Tips on Patent Drafting in Indonesia (5) - Mechanic

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In IP attorney training, mechanic patent drafting was regarded quite easy to follow as its nature that anybody may quickly picture any invention with visual objects. In contrast, if we depict another abstract invention (for general people), like chemical compound, this will require a basic understanding of that subject matter. In light of those considerations, DGIP (a patent office) arranged patent drafting training in a way that mechanic patent drafting is the first lecture of patent drafting series.

As you know, a patent protection regime is not protecting your physical object, but the expressed idea of an invention putted in writing, so called, a patent claim, a heart of patent protection. In mechanic invention, it is often understood that likely no invention suddenly arises without a predecessor nowadays. Thus, a claim drafting is preferably incorporated predecessor inventions, or follow-up invention, either a product or a process-based invention.

Two-part forms, then, is considered a good practice among many examiners (in Indonesia). According to patent examiners, two-part form allows identifying or comprehending the prior art of an examined invention. You may still employ a single claim, but it makes them difficult to spot the prior art underneath. I reiterate that two-part form consists of a preamble, transition phase, and a body.

In patent documents, kindly ensure that title of your invention is correspond with your claim in order to speed up your patent application process. To begin with, you can draft your claims, then followed by writing down a complete description section, a short description, a background, a picture description, and abstract.

A patent claim shall correctly explore the technical feature. If your invention is a product, then its features include feature of that product, not a process of making that product, vice versa. If you mistakenly drafting your claim, examiners will consider that claims are not consistent. Your claim must also not too much explaining the function of your inventions as they are not a technical feature, or it is regarded as non-physical features of an invention. For example,degree of a light (adj) or weight; small or big of a thing are not features, so it must be rejected in patent application process due to unclear invention.

A mechanic-based invention, as I said, is easily pictured in our mind. So, if you help an inventor this kind of invention, it is helpful to draw a picture of an invention, and then, make annotation numbers part-by-part of that invention.

Conjunction words can be employed in your claims but use it as general people (or examiners) used, do not employ common-used legal conjunctions in here. The words consisting of or comprising of, however, may be used in different context: like between meliputi and terdiri dari, respectively. If you used phrases, like which is characterized (yang dicirikan), meaning that following that phrases are your invention.

Examiners are well trained of course in identifying what are a head word of a claim (semesta pencarian). If a claim refers to another claim, it is indeed a dependent claim. Subject matter of your invention is not emphasized as in chemistry patent.

Searching of comparative documents, examiners usually use Google Paten, PDKI Indonesia, USPTO, ESPACENET EROPA, JPO, and WIPO Patentscope. You may elaborate your searching related your invention and writing down your finding in a description section. A supporting description of a claim is must be purported. If your claim ABC, then your description must explain about ABC.

Your claims also cannot go beyond your scope of invention. Sometimes, applicant provide many pictures of their inventions, but these are not elaborated in their description. Examiners read your claim as a whole, not part-by-part of your claim, so then make it solid/coherent. Any term you used must be consistent, if not then rejected by examiners.

In examination process, examiners may choose to employ a full or a normal examination. A full examination is when your invention is hard to find the relevant comparative documents.

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