamble of the claim (see section 2.1 in the main part of this guide).

Some people might do this later, but I’m going to start with it. I could use ‘device which, when in operation, is arranged to produce smoke’, ‘apparatus for generating smoke’, ‘smoke generation system’, ‘smoke generator means’, ‘smoker’ or many other possible expressions. I’d 50

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper personally go for ‘smoker’. It doesn’t have any more or less meaning than necessary. Although I started off not being entirely certain what Mr Buzz meant by the term ‘smoker’ when I picked up the paper for the first time, he seems comfortable with it as a name for his type of device.

OK, so I’m happy with ‘smoker’ as my preamble and I know what my invention is.

There are certain essential features that I will need to include in the claims. You can almost think of these features as the skeleton of the invention. The other, optional, features flesh out the skeleton. What are the bare bones that the smoker needs to produce the smoke in a safe and controlled manner?

It should be fairly clear that the smoker needs the restricted air inlet and the firebox.

The smoker must also have something that allows the smoke to escape. A ‘smoke outlet’ should be fine. It is arguable that it is implicit that the smoker has a smoke outlet of one form or another, so why include it in the claim. This is the sort of conundrum you often face in the P3 exam and in real life.

Thinking about it logically, if it’s implicit that a smoker includes a ‘smoke outlet’ then the scope of the claim would be the same with or without it. Is the claim clearer with it included? In this case, yes, in my opinion. That’s not to say that you have to list every implied feature of the smoker (it’s not made out of a highly flammable material, etc), but this one is pretty important.

If we had opted for something like ‘smoke extraction means’, then it’s more difficult to argue that a smoker implicitly has one, since ‘extraction’ could imply something more active than just a hole from which smoke could passively escape.

I need to think carefully about the fuel. It is true that the smoker would need some sort of fuel to work, but I don’t want to specify the fuel in the main claim (see Question 7 in the ‘Inspection and Checking’ section of the Micklethwait paper on page 81 and also the Micklethwait Test at the end of this worked example). I could say that the firebox can contain fuel or something along those lines. It would probably be acceptable not to mention the fuel at all, but it gives the claim a bit more life if you include it. You can just say that the firebox ‘can contain’ combustible fuel, that the combustible fuel is ‘receivable’ in the firebox or that the firebox is ‘for combustible fuel’ without actually including the fuel within the scope of the claim.

As a general point, be careful with the word ‘can’ [or: ‘may’]. They are very useful, sneaky words to have in your arsenal of drafting tools but you have to assess very carefully whether they impart any limitation into the claims.

Anyway, I worked out above that I need the firebox to house the fuel and I need to limit the amount of air that enters the firebox relative to that in the incinerator and stove, so how about: A smoker comprising a firebox arranged to contain a combustible fuel, means arranged to reduce the amount of airflow into the firebox and a smoke outlet.

It’s nice and broad. However, it’s slightly too broad in my opinion. ‘Reduce’ is the problematic word here.

We mean reduce relative to the incinerator and stove, but it could easily be interpreted to mean anything that allows less air to enter the firebox than were it not there. The prior art incinerator and stove have holes that certainly reduce the amount of airflow into their fireboxes relative to bigger holes or no holes at all. This is not a strong enough distinction.

How to Pass P3 • 2010

51

7. Worked example – 2007 P3 paper We’re almost there. I know that I’m trying to claim the correct thing, I just haven’t got the wording quite right. What’s the difference between the open grate and additional air holes in the incinerator and stove and our firebox inlet hole? Well ours serves to restrict the amount of air coming into the firebox so that we only get smouldering, whereas the prior art tries to maximise the airflow to produce a flame. Mr Buzz has actually used the word ‘restrict’ in his description of the smoker (see section 3.5) and it seems to be a sensible choice for the main claim too. How about: A smoker comprising a firebox arranged to contain a combustible fuel, the firebox having a smoke outlet and an air inlet arranged to restrict the amount of airflow into the firebox so that the fuel smoulders to produce smoke.

I’m a lot happier with that. Does the word ‘restrict’ suggest some positive, well-defined feature?

In combination with the ‘so that the fuel smoulders to produce smoke’ clause in the claim, it appears to: the air inlet has to restrict the amount of airflow in such a way that the fuel only smoulders to produce smoke.

Let’s go though the checks that I proposed in section 2.5 of the main part of this guide.

Check 1 – Structure: • Are there enough structural and/or functional features in the claim so that it can achieve the advantage? The air inlet, which is specified in claim 1, restricts the amount of air entering the firebox so that the fuel smoulders. The fuel smoulders rather than burns to produce smoke in a controlled manner (see sections 3.5 and 3.9) which is the advantage we are trying to protect.

• Have I merely claimed all solutions to the underlying problem? Hopefully not and I have also checked that earlier.

• Am I floating? There aren’t many features in the claim, but it’s quite clear how they’re all functionally related to each other. Air comes in the inlet to feed the fuel, which smoulders and produces smoke and the smoke then leaves the firebox by the smoke outlet.

Check 2 – Novelty: • Prior art 1 (CO2) is not a smoker for starters and certainly does not comprise a firebox.

• Prior art 2 (generate smoke) does not make use of a firebox.

• Prior art 3 (damp straw) is a smoker, but does not comprise a firebox.

• Sneaky prior art (garden incinerator/woodburning stove) is not a smoker and does not have the restricted air inlet.

I’m happy that claim 1 is novel.

Check 3 – is it too narrow: • Have I covered all of the client’s embodiments? I’d go through the paper again in detail to check that I haven’t excluded anything, but I’m fairly confident that we’re safe here. One technique I personally used at this stage is to read each sentence in the paper, check that I 52

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper had completely understood it, and then put a pencil tick next to it before moving on to the next sentence. Obviously, you don’t have to do this, but it could be worth trying when you do a practice paper to see if it helps.

• Have I claimed the product rather than the invention? No. The examiners were looking for a claim along the lines of: A smoker, comprising: an enclosure for receiving combustible material, the enclosure having an outlet for smoke and an inlet providing a restricted flow of oxygen to the enclosure, whereby the combustible material burns to produce the smoke.

or A bee smoker, comprising: a firebox operable to receive a combustible material, said firebox having a chimney and an air inlet operable to restrict an airflow into said firebox to cause said combustible material, once ignited, to smoulder and provide a smoke emission from said chimney.

My claim was pretty close to what the examiners were looking for in the sense that it didn’t include any inessential features and it didn’t just claim the underlying problem.

In summary, the approach discussed above has involved asking what the invention is and what features are needed to support the invention. It has not been a case of crossing out or generalising features in the client’s product which, as I keep saying, can often leads to ‘residue’ or unnecessary features.

At this stage, it is worth having a look back at some of the features we did not include in claim 1 because we decided that they were not essential to the invention. I sometimes call this the ‘What-if-I-had-included-it’ check: what would be the effect on the scope of protection had we included a particular feature in claim 1. There are three quite useful tests or checks that can suggest inessentiality of features: 1. There is a clear steer in the client’s letter. If the client tells you that something is optional, preferred, or not necessary, then this strongly suggests that it is a non-essential feature.

2. You can see an easy workaround. Could a competitor replace a feature with something else to avoid infringement?

3. The claimed invention still works (albeit not quite as well) without that feature.

Let’s have a look at whether a few of the features we didn’t include in claim 1 can be seen to be inessential using the above three tests. You can try this with any of the features not specified in claim 1: • Protective liner: 1. Mr Buzz didn’t say whether the liner was or wasn’t essential.

2. Perhaps a competitor could treat the inside of the firebox so that it is less susceptible to How to Pass P3 • 2010

53

7. Worked example – 2007 P3 paper heat damage. Perhaps manufacturers even prefer the firebox to be heat-damaged so that customers have to buy another one.

3. The underlying advantage of safe and controlled generation of smoke can still be achieved without the protective liner. The bee-keeper may have to replace his smoker relatively frequently if it became damaged by the heat, but the smoker would ordinarily function properly.

• Hook: 1. Mr Buzz didn’t say whether the hook was or wasn’t essential.

2. Perhaps a competitor could sell a hook that can be fitted to a beehive itself and the smoker can be hung on the hook.

3. The smoker would still be able to produce smoke in a safe and controlled manner without the hook.

• Offset Chimney: 1. Mr Buzz hasn’t told us whether the offset chimney is or isn’t essential.

2. A competitor might be able to sell a smoker with a non-offset chimney and a flexible hose which can be used to direct smoke into the beehive while still allowing the smoker to be held upright.

3. Although the efficiency of the smoker might decrease if it has to be tilted (see section 3.2), it would still appear to work, albeit less efficiently.

• Bellows: 1. Mr Buzz said that a mechanical or electric fan could be used instead, so he has told us that the bellows are not essential.

2. A competitor could supply a smoker with the mechanical or electric fan instead of the bellows to avoid infringement.

3. Some smoke will be produced without the bellows. Although the smoker might not be quite so effective without the bellows, it would still produce smoke in a controlled and safe manner without them.

You can try this check (in your head or on paper) for the narrowing chimney, the return spring, the external cage/shield, the air inlet being in the form of a tube, the cone on the bellow and any other features that were not included in claim 1.

Right, so now we need some dependent claims. From the Integer Tree, we can see how to structure them so we just need to decide on our ‘top-ten’ features for the dependent claims. The dependent claims should be directed to advantageous features that, realistically, could be amended to if difficulties were encountered during prosecution. Let’s just remember for a second that the overall advantage of the client’s product is that it enables smoke to be generated in a controlled and safe manner. If there are any features that have related advantages, then they would be ideal candidates for dependent claims.

Using the Integer Tree (or the bullet-point version), I’d consider making the following features the subject of the requisite ten dependent claims because of their use as potential fallback positions: 54

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper a) Driven air supply which provides an airflow to the air inlet (increase the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke) b) Driven air supply comprises bellows (cheap/simple) c) Bellows comprise a return spring (easy to operate and causes the bellows to re-inflate automatically) d) Bellows comprise a cone which is in alignment with the firebox’s air inlet (more effective air stream) Firebox has a lid e) Lid has a narrowing chimney (concentrates smoke to a narrow plume which can be directed into the beehive) f) Lid has an offset chimney (facilitates ease of use because the smoker can be held upright) g) Firebox has a cage/shield (facilitates use even when the firebox gets hot) h) Firebox has a protective liner (can be replaced when it becomes heat-damaged) i) Firebox has an air inlet tube (helps to reduce the amount of convected air drawn into the firebox which helps to control the smouldering) j) Firebox has a grate and an air inlet tube below the grate (tube does not become clogged and does not disturb ash) In terms of structuring the dependent claims, it should be quite clear what to do from the layout above: 2.

A smoker according to claim 1, further comprising a drivable air supply

3.

A smoker according to claim 2, wherein the drivable air supply comprises bellows.

4.

A smoker according to claim 3, wherein the bellows comprises a return spring.

5.

A smoker according to claim 3 or 4, wherein the bellows comprises a cone

arranged to provide an airflow to the air inlet.

aligned with the air inlet, the cone being arranged to concentrate air expelled from the bellows into a column.

6.

A smoker according to any preceding claim, wherein the smoke outlet comprises

7.

A smoker according to any preceding claim, wherein the smoke outlet comprises

a narrowing chimney. a chimney which is angled relative to the axis of the firebox.

How to Pass P3 • 2010

55

7. Worked example – 2007 P3 paper 8.

A smoker according to any preceding claim, wherein the firebox comprises an

9.

A smoker according to any preceding claim, wherein the firebox comprises an

external protective shield. internal protective liner.

10. A smoker according to any preceding claim, wherein the air inlet comprises an air inlet tube.

11. A smoker according to claim 10, wherein the firebox comprises a grate spaced above the base of the firebox and wherein the air inlet tube is disposed between the grate and the base of the firebox

Other categories of independent claims Let’s look at the list I proposed in section 2.5 of the main part of this guide and go through each of the possible categories: C1-3/Method of using, manufacturing and assembling the smoker Is a method claim to using the smoker going to be useful? No. You might well include them in a real-life draft if you saw the need, but they’re not necessary in this case for P3 (see section 2.5 of the main part of this guide). If it’s not obvious why they’re not necessary, think about who would directly infringe this method claim: A method of generating smoke comprising …

Mr Buzz is approaching someone who is interested and manufacturing and selling the product; the smoker.

A method of manufacturing or assembling the smoker is another possibility I guess. The latter might be useful if the smoker were provided in kit or flat-pack form, but it would be the poor bee-keepers again who would be doing the assembly.

One thing that I should mention is that I’ve seen some ‘method claims’ before that are basically in the form: A method of using the smoker of claim 1

or A method of generating smoke using the smoker of claim 1

or A method of manufacturing a smoker according to claim 1

or A method of assembling a smoker according to claim 1

56

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper I guess the thinking behind this is that because claim 1 is (hopefully) novel and inventive, these method claims are allowable too because they include all the features of claim 1. The problem is that these method claims don’t include any of the essential method steps to achieve the advantages of the invention. For example, in order to generate smoke in a controlled and safe manner, you actually need to generate the smoke. Thus, it seems essential to include a method step of igniting the fuel.

All in all, method claims really aren’t necessary here.

C4 and C5/Look-up and Look-down Does the smoker form part of a bigger product that could be claimed (C4) or is there a subcomponent of the smoker that we should be claiming (C5)? In this case, it should be clear that neither of these is relevant. A C4-type claim is very useful in real life and is often important in the P3 exam. Sometimes, your main claim is to something quite general, so as to give the broadest possible protection, but it might typically form part of a larger product.

C6/Kit There is only really one component in the proposed main claim, which is the firebox. This claim category does not appear to be useful either.

C7/Consumables There is no indication that there is anything patentable in relation to the fuel that Mr Buzz is using for his smoker. Accordingly, there is no need to claim it here.

However, if he had indicated that he had developed a special fuel for his smoker, you would certainly want to try to protect it.

C8/Computer programs Good luck getting that through the Patent Office!

Omnibus claim I hope you had remembered this one (see section 3.2 of the main part of this guide)! There’s a mark for it, so it’s worth remembering!

A smoker substantially as described herein with reference to the accompanying drawings.

Job done. So that’s the claims finished with. When I say ‘finished’, I really mean subject to checking again!

At this stage you are likely to be somewhere between two and three hours into the four-hour paper. This is because you would normally try to spend around two hours reading the paper and getting claim 1 right, and another hour on the dependent and omnibus claims. If you’re here after 30 minutes, you’ve probably rushed through the paper or the claims. Once you’ve attempted some of the past papers, you’ll get a good idea about how long it takes you personally to complete each section.

How to Pass P3 • 2010

57

7. Worked example – 2007 P3 paper If you’re at this stage with ten minutes to go it’s not ideal but don’t panic. The P3 examiners and I both want to emphasise that we are not encouraging leaving only ten minutes for the remainder of your answer, but if the worst comes to the worst and you find yourself in this position, you have to try to get some of the other marks and if your claims are amazing you could still pass the paper. In theory, you could have scored over 50 marks for the claims at this stage (40 for the independent claim(s) and 25 for the dependent claims), but, in reality, I doubt that you’d pass if you only submitted claims.

Although I’ll go through all of the other stuff we should have in the answer, it’s worth noting that there are two marks available for the title of the application and the field, four marks for labelling the Figures themselves and doing their brief description and five marks for the abstract.

There are 11 marks there and you could probably do most of that within ten minutes.

Again, I am certainly not advocating spending three hours and 50 minutes on the claims, but if you find yourself really struggling at the end of the exam, it’s better to try to get some extra marks than just sitting there panicking.

Description Title (1 Mark) A Smoker

That does the job nicely. It is no narrower than the scope of the only independent claim (see section 4.1 of the main part of this guide).

Field of the Invention (1 Mark) The present invention relates to a smoker. [More specifically, it relates to a beehive smoker].

This embraces, but is not narrower than, the independent claim (see section 4.2 of the main part of this guide). Some people like to give a little more context in the field of the invention, especially when the preamble of the claim is quite general. I have indicated an optional addition in parentheses.

Background (2 Marks) Now, hopefully you’ll remember from section 4.3 of the main part of this guide that you should only include relevant prior art. That means prior art in the same field as the invention – a smoker. Is prior art 1 (CO2) a smoker? No. Is prior art 2 (generate smoke) a smoker? Sort of. Is prior art 3 (damp straw) a smoker. Yes, it generates smoke to distract the bees. Is prior art 4 (garden incinerator) a smoker? No, it’s an incinerator that produces a flame to incinerate whatever’s placed inside it. Is prior art 5 (woodburning stove) a smoker? Again, no because it produces a flame to burn the wood rather than being a smoker.

So I only need to discuss the theory of smoke generation discussed under prior art 2 and give an example of the damp straw of prior art 3 being used as such a smoker. You could 58

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper probably get a mark for copying the relevant text from the examination paper verbatim.

However, it’s often in a very informal format and isn’t really suitable for a patent application and you’ll need to revise it sensibly to score marks here. I’m not suggesting utmost formality, just decent prose.

It can be difficult to open and examine beehives. The bees never seem to get used to it and they can sometimes sting quite ferociously. One popular technique is to try to make the area around the hive smoky. The bees smell the smoke and gorge on honey.

This seems to distract them whilst the bee-keeper examines the hive. It is thought that, like humans, they do not wish to fight with a full stomach and so the amount of stinging is drastically reduced. The smoke can be made in many different ways.

A technique that bee-keepers have used for some years is to get a tight bundle of damp straw and use a blow torch to get it lighted. The straw then burns and generates plenty of smoke. The bee-keeper can waft the bundle of straw around and try to blow it into the hive. The bee-keeper has to be aware of burning embers and, if they get too close, they can burn through their protective veil.

Summary/Statements of Invention (6 Marks) First things first. How many ‘aspects’ of the invention have we got? We have an independent claim to a smoker and no other independent claims. We only have one ‘aspect’ of the invention.

How many preferred of the invention do we have? Well we have ten dependent claims setting out preferred features. I personally wouldn’t necessarily think of them all as separate embodiments; just don’t think of them as ‘aspects’!

I’m going to use the compact form of consistory clause for claim 1 because it saves a lot of time in the exam.

According to a first aspect of the invention, there is provided a smoker according to claim 1. The smoker enables smoke to be generated in a safe, controlled and reliable manner.

However, you could certainly write this in full as: A smoker comprising a firebox arranged to contain a combustible fuel, the firebox having a smoke outlet and an air inlet arranged to restrict the amount of airflow into the firebox so that the fuel smoulders to produce smoke. The smoker enables smoke to be generated in a safe, controlled and reliable manner.

This gives us another quick opportunity to check that the claim really does give this advantage.

Look at claim 1 again. Does it definitely enable smoke to be generated in this way, based on what the client has told us? Yes. Right, on to the dependent claims. There are three typical ways of doing this. I’ll show you each of them, in my personal order of preference, using dependent claim 2 as an example.

How to Pass P3 • 2010

59

7. Worked example – 2007 P3 paper The first is to write out the distinguishing feature of each dependent claim in full using conditional language (see section 4.4 in the main part of this guide): The smoker may further comprise a drivable air supply arranged to provide an airflow to the air inlet. The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke.

The second is a slightly quicker way of writing the same thing and is essentially a compact form of claim where you refer to the relevant claim number, rather than repeating all of the wording: The smoker may further comprise an air supply as specified in claim 2. The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke.

The third is, in my opinion, a little bit slapdash but probably won’t affect your overall mark in the exam. Remember that you’re trying to show the examiner that you know what you’re doing and that you can produce decent enough applications to get through the exam. This approach essentially involves writing the word ‘preferably’ and then just indicating a claim number: Preferably, (feature of claim 2). The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke.

My preferred approach is the most thorough. Admittedly, it is a little more time-consuming, but it should only take an extra five minutes or so in the exam if you have ten relatively short dependent claims. The statements of invention and advantage for the dependent claims could look like: The smoker may further comprise a drivable air supply arranged to provide an airflow to the air inlet. The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke.

The drivable air supply may comprise bellows. Bellows are relatively cheap and mechanically simple.

The bellows may comprise a return spring. The bellows can be depressed to cause air to be expelled and then will automatically reinflate ready for subsequent use.

The bellows may comprise a cone aligned with the air inlet, the cone being arranged to concentrate air expelled from the bellows into a column. This concentrates and speeds the air emitted. In turn, the air column travels further into the firebox and the column of air draws in additional surrounding air which increases the volume of air delivered to increase smouldering combustion.

60

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper The smoke outlet may comprise a narrowing chimney. This enables the smoke to be concentrated into a narrow plume which can be directed into the hive.

The smoke outlet may comprise a chimney which is angled relative to the axis of the firebox. The offset chimney facilitates ease of use since the smoker can be held generally upright, whilst the smoke plume exits at an angle. Holding the smoker upright is desirable since otherwise the material in the firebox gets disturbed which reduces the efficiency of the smoker and can cause it to go out.

The firebox comprises an external protective shield. Since the firebox can get very hot during use, the protective shield is generally cool enough not to cause significant discomfort or injury to the bee-keeper, particularly when wearing gloves.

The firebox may include an internal protective liner. The protective liner can be replaced when it becomes severely heat-damaged.

The air inlet may comprise an air inlet tube. The air inlet tube helps to reduce the amount of convected air drawn into the firebox which helps to control the smouldering.

The firebox may comprise a grate spaced above the base of the firebox and wherein the air inlet tube is disposed between the grate and the base of the firebox. The air inlet tube can be located between the base and the grate so that the air inlet does not become clogged by ash on the base of the firebox and also does not disturb burning ash on the grate.

Brief Description of the Figures (2 Marks) We’ll ignore, for the moment, the fact that Mr Buzz has very helpfully told us exactly what types of views the Figures show.

Referring to section 4.5 in the main part of this guide, we can readily see that FIG. 1 is a perspective view of the smoker. This is because we’re effectively looking down on the smoker from a position slightly above horizontal. How do we know this? Well, we can see the top of the bellows, so it’s not a side view of them. We can also readily see that FIG. 2 is a sectional view through the smoker. As mentioned in the main part of the guide, it would be helpful to the reader to indicate in FIG. 1 which of the two chopped parts we’re showing in FIG. 2.

We can satisfy this part of the paper by something along the lines of: The present invention will now be described, by way of example only, with reference to the accompanying drawings, in which: Figure 1 is a perspective view of [an embodiment of] a smoker in accordance with the present invention; and Figure 2 is a sectional view of the smoker of Figure 1.

How to Pass P3 • 2010

61

7. Worked example – 2007 P3 paper Labelling the Figures (2 Marks) It’s easy to do this if you actually remember to do it. All you need to write is ‘1/1’ because the figures are already numbered and include reference signs to get two easy marks.

62

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper Specific Description (16 Marks) There are 16 marks available for the specific description. The examiner cannot give you (m)any marks for simply copying the text from the question paper and writing it in your answer: more is needed. You need to include reference signs, make sure the wording reads like a specific description and ‘add value’ where necessary. You may have to change the order in which the features are introduced (I did) and you may have to include some of your own words or provide clarification of words (e.g. ‘offset’) that the client gives you. This is quite different from the EQE drafting paper where you can mostly get away with cutting up the exam paper and gluing it in your answer.

However, do be careful about adding new material as it can sometimes work against the client. For example, in this paper, Mr Buzz suggests that the smoker could be made of copper, steel or another suitable metal. You might decide that aluminium would be a suitable metal and you might mention it in passing in the specific description. Suppose the application was granted a couple of years ago with the claim as filed and Mr Buzz later realises that aluminium is hugely advantageous because it is lightweight and this is a significant benefit for a portable smoker whether or not the smoker has a restricted air inlet. It is now rather difficult, if not impossible, for him to file a new application to protect the aluminium smoker because it has already been disclosed. Had aluminium not been explicitly mentioned in the first application that he asked you to draft, this arrangement could validly be pursued in another, new application. The phrase ‘self-collision’ is an image-invoking term suggested to me by Tibor Gold that should help you understand and visualise this type of anticipation.

I just want to re-emphasise another point that I made in the main part of the guide throughout section 4.7, which is that the purpose of this section is to provide an enabling disclosure. You should also be able to understand the specific description without needing to consult the Figures.

In real life, I sometimes find myself initially writing: ‘Figure 12 is a flowchart showing a method of operating product X’. This, itself, is not enough. What steps are involved? I have no idea without looking at Figure 12! You need to think like this both in real life and in P3: have I described what is shown in the Figures in enough detail that someone could understand what I’m describing without having to look at the Figures. In the exam, it means losing marks and in real life it can lead to serious difficulty in making amendments based on features shown in figures when there is no supporting text.

You should be very cautious about not including something the client has described and you should also check very carefully in the Figures to see whether anything has been shown, but not described. Checking the Figures is important for the claims, but is also really important for the specific description. Remember, the specific description should be comprehensible and complete without the Figures.

In the specific description I’ve prepared below, I have identified in parentheses the features to which the following paragraph relates. You would not do this in the exam itself. OK, here we go: [Introduce the smoker] Figures 1 and 2 show a beehive smoker 10 that enables smoke to be produced in a safe and controllable manner. The smoker 10 is around 30cm high and is made of copper.

How to Pass P3 • 2010

63

7. Worked example – 2007 P3 paper [Describe the firebox and its internal components] The smoker 10 includes a cylindrical smoker firebox 12 which is open at its upper end.

The firebox 12 has a hook 14 by means of which it can be hung from the wall of a beehive so that it is readily to hand during smoking. The firebox 12 also includes a liner 16 in the form of a ventilated protective inner sleeve which can be replaced if it should become severely heat-damaged. Smouldering fuel (not shown) can be placed inside the firebox on a grate 18. The grate 18 is spaced from the floor 20 of the firebox by means of support legs 22 which are fixed to the underside 24 of the grate.

[Describe the lid] The firebox 12 includes a hinged lid 26 which forms a narrowing chimney 28 that is offset, i.e. inclined to the central axis of the firebox 12. The narrowing and offset chimney 28 enables smoke generated by the smoker 10 to be concentrated into a narrow plume which can be directed into a beehive and also facilitates ease of use since the smoker 10 can be held generally upright, whilst the smoke plume exits at an angle. The ability to hold the smoker 10 upright is desirable since otherwise smouldering fuel in the firebox 12 can get disturbed. This, in turn, reduces the efficiency of the smoker 10 and can cause it to stop generating smoke. An insulating handle 30 is attached to the lid 26 by means of a threaded screw 32.

[Describe the air inlet] The amount of ambient air that enters the firebox 12 is controlled or restricted by a restricted air inlet in the form of a horizontally oriented air inlet tube 34. The air inlet tube is the only air inlet for the firebox 12. This ensures that smoke is generated in a controlled manner by causing fuel in the firebox 12 to smoulder rather than burn, due to the relatively low amount of oxygen available. The air inlet tube 34 is located between the bottom of the firebox 12 and the grate 18 so that the airflow does not become clogged by ash and so that burning ash is not disturbed by the airflow.

[Introduce the bellows] Although the smoker 10 can produce small amounts of smoke from the air provided or convected through the air inlet tube 34, bellows 36 are attached to the firebox by means of brackets 38 to allow additional airflow to be delivered to the smouldering fuel to increase or drive out smoke.

[Describe the ‘reasonably long’ air inlet tube] The air inlet tube 34 is reasonably long so as to be in close proximity to the concentrating cone 46 of the bellows 36. This reduces the amount of convected air drawn into the firebox 12 between puffs, which helps to control the smouldering.

[Describe the bellows in more detail] The bellows 36 have an inlet valve 40 that allows air to be sucked in and an outlet valve 42 that enables air to be blown out into the firebox 12. A tapering,

64

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper concentrating cone 44 is fitted at the outlet valve 42 and provides an air exit hole 46 for the bellows 36. The cone 44 concentrates and speeds the air emitted from the bellows 36. In turn, the air column travels further into the firebox 12 and the column of air draws in additional surrounding air which increases the volume of air delivered to smouldering fuel. The air exit hole 46 of the bellows 36 and the air inlet tube 34 of the firebox 12 are aligned to enable air to pass from the bellows 36 into the firebox 12. The bellows 36 are fitted with a return spring 48. The bellows 36 can be depressed to cause air to be expelled and then automatically reinflate ready for subsequent use.

[Describe the shield] A cage or shield 50 in the form of a strong stainless steel wire mesh surrounds the outside of the firebox 12 and is secured to the brackets 38 which hold the bellows 36.

Even when the firebox 12 gets hot, the cage 50 is generally cool enough not to cause a burn if touched, particularly when wearing gloves.

[Describe how the smoker is used: ‘In use’] In use, fuel is lit and placed inside the firebox 12 on the grate 18 and the lid 26 is closed. Small amounts of smoke are naturally generated which can be directed towards a beehive. More smoke can be produced by squeezing the bellows 36 a few times to increase temporarily the amount of oxygen and the flow of air in the firebox 12. This drives accumulated smoke out of the chimney 28 and also increases smouldering combustion, without producing a flame.

[Describe alternatives] Various modifications will be apparent to those skilled in the art. For example, the cage 50 can be in the form of a ‘U’-shaped sheet of metal (not shown), although this tends to get quite hot. The bellows 36 could be replaced by another air supply such as a mechanical or electrical fan (not shown). As explained above, the air inlet 34 may be in the form of an air inlet tube. However, provided that the firebox inlet hole is not too large, satisfactory results can be obtained even without an air inlet tube 34.

Instead of being hingedly connected, the lid 26 could be a push-fit or screw-fit onto the firebox 12. This can make filling the firebox 12 difficult, particularly when the lid 26 is hot and, once removed, the lid 26 is easily lost. If the lid 26 is of the push-fit type, it is held in place by a friction fit and a loop of springy wire (not shown) can be used to help the lid be removed without the bee-keeper burning their fingers. Finally, the smoker 10 can be made of steel or another suitable metal or material instead of or as well as copper.

Abstract (5 Marks) Remember the importance of preparing the abstract. Five marks is quite a lot to lose for a couple of minutes’ worth of work, especially if you end up scoring 48 marks and forgot to include an abstract.

How to Pass P3 • 2010

65

7. Worked example – 2007 P3 paper With reference to the summary in section 5.1 of the main part of this guide, the abstract needs the following six features for five marks: • • • • • •

Title Technical Field Explanation Principal Use Figure Reference Signs Without Brackets

How about: Smoker A smoker 10 includes a firebox 12 into which smouldering fuel is placed to generate smoke for smoking a beehive. The firebox 12 has a restricted air inlet 34 which limits airflow into the smoker so that the smoker 10 can generate smoke in a safe and controlled manner. Bellows 36 attached to the firebox 12 can provide an increased supply of air to the firebox to increase smoke generation without producing a flame.

[Figure 2]

Micklethwait Test Let’s finally take the ‘Micklethwait Test’ to see if we have done everything he has proposed by way of very sensible checks: 1. Has Claim 1 utility; i.e. does it include the features from which the advantages of the invention follow? I hope so as this was certainly one of the checks I made above.

2. Can Claim 1 be avoided by any obvious modification? There aren’t many features in Claim 1 and they all seem to be essential to achieve the advantage of generating smoke in a controlled and safe manner.

3. Has Claim 1 patentable subject-matter or does it cover something obvious? The claimed invention exhibits an advantage over the prior art given in the paper and this is the only prior art I should take into account (see section 2.6 in the main part of this guide). As far as inventive step for the purposes of the exam is concerned, I think we are safe here.

4. If Claim 1 is weak are there strong, independent sub-claims? I have to confess that I have never completely understood this specific question. To me, the term ‘independent sub-claim’ seems to be somewhat self-contradictory (which I believe is called a contradictio in terminis for those who like Latin) because sub-claim normally means a dependent claim rather than an independent claim. Taking both possible interpretations, we have ten relatively good 66

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper dependent claims to provide fallback positions if necessary and we have decided that there is no need for independent claims in other categories, such as method claims.

5. Do the claims say what they mean and mean what they say; i.e. do the mental picture and verbal counterpart agree? With reference to section 2.3 in the main part of this guide, I genuinely find it very difficult to visualise or draw a mental picture of what the claims actually show as I always end up visualising or drawing what I think they show. Nevertheless, if you are lucky enough to be able to differentiate the two, this is a very useful check.

6. Can the claims be avoided by selling subordinate integers? The only integers we have in the claim are the firebox, the restricted air inlet and the smoke outlet, so we’re safe here. This is a really important check to make.

7. Do the claims cover the construction when empty, idle, placed on its side, upside down, etc.? Yes. We haven’t limited the claim to the smoker actually generating smoke or anything along those lines. Nowadays (I say that despite having only been in the profession since 2004!), I tend to see a lot of combined product and process wording such as ‘a receiver receiving data from…’. I personally avoid it as much as possible, but it is becoming more common to see it. Indeed, the first of the two claims proposed in the Examiners’ Comments has ‘an inlet providing a restricted flow of oxygen to the enclosure’.

8. Do the claims include any limitations which lend no patentable subject-matter and are not essential to the purpose aimed at? This question is linked to question 2 above. In this case, all of the features in Claim 1 are either there to distinguish from the prior art (for the purposes of patentability) or are there as essential features.

9. Are the claims based on any doubtful theory? Not in this case.

10. Are the claims accurate in substance and terminology? I believe so. ‘Firebox’ was a new term to me but it seems to be a term that is commonly used in the art so it appears to be accurate.

11. Can the claims be made less pompous and more succinct, for example, by making them more colloquial or pictorial without sacrificing accuracy? I have most certainly been conscious of said pomposity hitherto. Seriously though, I think that this is really important as a checking step in the Micklethwait Test, but also as something to bear in mind in general practice. Not only is it kinder on the poor reader not to have to get a dictionary out to understand your claim, some of the pompous wording can be quite ambiguous (see section 6.2 of the main part of this guide). I have to confess that when I started in the profession, I intentionally included pompous words presumably because I thought it made applications more watertight or sounded much more professional. Over time, I have moved away from this mindset and would much rather my drafts be as comprehensible and as easy to translate as possible.

How to Pass P3 • 2010

67

7. Worked example – 2007 P3 paper 12. Are all the client’s information, modifications and remarks included (if this is desirable)?

This is an extremely important check. If the client has told you something and you (accidentally) forget to include it in a draft application, you can get into serious problems if your client says during prosecution ‘oh, we can always amend to X which I told you about in my invention report’ and you have left X out of the application. You should be able to justify, even if only to yourself, leaving out any information that your client gives you. This is really important in real life.

13. Is there sufficient explanation of parts, operation and terms, and mention of advantages, bearing in mind the state of the art and the need for clarity to a judge? We have included statements of advantage and have mentioned various other advantages throughout the specific description. We have used the description of the smoker that Mr Buzz gave us and have included additional information found only in the figures.

14. Are any doubtful terms defined, in particular ‘the type specified’? I think that this question asks whether there are any vague and imprecise terms that could easily be clarified. If so, other terms such as ‘etc.’, ‘and the like’ and ‘and such like’ could possibly be clarified. In this particular example, we have the sentence: ‘Finally, the smoker 10 can be made of steel or another suitable metal instead of or as well as copper’. In context, the required properties of the metal to be ‘suitable’ for the smoker are not unduly difficult to determine.

15. Is the description of the drawings complete in itself? In other words, does the description make sense in itself without having to look at the figures? This is something the P3 examiners comment on a lot, so pay close attention to it in the exam and, importantly, during your preparation. During preparation, you could ask a friend, colleague or me if you want to see if they can understand the description without having access to the figures.

16. Is the technology consistent throughout the specification, especially if the claims have been amended? I am not absolutely sure whether ‘technology’ here means ‘terminology’, but I suppose it does. For the purposes of the exam, I doubt that you would lose large numbers of marks if your terminology was slightly inconsistent, i.e. is it still clear to what you are referring, but you may lose some. In real life, the EPO is becoming quite strict on this, so it is good practice to use consistent terminology when you can.

17. Does the description lead up to and amplify the claims and set forth the purposes and points of the features claimed? The claims should not come as any great surprise to the reader after reading the specific description. The read should know what you mean, or at least it should be pretty clear, what you mean by any terms in the claims. Using uncommon terms in the claims that have not been discussed anywhere in the description is not great practice.

18. Is any unnecessary or doubtful theory included, and if so is it guardedly introduced? The client in the exam might say something like: ‘I have a feeling that the following example 68

The Chartered Institute of Patent Attorneys

7. Worked example – 2007 P3 paper works, but I’ve not yet tested it’. If so, you have to decide whether you should include it in your answer. Another thing to think carefully about would be whether or not to include or, at least, tone down, any derogatory comments made by your client about the prior art (see section 4.3 in the main part of this guide) or anything else that jumps out as being unnecessary. I think we’re OK in this example.

19. Is any unnecessary or doubtful modification described, and if so is it guardedly referred to? This ties in closely with question 18 and does not appear to apply in this example.

20. Are there any superlatives or are results claimed which need not be obtained, or worse still are not even obtained by the preferred construction? Examples of this type of situation would be something like ‘the claimed invention provides a completely error-free telecommunications channel’. This does not appear to be relevant in our example.

21. Is everything stated in the specification true? This question appears to warn against including anything in the specification which you know not to be true. This might be something like overstating advantages achieved by the invention (e.g. 50% efficiency improvement when, in reality, it is only a 20% improvement). To the best of our knowledge, everything Mr Buzz has told us is true.

22. Are there reference letters to all parts of the drawings likely to be pointed at in Court? This is a useful check for the purposes of identifying parts in the drawings in Court, but is also important in the US. It is good practice to ensure that all of the important features in the drawings have reference signs, but this should hopefully be the case if you have described all of the important features in the specific description.

How to Pass P3 • 2010

69

8. Brushing up our drafting

By E.W.E. Micklethwait This paper first appeared in Trans. CIPA, LXV (1946-47), page 72. It was re-published in The CIPA Journal at [2003] CIPA 320 and 379; and most recently in Fundamentals of Patent Drafting (2006) by Paul Cole (page 155). Editorial comments appear in footnotes where the paper has become dated by virtue of changes in the law since 1977. The basic principles that Mr Micklethwait so clearly sets out remain the bedrock of a good patent drafting even today.

Introduction Drafting patent specifications is a subject likely to be of interest to patent agents at any time as it occupies most of their time, but I think that the present time is particularly appropriate for discussing it as we are getting back into gear after the disturbance of the war.1 The profession today includes three classes each of which has some reason for brushing up its drafting.

First, there are those who have never fully qualified as drafters of specifications and who have yet to pass the final examination. They will find food for thought in Mr Leistikow’s admirable paper on the final examinations,2 but although he dealt with his subject in general terms he was mainly concerned with interpretation and many candidates may welcome some further remarks on drafting. Secondly, there are those who have been in the Forces or in Government service for a number of years and have recently returned to patent work. They may well feel somewhat rusty after all this time and may accept some discussion of the subject as a kind of informal refresher course. Finally, there are those who have been at it all through the war, battling with shortage or complete absence of staff, absence of partners on Government service, shortage of office materials, delays in the mails, countless restrictions to be studied, permits to be obtained, and forms to be filled in, to say nothing of the nervous strain, danger and material damage and inconvenience caused by bursting bombs and rockets. Such conditions are not conducive to work of the highest standard, especially work needing great concentration; and the choice must often have been not between first-class work and second-class work, but between second-class work and nothing at all. So it seems a good time for us all to re-examine our work and ask ourselves whether it is really up to the highest possible standard.

I propose to divide my remarks into two parts. I think most people will agree that the points dealt with in the first part under the heading Shoddy Drafting are faults which should be avoided if they can be detected. After eliminating all such faults there is still room for considerable difference of opinion on points of drafting, there are cases where drafting may be influenced by circumstances and cases where a compromise may have to be adopted. Such cases I discuss in the second part under the heading Drafting Policy.

How to Pass P3 • 2010

71

8. Brushing up our drafting

Shoddy drafting Procedure for drafting – two phases Drafting a patent specification is a very specialised form of writing English and is an art which, like painting a picture or playing the piano, depends partly on natural aptitude and partly on acquired skill. In acquiring such skill there is room for some instruction and system as well as long practice aided by self-criticism and outside criticism.

In drafting claims no amount of system and no amount of practice will obviate the necessity for hard work and concentrated thinking, but it may be helpful to adopt certain methods of directing one’s thought so that it may be used to the best advantage. As Mr Tennant said in an excellent paper on claim drafting some years ago, it is no use gazing dreamily at a blank piece of paper and hoping for inspiration.

Although in detail everyone may have a different method of procedure I think that in all drafting there are certain broad fundamental principles to be borne in mind. At each stage, as in any engineering problem, one should have a clear idea what one is trying to do and should work out the most direct and efficient method of doing it, so as to achieve the optimum result with no unnecessary effort. In this connection it is generally useful to consider the problem from first principles.

In drafting a main claim I think the problem can usefully be tackled in two phases, although these phases overlap and may at times be almost indistinguishable.

The first phase consists of making up one’s mind what the invention is, or forming a mental picture of what is to be claimed, while the second phase consists of putting that mental picture into words. In most cases the mental picture of what is to be claimed will probably undergo development and change as it is put into words, but none the less the conception may be useful for two reasons; firstly as helping one to realise that at each phase faults may creep in and must be corrected; and secondly as helping one to adopt the most direct method of procedure at each phase.

With regard to avoiding or correcting faults I think it is fairly obvious that the mental picture one forms of the invention may not be the correct mental picture. It may be too narrow or it may be too broad or it may not embody essential features. The mental picture chosen will probably be no matter of scientific correctness but a matter of opinion depending on such arbitrary factors as the policy of the client and it may involve some sort of a compromise between conflicting interests. In general it is a question very much of the judgment of the individual draftsman. These aspects are discussed more fully in Part 3. On the other hand the possibility of faults in the second phase i.e. not saying what one means, is perhaps less obvious.

We shall return to this later.

The first phase – the mental picture Some people consider that a satisfactory way of drafting a claim is to write down a list of integers appearing in the specific construction designed by the inventor and then to cross out those features which are not essential. To be content with the claim so drafted is in my view very shoddy drafting. If in addition one goes on to scrutinise the integers remaining, alter and reword them as necessary, and perhaps add one or two others until the final product is quite 72

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting unrecognizable, the result may be a perfectly good claim. My own view is that this is an indirect way of reaching one’s goal and one can develop a more direct method by going to first principles.

To arrive at the mental picture, it seems to me essential to ask at the start what is the point of the invention. I believe too many people just look at the instructions and say to themselves vaguely, ‘So and so looks rather an essential feature’. The point of an invention is to secure certain advantages, and the features to which the claims must be directed are the features which enable those advantages to be obtained.

So in drafting I think one should ask: ‘What is the point of the invention? Why should any sane person ever choose to use the inventor’s apparatus in preference to what is already known?’ In cases where the answer is ‘Nobody ever would’, one can only draw upon a fertile imagination and hope for the best. In most cases some general answer is clear, such as that it gives a totally new result which is advantageous, or it may be only that it as neater, stronger, more efficient or cheaper.

Why is it stronger or cheaper? Because he uses so and so. Could he omit so and so or use something else instead? After chatting to oneself on these lines for a short time one will have made some progress towards getting a mental picture of the invention.

The time is then probably ripe for beginning to convert one’s mental picture into words, and as soon as a first draft wording has been put down it becomes necessary to scrutinise and criticise this wording. This scrutiny will obviously give a further check on the mental picture. Again, in criticizing a claim one must consider the function it is to fulfill. It is useless to hold it up to the light, inhale its bouquet or munch it; like a connoisseur appraising a vintage. The test of a claim is not whether it produces a pleasant sensation, reminiscent of silk dresses rustling in the Mediterranean moonlight, or a symphony conducted by Toscanini, or whether it produces an unpleasant sensation, like a visit to the headmaster’s study, or the putrefying corpse of a leprous polecat (although such sensational claims may be encountered). The test of a claim, as of anything else, is fitness for its purpose, and the direct way of scrutinizing one’s wording is to go to first principles and ask: ‘What is the purpose of this claim?’ The answer is that it is to make it as difficult as possible for a potential infringer to get the advantage of the invention without infringing the claim.3 Surely then the logical method of testing the claim is to put one’s self in the position of a potential infringer and see if one can readily get the benefit of the inventor’s work and ideas without infringing the claim. This must involve a measure of inventive ingenuity and design, and it seems to me incontestable that a patent agent cannot draft a satisfactory claim to an invention without directing his mind to the possibility of constructions alternative to that suggested by the inventor. Obviously this process can be overdone, and it is no part of the patent agent’s business to design in detail any modification of the applicant’s construction.4 It is sufficient to reach the stage of saying it seems probable that something on those lines could be done. Nor am I suggesting that any description of such modified constructions need necessarily be put into the specification.

Personally, I often find it helpful to make very diagrammatic little line sketches in the margin indicating possible modifications, when deciding which should be included and which should be excluded, for lack of novelty or because they do not really come within the invention envisaged.

Let us assume that, either by this process, or in any other way the individual drafter may prefer, the mental picture of the invention is now crystallised into something like its final form and appears prima facie to be tolerably well represented by the draft wording.

How to Pass P3 • 2010

73

8. Brushing up our drafting

The second phase – saying what you mean.

At this stage many people are content to pass on to Claim 2, but in so doing they are neglecting to check what I have termed the second phase of claim drafting. Both from reading printed specifications and from marking examination papers, I am convinced that it never occurs to a large number of people that they have not said what they mean and certainly do not mean what they said. This second phase of drafting is, or should be, much more a question of scientific accuracy than the first, since, in conception at all events, it is a matter of reproducing in words an accurate definition of the mental picture that has been conjured up.

Perhaps I might digress for a moment to give one or two examples of the type of fault that may occur in what I have called the second phase of drafting. In examination paper J for 1936 (below) there was a question concerned with a tube bent into the form of a closed figure and containing a quantity of liquid to serve as a gradient-meter for use in a motor car. Many candidates referred to this as a closed tube, thinking that they had thereby limited the claim to a tube in the form of a closed figure or in other words an endless tube, but if they had thought about it they would have realised that the term ‘closed tube’ would include a straight tube closed at both ends. Again, many candidates stated that the tube was filled with liquid. Since the indication of the gradient was given by the surface of the liquid, the instrument would obviously have been quite useless if it had been filled with liquid. It was about that time that Mr Leistikow and I motored across Europe and we often found it prudent to carry a few bottles of beer. Some of the candidates' claims would have been invalidated by this prior user, but had one said to any candidate: ‘Do you intend your claim to include a bottle of beer in the back of a car?’ I feel confident he would have said: ‘No!’ This was an example of a drafter not saying what he meant, or in other words not making his wording coterminous with his mental picture.

It is therefore also necessary to scrutinise the claim carefully to see whether it includes something which it is not intended to include and to see whether it incorporates all the features which appear to be essential to the invention and does not introduce any undesirable limitation.

One method of doing this is to read through the claim, trying as far as possible to banish from one’s mind the construction actually employed and to make a rough diagrammatic sketch 74

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting of what the claim defines. Generally it is best to attempt to be rather stupid when doing this, and imagine oneself a rather obstinate artist drawing just what was not intended, but always complying with what is required by the wording of the claim. In this way it is probable that the candidates who referred to a closed tube would in many cases have drawn a straight closed tube and realised that something more was required in their claim. This process of translating the words into little diagrams is the converse of that described previously which involved translating little diagrams into words.

It may also be useful at this stage to make a list of all the elements of the specific construction and see whether the essential ones are represented in the claim. This should be done with caution as the claim may be such that individual integers are not recognizable in it.

Let us consider, as another example, a claim to a pendulum compensated for temperature (below) reading as follows: Apparatus comprising an iron rod rotatable about its top end, two or more brass rods supported vertically from its bottom end, and an iron rod depending from the top of each brass rod, the last mentioned iron rods being yoked together at their lower extremities.

In the first place the claim starts: ‘Apparatus’. This may be satisfactory in some cases but it gives no clue to what it is all about, or how it is to be arranged. It leaves the whole burden of defining the invention to what follows. Why not call it a pendulum?5 There is always a danger that something quite different will possess the features enumerated in the claim but will have other features which at once render it impossible for the purpose of the invention. If a claim is drafted in such broad terms as to include a five-barred gate or a grand piano or a gridiron, what justification is there for saying the inventor (or his agent) never intended it to include such things. He should say what he means. If the claim starts with the words ‘A pendulum’ one can say of such a red herring: ‘It is obviously not a pendulum.’

Now let us look again to see if the claim includes all we wish to include and excludes all we wish to exclude. The whole point of the pendulum claimed is that the weight is not to go up or down with changes of temperature. But the claim has no reference to any weight at all. Surely we ought to include a reference to a weight.6 It is limiting the claim to an essential and excluding constructions which would be pointless and inoperative.

Now does the claim cover all one wants to cover? Putting oneself in the shoes of an infringer and selling one’s ingenuity to work to devise a construction which falls outside the claim and

How to Pass P3 • 2010

75

8. Brushing up our drafting yet enjoys the advantages of the invention; we have not far to seek. What if we turn the thing upside down and attach the pivot to the yoked iron rods and the weight to the single iron rod?

This illustrates a common fault, namely, describing or claiming a construction only in one position or condition. In a specific description it is often convenient, and probably permissible, to describe a structure in its normal position if it has one, and there can be no possible objection to this if it is stated that the description assumes the structure is in the normal position or the position shown in a particular drawing. In a claim this becomes more doubtful and a claim would be on very doubtful ground if it referred to the upper and lower ends, for example, of an engine cylinder which is described with its axis vertical but could be arranged with it horizontal. The pendulum example quoted above is even worse than this, since only part of the structure is inverted. If the thing is to work at all as a pendulum the weight must be below the pivot and hence it is not possible to argue that you have only to invert the complete article to make the claim read on to it. If the connection to the weight is specified in the claim then when it is one way up it is excluded by one limitation and when it is the other way up it is excluded by another limitation. This aspect of accuracy is discussed further in a later section, but it may be said at once that in its most serious form it may render the patent very nearly useless.

Before leaving Claim 1, the wording must be checked for inaccuracies, inconsistencies, non sequiturs, carts before horses, and other similar faults. We will leave these questions to section 2.6 in which we discuss the general question of accuracy.

The broad fighting claim – nicely graded subsidiary claims Let us assume now that we have arrived at our final wording for Claim 1. As discussed in Part 3, this may have involved some decisions as to policy or some compromise. It may be that we have decided to risk a claim broad to the borderline of vagueness, and possibly in somewhat functional form. We may want to draw a comprehensive search, but of course we cannot be certain that the claims initially filed will not be accepted as they stand.

This leads on to the question of the second claim of the specification, which is often the weakest part of a shoddily-drafted specification. This is particularly apt to be the case where the first claim is a broad functional claim. It may be that the client has himself set out the purpose of the invention and the agent sees fit to claim in his first claim any structure achieving this purpose. Or it may be that the agent has himself dug out the matter for a broad first claim. Then he heaves a sigh of relief, like a man on the completion of an arduous and unpleasant task, and settles down lightheartedly to draft a series of constructional claims packed with arbitrary limitations and describing in more or less pictorial detail the specific constructions. This is no good at all. If he sees fit to put in a broad functional first claim to anything fulfilling a given function, he must then analyse the specific constructions to see what in them represent the essential features for achieving that function. In this way a nicely-graded series of claims can be drafted, each of which introduces some perhaps minor but definitely advantageous feature as compared with earlier claims.

Here again one may go to first principles. The question is what is the point of a subsidiary claim, and I take it the answer is to give protection, either under section 32A7 or by amendment, if the broader claims are found to be invalid. So one may check for too great or too small a gap between claims by asking: ‘If Claim 1 were just anticipated, could one support a broader claim 76

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting than that?’ or, on the other hand: ‘If Claim 1 were found to lack novelty or patentable subjectmatter is there any chance of Claim a being upheld?’

This last point brings me on to consider the incidence of one claim on another. It has been emphasised before and I will emphasise again that the wording of an appendant claim may affect the interpretation of an earlier claim in a way quite unintended by the shoddy drafter.

Thus, if claim 1 refers to a peg and claim 2 says: ‘in which the peg is of circular cross-section’ claim 1 will be interpreted as covering square pegs, and if they have to fit into round holes claim 1 may be bad. Such a claim has been well described by Mr Gill as ‘worthless but not harmless’.8 I think this trouble only arises from slack drafting and will not do so if one has a really clear idea of what are the added features of each claim and what advantages follow from them. Again the little marginal sketches may be used to indicate what each claim covers and how they differ.

One other point I might mention is the undesirability in general of including in any claim features which are not essential and which introduce limitation but no subject-matter. People sometimes feel that a claim is rather weak and decide to narrow it down by limitation to a feature that has nothing whatever to do with what is already claimed, and without considering whether the subject-matter is in any way strengthened. If both claims are equally weak one might as well have the broader one.

The introduction I think most people agree that in normal cases it is desirable to include in the early part of the specification some broad statement of the invention. Some suggest that the statement should not adhere to the words of the claim but I think any departure is liable to be dangerous.9 If one has spent time and thought bringing the claim to the best wording one can think of, it seems illogical to employ a second best for the statement of invention. If its meaning is identical why not use the same words, and if not, surely it introduces grave danger of ambiguity. On the other hand the introduction to the specification close to the statement of invention is just the place to put in chatty explanations, examples of rather obscure generalised phrases, references to purpose and so forth. On the same basis there may even be occasions for putting some sort of restatement of invention at the end of the specification to be read only by those initiated into the mysteries of the specific examples.

On the other hand there are cases when I think drafters often err in not putting the statement of invention very early in the specification, but waiting until they have completely stolen all their own thunder. Some inventions are the solution of a problem which has cost many a pint of midnight oil. In such a case by all means make a song about the problem. But many inventions are just a bright idea (perhaps more are just an idea). A dress shirt with a zip fastener. The more we elaborate the annoyances of being late for dinner and the expense of the consequent taxi, the convenience of the well-known zip fastener on the ladies dress, tobacco pouch, brief case, hand bag and even golf jacket, the less epoch-making seems the idea of putting a zip fastener on the dress shirt. If you put it all in after the statement of the invention it makes just as good a legal document and much better window dressing.

Perhaps I might include a reminder that a specification is not an advertisement, and inventors, like mothers, often think nobody has ever produced anything quite so beautiful. In blowing the trumpet of an invention phrases guarded to the extent of vagueness are in my view permissible. I How to Pass P3 • 2010

77

8. Brushing up our drafting regard as most dangerous phrases like: ‘The object is to obtain 100%. efficiency’ and much prefer: ‘The object is to improve the efficiency and certain constructions may achieve an efficiency approaching 100%’. It must be remembered that even if the claim made is true of the inventor’s preferred construction or even of all the inventor’s constructions, it may well be quite untrue of many constructions coming within the claims, and even some marketed by an infringer. In the case of the liquid level mentioned above some candidates said the sensitivity was enormously increased whereas a little consideration would have made it clear to them that the greatest possible improvement (involving a limb of infinite cross-section) would only have doubled the sensitivity.

To give another example, paper J of 193510 was about a centrifugally variable drive for a windscreen wiper. The object was to keep the speed of the wiper more nearly constant than that of the car.

‘How constant?’

‘The more constant, the better.’

In these circumstances it is shoddy drafting to say, as the majority of candidates did, ‘substantially constant at all car speeds’. First of all, what is meant by ‘substantially constant’? Then when the car stops the wiper stops so we can only consider a certain range of car speeds. Suppose we say 5-60 m.p.h. existing wipers have presumably been usable with a speed variation of 1,200%.

Actually the range of the gear ratio was about 3 or 4 to 1 and the wiper speed variation might be reduced from 1,200% to 300%, which could hardly be called substantially constant. The question merely said the device prevented the wiper speed rising in proportion to that of the car.11

Accuracy It may seem merely a statement of the obvious to say that everything in the specification must be accurate and true, but it is an aspect of drafting that requires continual watchfulness. I have referred above to the fault of saying that the object of the invention is to achieve results that are not, or need not be, in fact achieved. Then again one must avoid saying, for example, that the object is to produce a cheaper article when in fact the article is more expensive but possibly worth it due to its higher efficiency.

For the rest there is little to say of a general nature, but a few examples may be mentioned.

In the gradient meter question already referred to it was perhaps permissible in the specific description to refer to the vertical and horizontal limbs of the tube, although the instrument’s primary function was in connection with hills where this description was not strictly accurate. But it was definitely shoddy drafting to go a stage further and refer to the horizontal limbs being inclined to the horizontal to prevent air locks, or to fluid when liquid was essential, filled when containing was intended, parallelepiped when trapezium was intended, or to refer to the difference between the levels of the two ends of the liquid column, or the diameter of a tube that was not necessarily of circular section and of which one part was definitely described as flattened.

Then again consider the claim quoted above to a compensated pendulum, which starts by referring to an iron rod rotatable about its top end. This is putting the cart before the horse for if the rod is horizontal it has no top end. It may be argued that the reference to a top end implies that the rod is not horizontal, but if possible it would be better to say so directly, and not merely by implication. Then the phrase gives no clue as to the axis of rotation, so the obstinate artist may draw a picture of a sloping rod pivoted about a vertical axis.

78

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting

Jargon and wordiness Accuracy throughout the specification is essential, but not high-sounding pomposity. Some people seem to think that in the pendulum claim one could not be scientifically accurate without saying: ‘a rod disposed with its length extending vertically or substantially vertically and mounted at its upper extremity so as to be rotatable about an axis which is substantially horizontal and which passes through that extremity’. I think we should not be far wrong if we said: ‘hanging from a horizontal pivot near one end’. Mr Tennant used to say something to the effect that: ‘Sesquipedalian expressions of a redundant character inherently introduce a tendency towards obfuscation’, but: ‘short words make things clear’.

In my paper on ‘Clarity and Brevity in Legal Documents’12 I made some references to the unfortunate choice of language (I will not call it English) adopted by some patent agents. No doubt there are those who feel that their first duty to their client is to alter the wording he has used to describe his invention, and that once they have altered the client’s clear but specific description into a vague and ambiguous but high sounding jargon their fee is earned. There are those who cannot bear to call a spade a spade and the handle of a spade the handle of a spade, but must cloak such rude implements in the guise of, ‘said first aforementioned cultivating member associated with said second aforementioned cultivating member’. It is as if they purposely use obscure language in order to make the specification a mystery unintelligible to the uninitiated, but they should remember that their client will be among the latter class, and if an agent has not perfectly understood his client’s intention the client may point it out when he has the specification for approval, but only if he can understand it, and not if it appears to him so much unintelligible jargon. Even to the agent himself clear language goes with clear thinking, and if the invention is expressed in an obscure and roundabout way it will probably be thought out in a similar way. So too a judge is less likely to condemn for ambiguity a definition which strikes him with vivid clarity than one which he has to read a dozen times and then ask Counsel to explain before he begins dimly to discern what is intended. Most people are familiar with plain English, so let us use plain English wherever plain English will do the job.

There are certain words I have never heard used in conversation or in a book, but somehow they are always cropping up in patent specifications. Words like ‘thereto, therefrom, thereafter or thereup’, sound more pompous than ‘to it, from it, after it or up it’, but are they really any clearer?

In this connection one must also have regard to its effect on the sentence in which it occurs.

Such words as I have mentioned often make a sentence more cumbersome than it otherwise might be. Then again the word ‘said’ meaning ‘the’ is largely peculiar to specifications, though it has infiltrated into technical jargon generally. ‘A wheel on said shaft’, conveys very little more than the English equivalent ‘A wheel on the shaft’.

Christening of individual parts is often a great help towards achieving a clear and easy style rather than a heavy and cumbersome one. In many cases this can be done without introducing any restriction, and in such cases the part’s nickname can be used both in the claims and description. In other cases a broader term may be required in the claims, but the nickname will none the less be of great value in the description. It should be unnecessary to add that having chosen a name one should stick to it.

I believe one cause of cumbersome and wordy expressions is the attempt to correct a fault such as ambiguity by adding words rather than rewriting the sentence or if necessary the How to Pass P3 • 2010

79

8. Brushing up our drafting paragraph. It appears as if the writer, dissatisfied with a word or phrase, seeks to correct it by adding a further word or phrase, and if still dissatisfied adds still more words until he has built up a monstrous edifice of tangled verbiage. In many cases this could be avoided by cutting out the faulty phrase and substituting a better one. A horrible example of this occurs in the Trading with the Enemy Act, 1939 (c. 89).13 Here the drafter has used the phrase ‘in particular’. This phrase is inherently ambiguous as nobody seems to know whether what precedes it is limited to what follows it or whether the latter is merely by way of illustration. The drafter has seen this, but instead of cutting out the ambiguous phrase he has inserted further words until he has built up the monstrous phrase ‘in particular but without prejudice to the generality of the foregoing provision’.

In fairness to him he has removed the ambiguity, but at what cost? We all know what he means.

In two words, he means ‘for example’. It may be thought pedantic to criticise a phrase such as this, since, if carefully examined, its meaning is quite clear. But if every phrase in a specification is inflated with windy jargon in this manner the result becomes most indigestible. This is an aspect of the choice of words which needs to be borne in mind throughout a specification, or indeed any other document. Whereas a single cumbersome word or roundabout phrase may seem adequately clear and reasonably concise when standing alone, the cumulative effect of a number of such phrases put together in a specification may be intolerably cumbersome.

Arrangement of description – keeping the reader in blinkers Some specifications seem to be drafted with the object of keeping the reader as much as possible in the dark as to what it is all about, although ultimately it may be impossible not to reveal the secret of what is being described. This seems to apply particularly to specifications drafted in the US. It may be partly that what we regard as plain English is regarded by our friends in America as an obscure and archaic dialect, but I think the chief explanation lies in certain rules of US practice. I have received official objections on the ground that I have described the function of a mechanism before describing the mechanism.14 This in itself may seem quite reasonable and undoubtedly it prohibits what is an undesirable extreme. But if it is made a rigid rule the natural tendency is to force practice to the opposite extreme to be quite certain of avoiding objection.

This means never saying what a mechanism is for, until every nut and bolt of it has been described. The effect is aggravated by another feature of US practice. I will quote a letter from America commenting on a 67-page US specification; it said: To understand this it must be remembered that the value of a US patent is also linked with the extent of the description, and the technical contribution that it gives to the art. That means that the courts are more likely to sustain patents where the applicant has been liberal and efficient in his efforts to describe everything he knows. Such policy, as far as I know, is not used by the courts in Europe.

His last sentence is not of course quite correct as British courts attach very great importance to sufficiency of description, but the difference is that they measure disclosure by facts and not by folios. I am not for a moment criticizing the practice of another country or suggesting that they should alter it to suit me. But the question assumes relevance when a British Specification has to be prepared corresponding to a US, and it would naturally save trouble to adopt the same wording for the description.

80

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting It is interesting to try to analyse the reasons why certain such descriptions seem less clear than they might be. To begin with, the mechanism is not described as a whole, starting with a main framework indicating the main parts and what they are for, and later describing the details of the parts and how they perform these functions. If this is done the reader can appreciate at every stage how the details fit into the general picture. This is impossible if the description starts in one small corner of the mechanism with minute details the significance of which is veiled in mystery until the end of the last chapter. (It is of course possible the writers of these specifications are more familiar with the writing of detective novels.) This is carried to an extreme in the case of phrases such as ‘the function of which will presently appear’. Surely in most cases one could indicate the purpose very briefly, even if details are to follow later, by using some phrase such as ‘to hold the baby as described in more detail below’. If this is not done, the reader is expected to carry in his head details of a mass of meaningless structure; shafts and wheels, first-mentioned members and second-mentioned members, until at the last moment, after wading through pages of description, he is let into the secret of what it is all for.

A very good test of a description is that it should be intelligible without any reference to drawings. In fact if the description relies entirely on drawings it is not really pulling its weight, and there is no doubt that the labor of following a description is enormously increased if every phrase has to be interpreted by searching the drawings to find the corresponding reference letter. Perhaps the worst type of description is that which starts, ‘A is a shaft, B is a wheel, C is another shaft’. Such a description gives no idea at all of the relationship between the various parts referred to, and in the absence of drawings conjures up no mental picture of any sort at all. The length of the specification is not unduly increased by employing a phrase such as ‘the mechanism includes a driving shaft A carrying a wheel B and mounted coaxially with a driven shaft C’. This gives at any rate some idea of the arrangement and makes it very much easier to identify the parts on the drawing without searching about for the reference letters concerned.

Even if the length of a specification is slightly increased by adopting a pictorial style it must be recollected that the length of a specification is really unimportant. Again going to first principles the purpose of the specification is to convey a description of the apparatus as clearly as possible, and in fact a reader may obtain a clear picture more rapidly from two pages of clearly-worded pictorial description, than from a single page which he has to read three times.

Inspection and checking Some patent agents, who have been concerned with the methods of inspection used by industry during the war, such as the multiple gauge which with a single blast of air checks a dozen dimensions of a cartridge case with incredible accuracy, may sometimes wish they could subject their patent specifications to some such automatic scrutiny, inserting Claim 1 into a neat little slot and reading on a huge dial, too narrow, too broad or OK. Although I cannot offer anything of this sort it may be worth summarizing certain questions which can usefully be asked in reviewing a specification to help one judge whether it covers the invention as well as possible. No doubt many other questions may be added but it seems that some of the more important are as follows: 1. Has Claim 1 utility; i.e. does it include the features from which the advantages of the invention follow?

How to Pass P3 • 2010

81

8. Brushing up our drafting 2. Can Claim 1 be avoided by any obvious modification?

3. Has Claim 1 patentable subject-matter or does it cover something obvious?

4. If Claim 1 is weak are there strong, independent sub-claims?

5. Do the claims say what they mean and mean what they say; i.e. do the mental picture and verbal counterpart agree?

6. Can the claims be avoided by selling subordinate integers?

7. Do the claims cover the construction when empty, idle, placed on its side, upside down, etc.?

8. Do the claims include any limitations which lend no patentable subject-matter and are not essential to the purpose aimed at?

9. Are the claims based on any doubtful theory?

10. Are the claims accurate in substance and terminology?

11. Can the claims be made less pompous and more succinct, for example, by making them more colloquial or pictorial without sacrificing accuracy?

12. Are all the client’s information, modifications and remarks included (if this is desirable)?

13. Is there sufficient explanation of parts, operation and terms, and mention of advantages, bearing in mind the state of the art and the need for clarity to a judge?

14. Are any doubtful terms defined, in particular ‘the type specified’?

15. Is the description of the drawings complete in itself?

16. Is the technology consistent throughout the specification, especially if the claims have been amended?

17. Does the description lead up to and amplify the claims and set forth the purposes and points of the features claimed?

18. Is any unnecessary or doubtful theory included, and if so is it guardedly introduced?

19. Is any unnecessary or doubtful modification described, and if so is it guardedly referred to?

20. Are there any superlatives or are results claimed which need not be obtained, or worse still are not even obtained by the preferred construction?

82

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting 21. Is everything stated in the specification true?

22. Are there reference letters to all parts of the drawings likely to be pointed at in Court?

Policy in drafting claims Form of claim to suit each case The question of the form of claim to be adopted is included in this part of the paper since some members may make it their policy to prefer one type of claim to another. One man may always start: ‘In a so and so the combination with...etc.’, another starts: ‘A so and so comprising in combination’, another prefers: ‘A so and so in which or wherein’, while others use the word ‘characterised’. The question of functional claims is discussed more fully in section 3.2. My own view is that the patent agent should have all these forms of claim in his repertoire and in each case should select the form which best suits the particular invention. I would suggest using the term ‘characterised’ only when a single feature really does characterise the invention, and one of the combination forms when a combination of features is involved, especially if each feature by itself is already known. But even here there is no hard and fast rule and each case should be considered on its merits.

How broadly to claim In some cases it is fairly obvious that the invention enables certain clear-cut advantages to be obtained; and it is relatively easy to complete one's mental picture of the invention to be covered.

In other cases it may be extremely difficult to decide how broadly to claim the invention, and there may be no limit to the possible breadth beyond the fact that the claim becomes impossibly vague and functional.

One example of this difficulty is where the invention is a case of, for example, ‘the hotter the better’. It is clearly asking for trouble on the ground of ambiguity to limit the claim by a phrase such as ‘very hot’ and the only way to make the claim definite is to select an arbitrary limitation such as ‘above 1000°C.’ Then, of course, if the nearest prior art was just under 500°C an infringer may get much of the advantage of the invention by using 950°C. On the other hand if our claim specifies ‘above 500°C’ it includes at its extreme limit a case having no appreciable advantage over the prior art. Presumably the best makeshift is to select an adequate breadth of no man’s land between the claim and the known prior art and be content to let the infringer into this territory.15 Further limitation can, of course, be brought into later claims. It may be desirable to make it clear that there is no magic about the limits chosen, by stating specifically that the precise temperature is not critical. The matter is, of course, made worse if the prior art is vague about the exact temperature, and uses phrases such as ‘heated to a high temperature’. If any members have a real solution to this problem I should very much welcome it.

The question of functional claims is another about which opinions differ, but my own view is that this again can be usefully viewed from first principles. If this is done it will at once be clear that functional claims cover a wide range of very different types. The purpose of the claim is to tell the reader as clearly as possible what he is prohibited from doing, and if this is done most easily, most clearly and most unambiguously by means of a functional claim there seems no How to Pass P3 • 2010

83

8. Brushing up our drafting reason why a functional claim should not be adopted. On the other hand if the functional claim merely sets the reader a problem, and purports to prevent him from adopting any solution that he may devise, with whatever ingenuity and research, then it is clearly not defining an invention that the inventor has made, but calling upon the reader to make an invention himself and then telling him he may not use it. A claim of this type was once described by Mr Ballantyne by the term ‘Free beer,’ covering, as it does, something which many people regard as highly desirable, but which nobody has so far found a process of producing. Since the No Fume decision16 the profession in general views functional claims more favourably.

This brings me on to one of the most general questions of policy in relation to the drafting of claims, namely its dependence on decided cases. Naturally enough the interpretation of specifications is to a considerable extent affected by High Court decisions in particular cases, and we should be foolish not to give due weight to such decisions and to any advice we may from time to time be fortunate enough to receive from those closely connected with court work. At the same time I suggest that such decisions need not be followed too slavishly in drafting specifications. The vast majority of specifications never come into Court at all. For example, in the five years from 1934 to 1938 the number of complete specifications accepted was about 100,000 whilst the number of patents forming the subject of cases reported in the R.P.C. (including applications for extension) was about 60. Admittedly the remainder are viewed in the light of court decisions, but there is always a margin of doubt as to the decision that would be obtained, and the deterrent effect of the cost and trouble involved in infringement proceedings. A gloomy counsel may well advise a prospective plaintiff that a certain claim is weak, but at the very same moment a cautious patent agent may be advising a potential defendant that it would be most inadvisable to risk an infringement action.

Moreover, one must consider the alternative. It would of course be very nice to have a claim which was much stronger and was also infringed, but too often if the doubtful claim were not there the patentee would be advised without any doubt at all that the patent was not infringed.

A further point is that the Court decision may subsequently be over-ruled, or altered by statute.

In brief, there is one over-riding consideration which applies to the drafting of claims, namely that it is easy to cancel them later on, and utterly impossible to put them in [after grant].

Naturally there is a limit to the extent to which this policy should be carried, but if there is any serious doubt it would appear that the cautious policy is to include the claim rather than leave it out. A doubtful claim may present a difficult task to counsel or experts. The lack of it may present an impossible task.

Mullard v Philco17 We are all familiar with the decision in the pentode valve case in which the claim to a valve in its circuit was upheld, but the claim for the valve per se as an article of manufacture was held not to involve patentable subject-matter although it was new. It would be impertinent for me to question the decision of all the courts which decided this case, but from my limited knowledge of the case I entirely disagree with the decision. It is a principle which if carried to its logical conclusion would result in the most ludicrous absurdities and render all patent protection worthless. A chair would be unpatentable except in combination with a person sitting on it, since it clearly fails to perform its function when there is nobody sitting on it. A sparking plug would not be an infringement of a patent when made by the manufacturer or when sold 84

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting by the vendor, nor even when fitted to a motor car if the motor car contained no petrol. It might even be argued that the sparking plug would cease to be an infringement every time the user of the motor car switched off his engine. Be this as it may the decision has been given and cannot be altered merely by my disagreeing with it.

But this does not mean that it must necessarily be followed in drafting claims. In the first place it may be over-ruled or altered by statute long before the patent expires or comes into Court. Secondly, it is not suggested that the claims to a subordinate integer should be substituted for claims to the complete combination but that they should be included in addition. If it is not intended to rely upon them in an action they can always be cancelled.

Sufficiency of claims It is sometimes suggested that a claim is liable to be held invalid if it does not specify all the features which are necessary for the mechanism to be operative. In a chemical case if the claim refers generally to halogens and one of the halogens will not give the desired result it is generally agreed that the claim is invalid. On the other hand there must be a limit to the extent to which this is applied, at all events to mechanical cases. If a claim refers to a piston and cylinder it will generally be unnecessary to state in the claim that the piston must fit the cylinder, and that if it were either too large or too small the desired result would not be obtained. The body of the specification must describe one means of carrying the invention into effect in sufficient detail to enable a competent technician to do it, and clearly the claims cannot be expected to go into the same detail nor need the claims be limited to that one embodiment.

No doubt members will have various opinions on this question but it is suggested that there is a distinction between the extent of detail required in connection with features which are germane to the invention and features which are well known. For example, if the invention related to a shock absorber in which the whole point was that the piston did not fit in the cylinder, it would clearly be essential to specify this in the claim, whereas in the ordinary way a reference to a piston and cylinder would be assumed to refer to a cylinder with a piston fitting it.

Subsidiary claims We have discussed in part 2 the purposes of subsidiary claims, one of which is to obtain the benefit of section 32A.18 The question arises whether this section applies to a portion of a claim; for example, an alternative or a preferred or optional feature.19 It is thought that the Court might reasonably be expected to give relief where preference is expressed, or even an optional feature included, on the ground that this implies selection, and in fact a claim of this form is merely a more concise way of writing what could be equally well covered by two separate claims. On the other hand a direct alternative is merely a means of expanding the scope of a claim; for example, a reference to the right hand or the left hand could be expressed generically by the phrase ‘one hand’. It is therefore thought that where a direct alternative is included in a claim there is no suggestion of selection, and if one limb of the alternative lacks novelty the Court would not grant relief in respect of the other limb.

One of the most widespread forms of alternative embodied in British claims is that caused by making claims appendant to ‘any one of the preceding claims’ and this is discussed in the next section.

How to Pass P3 • 2010

85

8. Brushing up our drafting

Permutations and combinations of claims It is not always realised what a lot of claims a British specification contains. Claim 1 is of course only one claim, and so is Claim 2. When we come to Claim 3, if it includes the phrase ‘as claimed in Claim 1 or Claim 2’, it is obviously in fact two different claims. Similarly, if Claim 4 contains the phrase; ‘as claimed in any one of the preceding claims’, it is in fact four claims, since it may be appendant to Claim 1 or Claim 2, or either of the two Claims 3. And so it goes on until when we get to Claim 21 we have totted up no less than 1,048,576 separate claims, and Claim 22 adds a further 1,048,576. It is not suggested that this is necessarily a reason for not adopting this form of wording for appendant claims. It is not the arbitrary result of adopting a particular form of words, but is a natural mathematical outcome of the fact that, if we have 22 separate features which can be combined in different ways, there are over a million separate combinations of these, bearing in mind that they must all possess unity of invention, in that every combination must include the first feature.

We must therefore take the responsibility either of including all these combinations or of ignoring some of them. In either case it is necessary to consider the results very carefully. In the first place with regard to the question of selection it seems clear that it cannot possibly be said that if one of these combinations is novel and inventive, or even if a little group of a few thousand are novel and inventive, the claim can support a selective interpretation covering just that combination or group. For example, if Claims 1, 2, 3 and 4 respectively introduce features A, B, C and D it is quite conceivable that A + B + C would be old and A +B +D would be old, but that A + C + D might be new and useful and used by an infringer. In short, the first three claims would be anticipated and Claim 4 would be anticipated as appendant to Claims 1 and 2, but not as appendant to Claim 3. This is an instance where the drafter of the specification, if he had foreseen how things would turn out, could have drafted the specification so as to include the alleged infringement in a valid claim, but in fact has not done so. This emphasises the desirability of concentrating on combinations of claims which are likely to be of importance and which co-operate with one another in some particular way, although it is quite clearly impossible to include claims directed to all the combinations and in many cases it will be out of the question to hope to foresee what combinations will ultimately prove novel or be adopted by competitors.20

The omnibus claim21 The question of the omnibus claim, directed to the particular construction shown in the drawings, is one that has already been discussed very fully, and I do not propose to add to what has already been said about it.22 Indeed it appears to be a never failing topic for argument and might be described as ‘A widow’s cruse filled with bones of contention.’

Concluding remarks In conclusion I must apologise for having taken up so much of your time and yet being so far from having exhausted the subject. I can only hope that my remarks may suggest new trains of thought and resurrect old ones, and that a discussion will follow that will represent a real contribution to the subject of drafting, which occupies so much of our lives.

86

The Chartered Institute of Patent Attorneys

8. Brushing up our drafting

References 1. The reference is to the Second World War, 1939-45.

2. Leistikow, F.W.R., ‘The Institute Final Examination’, Trans. C.I.P.A. LXIV (1945-46), 41 3. [Editor’s emphasis]. Mr Micklethwait’s proposition is substantially the same as that set out at the conclusion of the inventive step chapter at page 37, The fundamentals of good patent drafting have remained little changed.

4. [Editor’s note: many of us have contributed suggestions in outline. Bur we are not persons skilled in the art, and straying into detailed design is indeed dangerous.]

5. [Editor’s note: ‘Pendulum’ is a field-defining feature, whereas the iron rods, brass rods and yoke are other technical features. The relationship between these aspects of a claimed invention is discussed under Technical Field beginning at page 185.]

6. [Editor’s note: Or to a fixing for a weight if the pendulum body and the weight are components that might come from different suppliers and be assembled together subsequently.]

7. of the Patents and Designs Act 1907, as amended by the Patents and Designs Act 1932 8. The Effect of Recent Decisions in Patent Cases. Trans. C.I.P.A., 1936-7, at p.63. Note that the same point is referred to by US practitioners as ‘claim differentiation’ and can be important for the construction of the claims of a UK patent.

9. [Editor’s note: Mr Micklethwait’s comments were made before the entry into force of the Patents Act, 1977, Section 76 or Art. 123(2) EPC. His comments remain applicable for the patent as granted, but may be inadvisable for the specification as filed, where some elements inconsistency between the written description and the claims may be deliberately introduced in order to preserve flexibility. Furthermore, some US practitioners now omit a statement of the invention in order to minimise the risk of the US courts reading unintended limitations into the claims.]

10. Published in CIPA Transactions for 1935.

11. See also Kraft Cheese Co. v McAnulty, (1931) 48 R.P.C., p.536; No Fume, Ltd. v Frank Pitchford and Co., Ltd., (1935) 52, R.P.C., p.231.

12. Trans C.I.P.A LX (1941-42) p. 220 13. Section 1.2a, see also Trade Marks Act, 1938, Section 37.3.

14. [Editor’s note: The approach to drafting has changed, and such objections are nowadays uncommon.]

15. [Editor’s note: It is very often not desired to leave a no-man’s land. Then a phrase such as more than 500°C excludes 500°C itself and covers all temperatures above this value; this format is extremely useful, especially for process-related inventions.]

16. No Fume Ltd. v F. Pitchford and Co., Ltd., (1935) 52 R.P.C. at p.231.

17. (1936) 53 R.P.C., p.323 discussed below. [Editor’s note: The Mullard decision which gave concern to Mr Micklethwait did not prove influential and is nowadays seldom cited. Such an invention could be treated as a ‘distributed invention’ (see the discussion on this topic at page 218 onwards) with the main independent claim being for the pentode valve in place in an amplifying circuit for which the valve was intended, with a second independent claim to the pentode valve for use in the previously defined amplifier. In order to use the distributed invention format, however, the claim to the component must be novel and inventive. The problem for Mullard was that there had been a progressive increase in the number of electrodes within an evacuated glass envelope from the single electrode lamp of Edison to the two electrode rectifier of Sir Ambrose Fleming, then to the three-electrode amplifier of Lee DeForest, and again to four electrode thermionic valves.

Against this background the House of Lords did not find it credible that there was inventive step in adding a further electrode, especially since a pentode valve might find utility in circuits whose design owed nothing to Mullard’s invention, and on this basis their decision is understandable.]

18. Of the 1907 Act as inserted by the 1932 Act. 19. See Williamson, E., ‘Alternatives in Claims’, Trans. C.I.P.A., LXII (1943-44), p. 44 20. [Editor’s note: The law has developed since Mr Micklethwait wrote his paper. Sections 27 and 75 of the Act now require the Court or the Comptroller in considering whether or not to allow the application to amend to consider any relevant principles under the EPC, which is being amended to allow the claims of granted specifications to be amended as of right provided that they comply with Articles 84, 123(2) and 123(3) EPC. In the circumstances he postulates, an application to amend will be necessary but should be available as of right.]

21. [Editor’s note: This comment was made before the decision of the House of Lords in Raleigh v Miller (1948) RPC 141, (1950) 67 RPC 226, afterwards referred to as the ‘hub dynamo’ case. The patent in issue related to a commercially valuable invention, and the only claim that has held to be valid and infringed was the omnibus claim. For a more recent example of a patent that was saved from ineffectiveness by the omnibus claim see Rotocrop v Glenborne [1982] FSR 241. The continued availability of ‘omnibus claims’ in the UK is out of line with EPO practice and is questioned periodically. The Editor’s view is that such claims provide valuable fall-back protection for a patentee, and should be included whenever appropriate. It is submitted that their scope is neither broad not narrow but, when carefully drafted, the same scope as a Court would have accepted for the patent in issue if it had been granted under the nineteenth-century UK law where the inclusion of detailed claims was not required and the ambit of protection was decided by the court on the basis of the specification as a whole. Omnibus claims should be written as independent claims with an informative preamble, but should not be made dependent on one of the independent claims, otherwise the opportunity to argue for broadened scope as in Rotocrop may be lost. Both of the above cases are required reading for students.]

22. Williamson, E., ‘The Omnibus Claim’, Trans. C.I.P.A., LX (1941-42), p. 113

How to Pass P3 • 2010

87

9. Claim drafting – the British tradition

By M.J. Daley This paper was first published in (1981-82) 11 CIPA 110. It was republished at [2003] CIPA 431; and most recently in Fundamentals of Patent Drafting (2006) by Paul Cole (page 175). It builds upon the preceding Micklethwait paper and provides useful introductory material for students as well as advice that all of us in the profession should follow.

Over the last ten years much emphasis has been laid on change in our profession and the need to seek new skills and possibly even a new role. Implicit in this emphasis has been the suggestion that the traditional skills of claim drafting and interpretation have somehow become less important. I am in strong disagreement with this. I believe, on the contrary, that as a claim can now define protection in a number of countries the drafting of that claim needs the very greatest care and skill.

A patent agent should, by way of introduction, acknowledge his [Ed.: Throughout the masculine includes the feminine!] principal source and this I have much pleasure in doing. I have been considerably influenced in the preparation of this Paper and indeed through my professional life

by Mr E.W.E. Micklethwait’s Paper1 (entitled ‘Brushing up our Drafting’ and I will refer to this Paper specifically from time to time. Everyone here who has not already done so should read Mr Micklethwait’s Paper and the account of the discussion which followed the Paper.

It is perhaps of value to reflect, by way of introduction, on the nature of the exercise of claim drafting. Those seeking to instruct patent law and practice on an academic basis have, in my view quite correctly, avoided claim drafting as a conceptual exercise and rather concentrated on the form and possible effect of claims. Most practitioners, I believe, take the view that claim drafting though requiring without doubt acquired knowledge and intellect is essentially a skill or craft only properly learned by carefully supervised practice over a considerable period of time. One of the attractive features of our work is that this learning process only stops when we retire. It follows from this that no-one has produced, or is likely to produce, a credible and effective rigorous analysis of the craft of claim drafting and hence a means of learning the craft on an academic basis. Most of us owe such skill as we have to our teachers and colleagues. In this spirit I offer some comments based on my own experience.

The drafting of a patent claim is an exercise which can be divided into several stages.

Stage I The analysis of the received disclosure to produce a mental picture of the invention which it is desired to monopolise. The phrase ‘mental picture’ was used by Mr. Micklethwait and seems quite apt and is so familiar to me that I propose using it in this Paper. I apologise to those of you How to Pass P3 • 2010

89

8. Claim drafting – the British tradition who do not think, as I do, in pictorial terms and offer respects to those who are able to develop concepts in terms of words without the need for intermediate steps. The opening phase of the analysis must be a thorough technical comprehension of all the material communicated to you by the inventor or your correspondent, and I stress the word ‘all’ for it is a common error to come to a view of the invention too early and to consider only material which seems to fit our own premature conclusions. It is sometimes tempting to pick out a few prominent features which seem at first sight essential and to organise them into claim language which looks professional and may even satisfy a client and the Patent Office. The drudgery of reading through much unnecessary material seems to be avoided. It will be purely fortuitous if such a claim, drafted without a proper analysis of the received disclosure, does have the correct scope. Only when all the communicated material has been totally understood, preferably to an extent such that it can be held in the mind while distanced from your written information, should the work of synthesising the mental picture begin.2 For this vital early stage of receiving and comprehending information the draftsman needs a good technical background but more importantly he requires an appetite for technology. He should have a genuine interest in the subject-matter in question and a desire to expand his knowledge. I believe, with the undoubted need to acquire new legal, linguistic and other skills, there has been a certain tendency to under-emphasise the technical and scientific side of our work. The view seems to be that, if we insist on very high technical entry qualifications, the technical side of work can be put behind an entrant to the profession on admission and before he undertakes his formal training. We also see this tendency in the departure of the Manufactures Paper from our own Chartered Institute Examinations. A patent practitioner must not only enter the profession with adequate technical qualifications but also maintain an abiding interest in technical matters, preferably not merely those confined to those of his own academic disciplines. A wide range of technical interests and hence knowledge is a symptom of the vital quality of what I have called ‘technical appetite’.

Let us assume that the inductive work of thorough comprehension, which may involve dialogue with the inventor or our correspondent, is behind us and we can embark on the analysis of the invention and the production of our mental picture which will include all that is essential and nothing more. It is here that the fascinating quintessence of our work lies and we have all observed how some of our colleagues seem to be able to produce this vital synthesis rapidly and indeed almost instinctively both as a result of their innate mental ability and the application of their experience. For most of us, however, some specific mental techniques are required here and whilst referring you to Mr Micklethwait’s Paper may I suggest two techniques that I have personally found helpful.

Firstly there is the technique of problem and solution. An inventor usually has some purpose in mind and finds it possible to give a reasonably clear indication of the problem with which he was grappling. The realised embodiment of the invention is before you so you can address yourself to the vital question of how has the solution been achieved. Expressed as two short questions: (i) What is the inventor trying to do? (ii) How has he achieved his solution?

90

The Chartered Institute of Patent Attorneys

8. Claim drafting – the British tradition Very often in my experience this line of questioning will at least catalyse the production of the vital mental picture.

The second technique calls for a careful and critical assessment of the invention as perceived by the inventor; what has he achieved in actuality? I have always been profoundly impressed with some remarks made by an eminent barrister at the Holborn College Lectures. Addressing himself to the question of ‘broad’ and ‘narrow’ claims he told us that breadth of claim monopoly should be coterminous with understanding of the invention; breadth beyond understanding is mere speculation and will result in invalidity on one ground or the other. As I recall, the example used was that of the notional discovery that common table salt killed dandelions growing on a lawn, leaving the grass unharmed. If that statement genuinely indicated the limits of the inventor’s understanding then that is all that he is entitled to claim. Any extension would be mere speculation; ‘sodium chloride or the like’ would not do as there was no knowledge as to the property of sodium chloride which achieved the desired result. Was it the fact that table salt was white and granular or what? There was no basis to construct the mental picture in other than totally specific terms. If it is known, however, either by evidence or soundly based deduction, that the solubility of the halogen ion is involved, as is the fact that dandelions have broad leaves, then we can do a little better.3 It may be that we will have to prod and question an inventor and even make him do more work but this must ultimately benefit the patentee.

Let us take a mechanical example where often we are confronted with a machine stated to have an improvement in performance arising from a specific modification. The modification may be the mere insertion of a spring linkage for a previously rigid connection but by relating the modification to the result and discussion with the inventor it is usually possible to advance our understanding. Inventors in the mechanical arts have the habit of immediately translating quite broad conceptual invention to operational hardware and we must ‘understand back’ from the hardware and not merely speculate.

Now these are two techniques that I personally find helpful and I will briefly refer to another which is so widely used that it must be mentioned. That is the systematic consideration of alternatives.4 In broad aspect this consideration can be helpful. The question: ‘Why has the inventor arrived at this solution rather than another?’ may enlighten. However at this stage I prefer to attempt an accurate identification based on the material I have digested and tend to be confused by hypothetical exercises. After all, if my mental picture is clear and correct any alternatives will not have the invention and thus need not be conceived and subsequently discarded. The consideration of alternatives may be more helpful when we come to check our claim in the finished form Implicit in my remarks is my incorrigible belief, supported by experience, that most inventions are susceptible of precise definition and arbitrary choices between ‘broad’ and ‘narrow’ claims do not have to be made as often as the columns of CIPA might suggest. It is my view that work at this synthesis exercise should continue until a clear and well-focused mental picture is produced. This mental picture represents the invention to be protected. At this time it is not my practice to occupy myself with the problems of expressing this mental picture into claim language and I commend this negative practice of not writing too early. In Imperial China it was customary for a craftsman, before undertaking an important piece of work, to travel to a remote location and remain there for at least a week without written information, tools or How to Pass P3 • 2010

91

8. Claim drafting – the British tradition writing materials. During this week he organised his mind so that he had a complete conception of the work that he was attempting to undertake. I commend this attitude, if not the specific practice.

Stage II When you have the mental picture, reduce it to a written statement quite rapidly using language which comes naturally to you. It is at this stage that your experience will be of value to you and I have found that undue attention to wording at this stage hinders what I might term the intuitive influence of this experience. If you adopt this technique you may be surprised at how often you do choose without effort the correct wording. Too much linguistic struggling at this stage may blur your carefully produced mental picture. This plain language statement of the invention fixes the mental picture.

Stage III Now review and revise your Statement of Invention in a careful and critical way. One of the necessary skills of a patent agent is to be able to read his own work and to receive the message of the written word rather than to have the words act as a mere trigger to bring into his mind what it was he intended to write. This review is an important occasion in which this skill of self-criticism should be brought to bear. Obviously what you are seeking to do here is to satisfy yourself that your words create exactly the mental picture that you have so carefully prepared.

Whilst the words that you finally select should be appropriate and accurate, the solution to successful claim drafting does not, in my estimation, lie in the over-careful selection of particular words and one must strive to identify the thoughts that you have by description rather than by mere labelling with a word which may seem to you to be particularly apt. I incline to the view that neutral words such as ‘parts’ and ‘members’ are to be preferred in a claim and words which, though in common usage, have a number of meanings both literal and metaphoric are better avoided. ‘Bars’ and ‘plates’ are examples of such words. If your carefully assembled mental picture really requires a part to be characterised as solid, long in relation to its width and rigid, then it is probably better described as such than labelled as a ‘bar’. The problem with descriptive words, particularly if they are metaphoric in character, is that they are capable of conveying different impressions to different people.

Stage IV Now with a clear and accurate Statement of Invention in the English language you can consider matters of form and presentation. The exercise of organizing claim wordings into accordance, for example, with Rule 29 EPC can be carried out at this stage.

I do not wish to belittle the knowledge and skill which is involved in the organizing of a claim into a form appropriate to a particular country. What I am saying is that once you have your claim drafted for example in the British form in the manner envisaged in this Paper then the exercise of preparing claims for other countries is essentially a conversion exercise. If there is a totally different way of approaching invention for claim preparation in, say, the US, then I regret that I am not familiar with it. My impression is that when we come down to a bedrock such as an assessment and definition of invention there is not a great difference from country 92

The Chartered Institute of Patent Attorneys

8. Claim drafting – the British tradition to country. What is different is the way the protection enforced is achieved and certainly there is still a strong body of opinion on the Continent of Europe that feels that claim drafting as envisaged in this Paper is an impossible exercise and therefore an unfair and essentially futile one. Obviously I do not share that view. In my estimation poor claims tend to be produced when these organizational considerations of claim form are brought to bear too early in the exercise and before the draftsman has a clear notion of the invention he is striving to protect.

A criticism of the claim drafting technique outlined above which involves ‘total immersion’ in the received disclosure followed by a synthesis of the mental picture is that not sufficient account of prior art is taken. It could be argued that an inventor and his patent agent could evolve a perfectly drafted claim to a well-known device. I would say to this that the prior art, whether received from the inventor or discovered by searching, should form part of the disclosure to be digested and if necessary discussed before the mental picture is drawn. Quite often the patent draftsman synthesises his mental picture in the form of a ‘step’ from a piece of prior art. This usually arises when the inventor has been working to improve a known construction or process. In this event, with the step properly identified, the drafting of the claim may be quite simple and certainly the organisation into EPC or other ‘Continental’ form is straightforward. If, after filing, more relevant prior art is revealed then the claim drafting exercise may have to be repeated but experience tells me that prosecution redrafting is rarely as difficult and as time consuming as original drafting, as the task of understanding the disclosure is behind.

Although this is beyond the scope of this Paper, I should briefly state that claims drafted as envisaged in this Paper must accompany a specification which has a very full disclosure of all the material imparted by the inventor and not merely that which tends to support the invention as originally envisaged.

Let me address a few words on some adjectives which are often used to describe claims or even schools of claim drafting. Amongst others there are ‘broad’, ‘narrow’, ‘functional’, ‘structural’, ‘peripheral’ and ‘central’ as applied to claims. For myself I do not find these adjectives particularly enlightening or helpful; the identification and definition of invention seems to me a sufficient and complete operation. I have already stated my view that the arbitrary choice between ‘broad’ and ‘narrow’ claims for a particular invention occurs rather rarely. With regard to functionality most inventions have a functional aspect in that invention rarely resides in the choice of a specific component or integer. Thus you will tend to have in your mental picture the introduction of resilience in a particular part of a machine rather than the provision of a metal helical spring, or the maintenance of a certain degree of alkalinity rather than the addition of a specific chemical.

A very convenient form of claim wording has a recitation of the integers of your mental picture together with a statement explaining how the integers interact. This statement of interaction is often called a functional statement but one must beware of functional statements that are mere speculative statements of desired results and reveal only lack of proper analysis and consideration.

Turning to ‘peripheral’ as applied to claim drafting, according to my understanding the proposition is that as the purpose of a claim is solely to define the outer limits of a monopoly rather than to identify an invention, all that is needed is to identify and eliminate the inessential How to Pass P3 • 2010

93

8. Claim drafting – the British tradition features from a constructional embodiment. This seems rather a negative approach and one dealt with by Mr Micklethwait in the following words: Some people consider that a satisfactory way of drafting a claim is to write down a list of integers appearing in the specific construction designed by the inventor and then to cross out those features which are not essential. To be content with a claim so drafted is in my view very shoddy drafting. If in addition one goes to scrutinise the integers remaining, alter and reword them as necessary, and perhaps add one or two others until the final product is quite unrecognizable the result may be a perfectly good claim. My own view is that this is an indirect way of reaching one’s goal and one can develop a more direct method by going to first principles.

With regard to the so-called ‘central’ style I had thought that that was the one adopted by me but contemporary usage has ascribed a pejorative sense to characterise a claim that is a slightly generalised description of an embodiment with a consequent appeal to the mercy of any Court which might interpret the patent. In fact the view has been expressed that certain decisions of the Courts are rendering the skills of claim drafting unnecessary. I do not feel that the pyrrhic victories of Catnic5 or even Barking Brassware v Allied Ironfounders6 justify this point of view.

Although it is perhaps unfair to use hindsight, I believe it reasonable to say that in each of the two cases a claim could have been drafted which would have achieved a successful result without the expensive controversy. It is, in my view, a mistake to emulate claims which have narrowly and expensively succeeded in the Courts; rather our function is to prepare claims which will protect our clients’ interests in a less public way.

In passing I have heard it said that the relative decline in numbers of patent cases reported at the expense of copyright and other intellectual property matter indicates a decline in the importance of patents in industry. I do not accept this proposition. Cream is not the only substance which floats to become visible on the surface and a properly drafted patent specification with good claims and relating to a genuine invention seldom needs to be considered by a Court to achieve its purpose, be that to restrain competition or to attract licence royalties.

May I deal briefly with sub-claims, and state that in my view these should be arrived at in a rather similar but perhaps not so exhaustive manner as the main claim or claims. That is to say we should produce a mental picture of the preferred but optional features of the invention and express them in claim wordings as before. One should be wary, however, of introducing features into a sub-claim to cover indecision as to whether these features should really be incorporated into the main claim. There is the implication that the expression of a feature as preferred in a subclaim is a statement that the invention can function without that feature and it may be safer in the rare case of real doubt to express that feature as a statement in the body of the specification rather than as a claim. Each and every feature supporting a sub-claim should, in my estimation, introduce some minor but definitely advantageous feature and I do not favour a list of all conceivable preferred constructional variants.

How can the skills of claim drafting be acquired? The traditional training route of dealing with Examiner’s objections forces one to consider claims prepared by others and to see to what extent these claims discharge their functions. The reading of reported cases is also extremely 94

The Chartered Institute of Patent Attorneys

8. Claim drafting – the British tradition helpful as the Courts are our ultimate audience and more importantly the patent specifications which we prepare will be read by others in the context of decided cases. Ultimately however, supervised practice is the only route to success and here I stress the word ‘supervised’. One does not become experienced simply by doing a thing for a long time. The trainee must receive and indeed seek out criticism, even if this runs contrary to his personal inclination which may be to practise solo as soon as possible. However I am quite confident that claim drafting is only really effectively learned by putting best efforts to a careful and critical principal.7 I may say that this exercise will not only benefit the pupil but ensure that your principal maintains his own high standards.

The imparting of a skill to a pupil from a teacher is much more than the mere transfer of information. A skill such as drafting a claim involves the exercise of unconscious as well as conscious mental operations. A pupil learns partly by imitation, partly by listening and partly by the interaction of minds in the mysterious process of the dialectic. Thus progress will not be a steady advance from one defined objective to another but more in the nature of an organic growth. Not uncommonly the arrival at a good professional standard of claim drafting seems to be quite sudden; one day after months, or even years of endeavour the pupil finds that he can analyse disclosure, produce the all important synthesis which is at the heart of a well drafted claim and express this synthesis in clear language. When this does happen there is rare satisfaction for both teacher and pupil.

References 1. Trans. CIPA, LXV (1946-47), Page 72, reprinted above.

2. [Editor’s note: A good test for whether you have understood an inventor’s description or the disclosure of a reference is whether you can explain it orally to a colleague without notes or reference to the original, possibly some days after you have studied it. The work needed to fully understand disclosures and documents is easily and frequently underestimated.]

3. [Editor’s note: see the paper on Empirical Research Inventions, page 249, where this theme is further developed without in any way impugning the correctness of the opinions expressed here.]

4. [Editor’s note: see the paper on Functional Claims at page 135, which explains that to support a US patent claim with an element in means-plus-function or step-plus-function format, not only is systematic consideration of alternatives required but also specific mention in the written description of all alternatives which it is intended to cover, in order to comply with the ‘public notice’ requirement.]

5.

[1981] FSR 60, [1982] RPC 183.

6.

[1962] RPC 210.

7. [Editor’s note: The benefits of discussion do not end with qualification. At least in the case of a newly drafted specification covering a potentially important invention, it should be routine to discuss the claim with one or more colleagues. They can read the claim without the original draftsman’s assumptions and with a different knowledge base, and are therefore in a strong position to suggest improvements. Patent attorneys work alone for much of the time, and the value of collaboration and teamwork in our profession is underestimated.]

How to Pass P3 • 2010

95

APPENDIX: Paper P3 2007 The following paper is available from the JEB website at: http://www.jointexaminationboard.org.uk/pastpapers.php.

We have reproduced the paper here to accompany Chapter 7 of this book.

However, when working through Chapter 7 you may find it easier to print off a separate copy from the JEB website.

How to Pass P3 • 2010

97

Appendix – Paper P3 2007

98

The Chartered Institute of Patent Attorneys

Appendix – Paper P3 2007

How to Pass P3 • 2010

99

Appendix – Paper P3 2007

100

The Chartered Institute of Patent Attorneys

Appendix – Paper P3 2007

How to Pass P3 • 2010

101

Appendix – Paper P3 2007

102

The Chartered Institute of Patent Attorneys