To get acquainted with the patent claim drafting is a difficult task and the general trend prevailing during the examination process and the court’s observation has to be analyzed and understood before one start writing claims for a patent.

Claims must be read or construed in the light of, or in connection with claim language, the specifications and the prosecution history.

The meaning of the claims in issue must be determined by a study of all relevant patent documents. The relevant patent documents include the intrinsic evidence of claim language, specification and prosecution history.

Claim Language: It is that language that the patentee chose to use to make a distinct claim over the subject matter of the invention. A claim is never a specification embodiment, but a separate body which extends the scope of protection. The ordinary language of the claims can be attributed to that of a person skilled in relevant art. Hence a claim language must disclose a single and clear definition of claim scope,

Specification: It is ideal for the presiding officers to interpret the claims to consult the specifications and prosecution history to understand the meaning of the terms to one of skill in the art at the time of invention. The proper examination of the claims, the specification, and the prosecution history would serve as the tools for the proper interpretation of the claims.

Specification as such can be best treated as a dictionary as it provides the explicit and implicit meanings of claim terms and it is the best guide to the meaning of a disputed term. From popular cases like Grain Processing Corp. v. American Maize-Products Co. and Teledyne McCormick Selph v. U. S., it is evidently clear that patent claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention. The patent specifications must be looked to in the interpretive process of ascertaining the scope of the claimed invention. (U.S.–Interdent Corp. v. U. S.(1976)),

Prosecution History: Prosecution history can provide clarification regarding the patentee’s understanding of the invention and can be of primary significance in construing the scope and meaning of claim terms. The prior art contains express definitions of claim terms that are considered highly pertinent during prosecution, these definitions may override the ordinary meaning of claim language.

Apart from above some external factors such as all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and leaned treatises. This evidence may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history. In case the dependence on the evidences like claim language, specification, prosecution history fails to tell the meaning it would be ideal to go for the external evidences like expert testimony, inventor testimony, prior art mentioned in the records, publication and speeches to provide the meaning. The other external evidences like admissions in discovery responses, internal documents and scientific publications. Technical treatises and dictionaries can not be categorized as patent documents but for better understanding they used to be consulted. Still their significance is not enough to override the evidences like claim language, specification and prosecution history to interpret a claim. So far as patent specification acts as a dictionary it defines terms used in the claims and as stated above the specification is the best guide to the meaning of a disputed term.

A clear message is conveyed to the inventors to make their claim more unambiguous, plain speaking, meant to protect the scope of their invention at any cost. Hence precautions have to be taken by them while they write specifications and claims. They have to be aware of the principles taken into account while construing the claim language which otherwise may damage the chances for a prospective patent.

Meerza Zaheer, LLB(US), Attorney at Law of www.pmgip.com

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