Tips on Patent Drafting in Indonesia (3) - Biology

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Biological process is not patent able object, but non-biological process is, along with, specific exception: microorganism (unicellular, virus, or microscopic living organism). in other work, no patent for animals, but its genetic manipulation process underneath can be patented.

if in pharmacy patent application, examiners likely allow “product by process” patent (See the pharmacy patent drafting tips). However, in biology based patent applications, the examiners are going to apply restrictive examinations for that invention. For “product by process” claims, they will scrutiny “double” inventive steps in sense that: your claimed process alone will be examined both its novelty and inventive steps, apart from regular patentability examination of your patent application.

In patent claims, many applicants employ the word “preferably” or any similar expression which is common in aboard. In fact, that word cannot limit the scope of your invention or being differentiator, and patent examiners will mostly consider your independent claims.

Common mistake in drafting a claim, applicant still employs foreign language in his description. The examiners do not allow that, so you must make any (for example) English language in Bahasa (all parts of patent documents). Another mistake is when your title mention about a process, but your claims turnout elaborating a composition. They will of course reject your claims, or requires you to make amendment.

Applicants also keen on put on photos of their inventions where such photos is not a technical photo, then, examiners will give back to you demanding the correction. In fact, a technical picture is uncommon in biological patent application, so consider to remove it.

In drafting your claims, be sure that drafted claims are not too much limiting your scope of inventions, plus considering several aspects, inter alia, drafting the first claim in broader manner, using common terms, in Bahasa, clear and concise being delivered, and not depicting a table. If you have a process diagram, this is good to be exhibited also.

Patent documents are usually composed in pyramid writing style: from searching of related inventions, preparing picture(s), drafting claims, short description, complete description, inventive background, and short description of pictures. A preferable style is also two-part forms as this will signify your improvisation or inventive steps. For example, for fermentation bacteria related invention (if any), you may claim it on your dependent claims, instead of independent claims.

Again, any claim you made must be supported in your descriptions, and in your claims use transition phases (e.g. yang terdiri dariyang mencakup, yang meliputi). In pharmacy patent application, a common word is a composition, but in biology is formula. Plus, remember that a method is a broader word than a process.

Your patent descriptions (e.g. title) need to be specific, if your claim a food for animal, kindly mention what kind of animals the food for. If not, the examiners will mail that your claim is not supported by description section.

In background of your invention, you also need to elaborate technical backgrounds, like technical benefits, problems, any excellence, and concept. While in your complete description section explains more about your best practice, how to use, novelty, inventive steps, industrial application, and ensure that your invention can be carried out.

Lastly, you need to ensure that your description is fully complete in order to accommodate any amendment during correspondence with the examiners. For example, your argue about fastener instruments, then mentioning also about what actually are they (specify it). Kindly ensure any claim supported by the predecessor description.

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