Quincy's IP world

6的鼓 0站台

  Patent English and Patent Claim Drafting: An Idea of Teaching

Abstract

To promoteinnovation and honor inventors, a country can have a patent system to grant toinventors an exclusive right to stop others from exploiting their inventions. Thepatent system requires an inventor to submit an application including adocument that describes the invention. Such the document has a section ofclaims. A claim defines the protection scope of an invention. Products outsidethe scope might be free from such an exclusive right. So, carefully drafting aclaim is very important. Particularly, claim drafting in English is moreimportant if an inventor wants to file applications in the United States. Recently,“Patent English” has been treated as a necessary skill of a patent attorney becauseit is one subject in the Taiwan patent bar exam. But, patent claim drafting isnot considered part of Patent English. Indeed, patent claim drafting should becovered by Patent English because even a Taiwan patent attorney needs toprepare a document for patent filing in the States. To draft a proper claimbased on the American patent law, a drafter needs to acquire basic knowledgeabout the patent case law that was made by the United States Court of Appealsfor the Federal Circuit. For a Taiwanese student to learn such a claim draftingskill, a special curriculum is discussed in this paper. First, the legal theoriessurrounding claims and patent protection are elaborated. Second, several courtdecisions regarding claim drafting are analyzed for purposes of giving examplesof word choices. Thirdly, several teaching tips are suggested, and they arebased on an idea of case study methodology. For instance, use a court decision relatedto certain technical field to point out the importance of word choices in thatfield. For another example, make students think about whether the courtdecision would have gone differently if different wording was applied. Inconclusion, an interactive case study is the best way of teaching paten claimdrafting.

Keywords:patent law, claim, claim drafting, Patent English

Presented at 第二十九中民英文教研究研 https://sites.google.com/a/pccu.edu.tw/29eltconference/news