The risk of giving ground in patent applications

By DPS Parmar, LexOrbis

Patent applicants should be meticulous in defining the scope of their applications. Patent examiners are vigilant in ensuring that such scope does not threaten prior art. Applicants should therefore ensure that the original application gives the widest legitimate scope to a patent claim.

If an applicant makes any subsequent application to narrow the scope of the original claim merely to satisfy a requirement of the Patent Act, 1970, or to meet an objection of prior art, he/she may be estopped from proceeding. There is a presumption that any application to narrow the scope of the claim merely to ensure patent eligibility reduces the scope of the original claim. The applicant must therefore give valid reasons for narrowing the scope of the application, otherwise it will be presumed that he/she is making the application merely to ensure that a patent is granted and he/she will be estopped.

DPS Parmar
Special counsel

Disclosure dedication rule: Where an applicant discloses but does not claim subject matter, or surrenders it during the application, it remains in the public domain. Under the doctrine of disclosure dedication the drafter is expected to draft claims that include readily known equivalents or disclosed alternatives. The function of patent claims is to alert competitors to the coverage of the claimed invention.

Curing drafting errors after patent grant: After a patent is granted there is little scope for curing defects. Courts will not interpret a patent in such a way as to cure errors in the drafting of the claims. If such interpretations were to be allowed they would hinder the ability of competitors to understand the scope of the claimed invention. The patentee cannot continue to change the scope of his claims merely to rectify drafting errors.

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DPS Parmar is a special counsel with LexOrbis’ IPAB practice group.

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