Improvement inventions – Patent Claim drafting

Improvement inventions – Patent Claim drafting

Jepson Claims: Patents are granted for new or novel inventions adhering to the subject matter eligibility requirements provisioned under 35 U.S.C. 101 as patentable inventions. The same code also mentions protecting the improvements over the prior art as “new and useful improvements.” Drafting an improvement application requires an understanding of Jepson claims, one of the methods followed to draft claims for an improvement patent.

Patent Claim Drafting

Jepson claim is a method, or a product or process claim where it mentions and relates to the known prior art in the preamble and claims the improvement over the prior art. Jepson claims recite all or at least some elements from the prior art.  The preamble in these claims’ set is usually lengthier than other claim types. The other easily identifiable part of the Jepson claim is that the transition clause that states “wherein the improvement comprises” OR “the combination with the old article, etc, of”

The Jepson format claim may read for instance, “A method of manufacturing a bottle having …, wherein the improvement comprising …..

One should be mindful that “Everything you do say can be used against you Forever!” which relates to prosecution history estoppel. If we make certain amendments or an argument with the examiner, we are bound to stick to it and cannot revert it, where we are drawing limitations for self.

In Jepson format claims it is essential that we admit the invention is an improvement over the already existing art. Here the examiners tend to search for a prior art or a combination of prior art to render the invention obvious resulting in the rejection of patent.

It is strongly recommended to draw citation to the previous art while drafting Jepson or improvement claims.