So, what problems should be paid attention to in the practice of writing a claim?
1. The claim shall be based on the specification.
For the sake of confidentiality and protection, applicants are often reluctant to disclose their technical solutions too much, hoping that the scope of protection of the claims is as wide as possible. This will cause the claim to be unsupported by the specification, that is, the claim will not be supported by the specification, which will lead to the rejection of the patent application because it does not meet the provisions of Article 26, paragraph 4, of the Patent Law.
In application practice, the stipulation that the claim should be based on the specification can be analyzed from the following three aspects:
First, the technical scheme protected by each claim in the claims should be completely recorded in the specification, that is, every technical feature in the claims should be recorded in the specification (except for some features belonging to the known technology). At the same time, the manual should also clearly explain various technical features and the relationship between their work and operation modes. We should pay special attention to this when applying for mechanical invention. It is not enough to state all the mechanical parts, but also to describe them clearly.
Second, in order to obtain the widest possible scope of protection, claims, especially independent claims, are generally a summary of one or more specific technical solutions recorded in the specification. Usually, this kind of hypergeneralization needs the support of enough embodiments to be allowed. For example, if the specification records the connection modes such as screwing, welding and riveting, it can be summarized as "positioning connection" in the claim, so the protection scope is not limited to these connection modes disclosed in the specification. However, if only the threaded connection is disclosed in the embodiment of the specification, it cannot be summarized by the "positioning connection" in the claim.
It should be noted here that when the superordinate concept is used in the claims, the content summarized by the superordinate concept should not be juxtaposed with the content of the subordinate concept. For example, the permanent core mould of hollow floor is made of hard thin-walled pipe or steel pipe, which is wrong. Because hard thin-walled pipe is the upper concept of steel pipe.
Generally speaking, the more specific embodiments are recorded in the specification, the higher the general concept is allowed. That is to say, the more specific embodiments recorded in the specification, the wider the scope of protection of the claims. In the applications of the United States and Japan, the applicants often use more than a dozen embodiments to support the summarized claims. Of course, it needs to be explained here that not all generalized claims need to be supported by multiple embodiments. For claims related to a whole class of products or machinery, if there is good support in the specification and there is no reason to doubt that the invention or utility model cannot be implemented within the scope defined by the claim, even if the scope of the claim is very wide, it is allowed. For example, in the patent application entitled "Construction method of hollow floor slab", the technical feature of the independent claim is that the hard thin-walled pipe is fixed in concrete through positioning pieces, but when implementing this specification, only the positioning method of binding the thin-walled parts in concrete with N-shaped iron wires is disclosed, but those skilled in the art can think that many conventional positioning pieces can be used to position the hard thin-walled pipe in concrete without creative labor, so this generalization is allowed.
When the embodiment disclosed in the specification is not enough to support the upper concept or there is no suitable upper concept, the claim can be written in the form of parallel technical scheme. However, it should be noted that the description of the parallel technical scheme should be clear. For example, there should be no parallel selection generalization term "hard thin-walled pipe for hollow floor is made of cement fiber pipe, steel pipe, plastic pipe or other similar materials", in which the description of "other similar materials" is unclear and cannot be juxtaposed with specific objects or methods.
Third, technical features should be used to express the complete technical scheme in the claim, and the adopted technical features should be specific features with technical meaning. Specific features here refer to specific structural features or method steps. When a technical feature cannot be defined by structural features, or is not as clear as that defined by function or effect features, and the function or effect can be directly and clearly verified by experiments or operations fully specified in the specification, the invention is often defined by function or effect features. However, it is easy to appear that the restriction on the features of function or effect may lead to the generalization of other features or methods not recorded in the specification, so that the claims are not limited in the specification. For example, an invention application named "A mechanical toy animal" claims 1 as follows: "A mechanical toy animal consists of a power mechanism, a transmission structure and a movement mechanism, and is characterized by adding a set of structures for controlling the toy animal to squat, sit, lie, stand and walk." Obviously, the technical features of the characteristic part of the claim are defined by functions, but the specification only discloses specific embodiments. It is difficult for the technicians in this field to find other different control mechanisms to control the squatting, sitting, lying, standing and walking of toy animals without creative work, so such functional restrictions are not allowed.
Article 33 of the Patent Law allows the applicant to add part or all of the technical scheme to the specification at the application stage when it has been disclosed in the original published claim but not recorded in the specification. However, this does not mean that the claim is substantially supported by the specification. Whether the claim is supported by the specification depends on whether the technical personnel in the field can directly obtain or summarize the technical scheme required by the claim from the technical content recorded in the specification.
2. The independent claim shall record the necessary technical features.
Article 2 1 of the detailed rules for implementation stipulates that "the independent claim shall reflect the technical scheme of the invention or utility model as a whole and record the necessary technical features for solving technical problems." This provision has two meanings. First, the independent claim must be a complete technical scheme, which should include all the necessary technical features that constitute the technical scheme; Second, the technical features recorded in the independent claim are considered as necessary technical features.
Some applicants or agents did not have a good understanding of the invention when writing the claims, and only part of the technical scheme of the invention or utility model was written in the independent claim, while the other part was written in several subordinate claims. The independent claim thus written does not reflect the technical scheme of the invention or utility model as a whole and does not meet the requirements. For example, the invention named "motorcycle frame" has independent claim "a motorcycle frame in which a rear bumper arranged between the motorcycle frame and a power unit is mounted on a covered frame, and is characterized in that the motorcycle frame includes a main frame with the upper end of the rear bumper mounted at the rear end and a sub-frame connected to the rear end of the main frame and supporting a fuel tank." . Its subordinate claim is "the motorcycle frame according to claim 1, which is characterized in that the side handle is integrally formed on the subframe, and the rear handle is integrally formed on the subframe." The invention has two purposes, one is to improve the assembly efficiency through the front and rear division of the frame, and the other is to integrally form the side handle, the rear handle and the sub-frame respectively, thereby reducing the number of parts. Therefore, the independent claim does not write all technical features constituting the technical scheme of the present invention into the independent claim.
The necessary technical feature of this technical scheme is for the purpose of invention. Generally speaking, although the technical features recorded in the independent claims can constitute a complete technical solution, the technical solution can not completely or optimally achieve the inventive purpose of this application.
In addition, the writer should not arbitrarily add technical features in order to achieve the goal of not lacking necessary technical features, and should accurately judge the necessity on the basis of fully understanding the technical scheme. Because the more technical features, the smaller the scope of protection.
3. Correctly handle the relationship between independent claims and dependent claims.
In the invalid procedure, it is often encountered that once the original independent claim cannot be established, the applicant cannot effectively modify the patent right because the original claim does not write the subordinate claim or the subordinate claim is poorly written. This kind of situation is common in domestic application and deserves great attention.
In order to make the independent claim have as large a protection scope as possible, and at the same time, there is room for retreat when this large protection scope is threatened or destroyed, the relationship between the independent claim and the dependent claim is usually arranged in a pagoda-like manner.
As an independent claim, the technical scheme of the invention or utility model shall be reflected as a whole, and the necessary technical features for solving technical problems shall be recorded. It should be pointed out here that the applicant always wants to use as few necessary technical features as possible in the independent claim to obtain as large a protection scope as possible. Therefore, for the dependent claim, the difference between the technical scheme of this application and the existing technology should be highlighted by adding other technical features or further limiting some technical features of the cited claim, so as to make it invalid.
In the practice of writing patent application documents, the following mistakes often occur:
(1) The independent claim contains some unnecessary technical features, which makes the protection scope of the independent claim too narrow;
(2) The independent claim is too broad to be completely covered by the existing technology;
(3) It is considered that the more the number of dependent claims, the more adequate the protection of the invention or utility model.
The first two points are that the applicant ignores the role of the dependent claims, and the second point is that the applicant overemphasizes the role of the dependent claims. These are all misunderstandings in writing patent application documents, so it is very important to arrange the relationship between independent claims and dependent claims reasonably and control the number of dependent claims reasonably.
4. To correctly understand the provisions of Article 20 of the Detailed Rules for the Implementation, the patent claim shall clearly and concisely state the scope of protection requested.
Unclear writing of claims is mainly reflected in the following points:
(1) The claim type is not clear.
In general, the product claim should define the object to be protected by the structural characteristics of the product, while the method claim should be defined by the technical characteristics such as the steps, processes, operating conditions or processes of the method. In practice, we will often come into contact with such applications. For example, what the claim protects is an external wall insulation technology, which includes both the structural characteristics of external wall insulation materials and the construction technology of external wall insulation. I don't know whether the invention applied for is a construction method of protecting external thermal insulation materials or external wall thermal insulation.
(2) The product claim only lists the names of the components, without giving the specific structure, relative position and interaction.
This situation is very common in mechanical application documents. For example, claim 1 claims to protect a spliced composite floor with mutually spliced slats, which is characterized in that the slats are provided with grooves and protrusions.
Obviously, the claim is unclear, and the positions of the grooves and protrusions on the slats and the connection relationship between them are not given. The correct description should be:
A spliced combined floor consists of slats spliced with each other, and is characterized in that one side of the slats is provided with a groove along the length direction, and the other side adjacent to the groove is provided with a protrusion embedded with the groove.
In the case that the claims in the electric field adopt functional components as technical features, these functional definitions should reflect the interaction relationship between components and other components, such as signal transmission relationship, otherwise the claims are unclear.
(3) Only rely on reference marks to further define technical features.
This is also a common problem. In fact, the reference signs after the technical terms in the claims have no restrictive effect on the technical terms.
The function of reference signs in the claims is only to help the public understand the contents of the claims, and its meaning is not limited to the specific structure of the drawings referred to by reference signs, because the function of the drawings is to supplement the description of the text part of the specification with graphics, so that people can intuitively and vividly understand every technical feature of the invention or utility model. Usually, the drawings and specifications correspond to each other, and the specific realization is described by graphics. Therefore, if the scope of protection of the claims is limited according to the understanding of the specific structure of the drawings referred to by reference numbers, for example, in some applications, it is difficult to describe some special-shaped structures in words, so the applicant often uses the term "component (1)", which is actually incorrect and should be described in specific words.
(4) The mathematical formula or chemical structural formula in the claim does not explain the meaning of the parameter or give the value range of the parameter.
In some applications, especially in the fields of chemistry and electricity, the description only explains the meaning or range of values represented by parameters in mathematical formulas or chemical structural formulas, but not in the claims. The applicant can understand this. Since it has been stated in the specification, even if it is not stated in the claim, others should understand the scope of protection of the claim. Actually, this is not right. If the claims do not explain these parameters or limit the numerical range,
(5) The juxtaposition of specific scheme and preferred scheme in the same claim.
For example, the claimed compound pesticide is characterized by being composed of phoxim 10-25%, preferably 10- 15%, octachlorodipropyl ether 10-25%, preferably 20-25%, and polyoxyethylene fatty alcohol ether 3.
This way of writing leads to two or even more protection scopes of the same claim, which leads to unclear protection scope, so the preferred scheme should be written in the dependent claim.