Patent Drafting: Making Inventions as Concepts

[@GOLDVIOLINbowofdeath]

I just started listening to this series and am in USA and I am impressed. Not a lawyer but am inventor and have spent many dozens of hours listening to patent webinars, reading books on patents, watching dozens of University of Pennsylvania law school lectures on patent law, etc. and I am impressed with this professor!

[@LexCampus]

Thank you for your encouraging words.

[@1stPrinciples455]

I like to share a common problem faced by newbies drafting the descriptions. It is about the Interpretation of a rule related to patent drawings : 37 C.F.R. 1.84 : (4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts. Question : 1. Is the View and Drawing mentioned referring to one angle of looking at one particular embodiment drawing or does it mean any and every view for all drawings , views of all embodiments within the detailed description? 1. Some have interpreted the rule to mean that exactly the same part of a particular embodiment must be referenced using exactly the same reference number within the description for that particular embodiment. So, different numbers can be used to reference the same part with some differences in form in different embodiments. For example, one number range per embodiment. And I can find such granted patents. 2. Others , which appears to be the majority, interpreted it to mean the same part must be referred to using exactly the same reference number and by View it means views across all embodiments. There are also such granted patents . Where the rule is creating confusion: 1. It uses the word drawing. What is drawing ? One drawing ? If one drawing, it can mean just one embodiment. Or does it mean every drawing? If the word DrawingS is used, it could mean views of all embodiments. 2. What is meant by a View? A view of one embodiment or views across all embodiments? 3. I see the problem originates from the fact that English allows for different interpretations no matter how clearly it is written. And the Best Practices supersede possible alternative literally valid interpretations. So it depends ultimately on the judge and then the federal judge. Why is there no clarity? What is the Best Practice?

[@LexCampus]

Thank you for sharing this.

[@1stPrinciples455]

Dear Expert Is there a rule covering how reference numbers need to be narrated in the detailed description? I mean, is there a rule to follow where when describing the invention, reference numbers being mentioned must be mentioned in ascending order only? For eg. Can we describe in this way : Car 100 comprises an engine 120 and a carriage 110. Or is it that we must write it this way : Car 100 comprises a carriage 110 and an engine 120? Must the numbers be mentioned in ascending order only?

[@LexCampus]

Looks like this is a query that emanates from the US practice. Am I right?

[@1stPrinciples455]

@@LexCampus i am a learner. Truth seeker😊

[@GOLDVIOLINbowofdeath]

This concept method is great! No one else I have watched or read mentions it but I am sure that is the way to go. Of course everything is limited to what the patent officer will allow in the real world so I want to see if that often eliminates concept claims during prosecution when claim is often narrowed to get patent approved for all but pioneer inventions. Is the prosecution communications documentation public information or does it only come to light during discovery in a lawsuit? Great examples given! Love this professor. Is he in England or India? Will subscribe!

[@LexCampus]

mark pope Thanks. The prosecution communications are public in India where I am based out of. I teach in IIT Madras. doms.iitm.ac.in/index.php/feroz-ali