The art of claim drafting stands as a pivotal skill for securing a valuable patent. Claim drafting, or the process of accurately describing an invention in legal terms, is a crucial step in the patent application process. A well-crafted claim can make the difference between a robust patent and a weak one. At its core, this requires a delicate balance of precision and breadth. The goal is to describe the invention clearly and comprehensively while avoiding language that is too narrow or overly broad.

However, inventors and companies should be aware that claim drafting requirements may vary significantly across jurisdictions. Understanding these differences is essential for ensuring that a patent application meets the specific standards of each patent office.

In China, for instance, although the patent systems of different countries in the Asia-Pacific region vary, the requirements for determining the protection scope of claims and requirements on the novelty, inventive step, clarity and other substantive aspects of claims are basically the same. A well-drafted claims set with an appropriate scope, reasonable layout, clear technical schemes, and sufficient support from the specification, will achieve good patent protection effects in various countries.

Specifically, China’s examination on going-beyond and lack-of-support issues is very strict. The technical schemes defined by a claim should preferably be reflected in the specification to avoid related issues when making amendments or filing divisional applications. In addition, if an independent claim is drafted in “two-part” form, it is necessary to avoid placing the technical features that distinguish the invention from prior art before the wording “characterized by/characterized in that”.

Indonesia, meanwhile, has the tendency to refer to the European Patent Office (EPO) guidelines in examining the patentability of an invention, including claim drafting. Therefore, the type or style of claim drafting which are allowed by the EPO is generally allowed by the Indonesian Patent Office (IPO) as well. For example, a method of examination, treatment, medication and/or surgery applicable to human and/or animals is a non-patentable subject matter.

However, similar to the EPO, Indonesia would still allow patenting a substance for use as a medicament with EPC 2000 formatting style in drafting the claim. The key to claim drafting in Indonesia are that the claim must always be supported by the original disclosure of the invention, and no new subject matter was added when amending the claims.

The Philippines, through its Intellectual Property Code (IP Code), expressly lists which inventions are non-patentable in its jurisdiction, namely:

• Discoveries, scientific theories and mathematical methods, and in the case of drugs and medicines, the mere discovery of a new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance, or the mere discovery of any new property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant.
• Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers.
• Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.
• Plant varieties or animal breeds or essentially biological processes for the production of plants or animals.
• Aesthetic creations.
• Anything which is contrary to public order or morality.

Jose Eduardo Genilo, a partner at ACCRALaw in Manila said: “As such, any claim whose subject matter would fall under any of the above enumeration would always be refused in the Philippines. Even if the claimed matter meets the substantive requirements for patentability.”

He added: “The patentability of programs for computers, for example, are treated differently by each country. One must be aware of each country’s requirements and limits with respect to programs for computers to maximize patent protection. Simply put, as long as the claims of a Philippine patent application avoid any of the non-patentable subject matter, it should stand a better chance of being granted, provided it also meets the substantive requirements for patentability.”

Avoiding pitfalls

Xia Zheng, a patent attorney and founder of AFD China Intellectual Property Law Office in Beijing, said that in practice, her firm has encountered some patent applications in which non-indispensable technical features are defined in an independent claim, or all features in the embodiments are directly written into an independent claim without generalizing the inventive point, or the scope of a claim is overly broad, or the inventive points listed in the specification are not written into the claims.

“These may all pose potential risks to the grant of a patent application or the stability of a patent, and some may cause difficulties in collecting infringement evidence and/or making infringement comparison in subsequent enforcement, making it difficult in enforcement,” she said.

She added that when drafting claims, it is necessary to design a reasonable layout, considering not only an appropriate scope of protection but also possible invalidation and infringements that may be encountered in the future.

“For example, when drafting claims, one should first understand the situation of prior art, determine the inventive points of its patent application, and consider possible infringements that may be encountered after the claimed schemes are published,” she said.

“Then one should identify the key points (core ideas) of the invention and various embodiments that may be expanded from it. The main inventive points and secondary inventive points should be clearly separated and defined in independent claims and dependent claims respectively, and various possible embodiments should be defined in groups in the claims.”

While independent claims should define a relatively broad scope of protection (avoiding defining non-indispensable features in independent claims, generalizing upper-level concepts as much as possible, and avoiding writing the claims as embodiments themselves), dependent claims should further define other inventive points or further limit the inventive points defined in independent claims.

“In this way, on the one hand, the claims can properly cover infringing products; on the other hand, it can also provide the possibility of further limiting the claims in subsequent possible invalidation procedures,” she said.

She added: “In addition, the object to be protected should be reasonably determined from the perspective of enforcement. For example, when determining the layout of claims, one may first determine the smallest unit that can be independently manufactured and sold, and then further expand from the smallest unit to the final product, manufacturing method, etc., such that the layout of the claims can cover more infringing entities. For another example, for schemes involving multi-party interactions, the claims should be written to describe one participant as much as possible (describing a unilateral equipment in the interaction as the executing subject), so as not to make the claims describe multiple participants, which may lead to difficulties in future enforcement.”

This is echoed by Risti Wulansari, a co-founder of K & K Advocates in Jakarta, who said that the most common pitfalls that inventors and companies would encounter in the process of claim drafting is determining the ‘ideal’ scope of claims.

“It is a tricky process, because the scope of the claim plays a pivot role in defining the invention,” she said. “Sometimes, when it is too broad, it may lead to lack of clarity on the invention. On the other hand, when the scope is too narrow, it could limit the exploration of the invention’s actual patentability.

Therefore, inventors need to undertake a thorough pre-patentability search to help them specify parts of the invention that are a potential scope of the invention to be protected as a patent.”

She added: “Additionally, since the claim must always be supported by the original disclosure of the invention, it is important for inventors and companies to ensure that all the essential part of the invented technology is included in the description. Thus, if the claims need to be amended at the later stage, inventors and companies would still have room of exploration therein.”

In the Philippines, some foreign patent applications filed are often submitted without considering whether the subject matter is allowable. “This is particularly common in patents involving computer programs,” said Genilo. “While some jurisdictions may recognize computer programs per se as protectable by patents to a certain degree, they are absolutely non-patentable in the Philippines. However, a claim directed to a computer program may still be patentable if it is drafted in a manner wherein the program instructions cooperatively work with a programmable device. In short, it cannot be a computer program or software by itself; it must exist and work with hardware. This would categorize the claim under computer-implemented inventions, which are allowable under Philippine patent law. This pitfall is generally avoidable if the applicant conducts thorough research about the specifics of Philippine patent law before filing their application in this jurisdiction.”

Another is the formal requirements with respect to claim drafting. In the Philippines, for example, multiple dependent claims cannot refer back to multiple dependent claims. Such type of claims is allowed in other countries.

Anticipating challenges

With the growing influence of case law on patent interpretation in the Asia-Pacific region, how can claim drafting be tailored to anticipate potential challenges from competitors who might try to exploit ambiguities in the claim language?

Zheng said, “It is necessary to study the patent interpretation involved in judicial interpretations and the practice of applying laws and judicial interpretations by the higher courts and the Supreme Court in typical cases and try to avoid using ambiguous languages in the drafting of claims.”

“The terms in the claims should be clear, logical, and unambiguous, ensuring that a person skilled in the art can accurately understand them for enablement. If any terms in the claims do not have a clear definition in the art or are different from their usual meanings, such terms should be defined in the specification. In drafting claims, It is important to sort out the technical schemes between independent claims and dependent claims, as well as between dependent claims, and pay attention to dependencies of the claims to avoid conflicts between technical schemes caused by improper dependencies,” she said.

Zheng noted that in addition, the specification should also provide necessary descriptions for each feature in the claims. “Especially for the features defined by function, the specification should describe how they can be implemented specifically. Moreover, the specification should also provide detailed descriptions of the beneficial technical effects achieved by the corresponding features,” she said.

Genilo added, “It is a recognized principle of claim interpretation that the terms used are given their plain meaning unless such meaning conflicts with the specification. Therefore, ambiguities in the claim language are simply addressed by employing clear and precise terminology. Using overly broad or vague expressions in the claims only increases the risk of easy invalidation by prior art, whether on the grounds of novelty or inventive step. However, above all else, the safest approach to prevent misinterpretation of the claims is to ensure they are strongly supported by the disclosure in the specification. This leaves no doubt as to how the terms in the claims should be interpreted.”

When it comes to the use of artificial intelligence, all three lawyers believe that while developments in the field of AI might appear promising, especially for patent drafting, at the end of the day, these are just “tools” whose effectiveness is just as limited as the actual capabilities of its user. Wulansari said that there is yet an AI tool that accommodates claim drafting in the Bahasa Indonesia language. “Therefore, we believe the effectiveness of using AI tools in claim drafting in Indonesia is currently unforeseeable.  Direct involvement of inventors in the claim drafting still plays an essential role, especially when it comes to accuracy of reflecting the meaning of the relevant invention,” she said.

In drafting claims

In drafting claims, Zheng said that it is important to remember that it should be ensured that the claims belong to patentable subject matters specified in the patent law of each jurisdiction. “Under this premise, the claims should accurately reflect the technical schemes of the product or method invention, which makes such claims commercially attractive. Second, the description of the technical schemes in the claims should be clear, use standard terminology in a reasonable order and with appropriate generalization, meet the relevant legal requirements for drafting claims, and make the technical schemes clear and easy to read,” she said.

Moreover, for drafting a set of claims with an appropriate scope of protection, the drafting of the specification should also be given equal attention. “It is recommended to provide specific descriptions of technical parameters and technical effects in the specification, which will be more favorable for arguing on the inventiveness of the claims,” she said.

She added: “In addition, based on our practice, if an accused infringing technical scheme belongs to a technical scheme explicitly excluded in the specification or belongs to a technical scheme in the background technology, the court will not support the right holder’s claim of equivalent infringement. Therefore, attention should also be paid to the drafting of the specification.”

Wulansari added: “The process of claim drafting requires thorough research and strategies that would hopefully be beneficial to the applicants, or later, the patent holder. Although the inventor is the ‘mastermind’ of the invention, it is always our recommendation for the inventors or companies to seek professional assistance from a licensed IP consultant when it comes to claim drafting. A seasoned IP consultant is able to offer a different yet enriched perspective and strategies in claim drafting and can help to navigate the right direction in defining the scope of invention.”

Genilo said: “Patent law is essentially a balancing act of the legal, technical and commercial aspects of an invention.

To draft claims that are legally sound, commercially attractive, yet easy for judges and juries to understand, it is advisable that the claims are drafted in such a way that it focuses on clearly defining the invention’s novel and inventive features while highlighting how it provides a solution to a technical problem.

The claims should be logically structured. With the independent claims immediately disclosing the essential features of the invention followed by the dependent claims adding further limitations or embodiments. This approach would be beneficial in enforcing the patent. Lastly, it is crucial to use clear and precise language and ensure that the claims are strongly supported by the patent specification.”