1. Claims and Determining Scope of Protection -Introduction Nov. 9, 2014 APAA Patents Committee Penang Malaysia Kay Konishi Co-chair of APAA Patents Committee

2. 2 What was observed in inventive- step question…  Previous special topics (2012-2013): “Deeper Harmonization in Inventive Step/ Non-Obviousness Determination”  Y/N varied with respect to a single hypothetical case with same prior art references…  Different conclusions may result from diversion in claim interpretation rules and practices existing in APAA RGs…

3. 3 Invention is:  Intangible when conceived  Exclusive once patented  Application as filed  Claims/specification/drawings  Different phases  During prosecution  After grant  Validity/infringement  Who to determine?

4. 4 2014 Questionnaire  Group A Questions  Claim interpretation after grant on “patented” invention  Group B Questions  Claim interpretation before grant during prosecution  Group C Questions  Description requirement for claims as one of patentability requirements applicable both before and after grant

5. 5 A: Relationship between the Claim and the Scope of Protection… A1: Is the claim viewed as the main instrument for determining the scope of a patented invention? A4: Is the specification/ description referable? -Shall? or May? -”Purposive construction”

6. 6 A: Relationship between the Claim and the Scope of Protection A5: Is the Doctrine of Equivalents (DOE) applicable? -Broadening rule A6: Is the File History Estoppel (FHE) applicable? -Narrowing rule A7: Means-plus-function claim? A10: Product-by-process claim?

7. 7 B: Claim Interpretation during Examination of Patent Applications B1: Is claim interpretation under examination the same as that applied for after infringement and validity actions in the Courts? -For assessing e.g., inventive step -”Reasonably broadest scope”? -Any difference between validity/infringement? validity/infringement?

8. 8 C: Formality Requirements for Claims C1: Clarity requirement -Basis for rejection? -Challengeable after grant? C2: Supportive disclosure requirement -Basis for rejection? -Challengeable after grant?

9. 9 Kay KONISHI kkonishi@konishinagaoka.com