13 Apr 2020
Tim Slingschröder
An application for Patent registration consists out of three parts; drawings, a claim, and a description. Of these three parts, the claim is arguably the most important one. Such a claim consists of a short explanation of what the invention to be patented looks like and what its main functions are.
This may sound easy at first, but when putting some thought into it one often realizes formulating a fully covering description of an invention is a tough job. Having a covering claim is of the utmost importance though, as what is not expressively claimed will not fall under the protection as granted through a Patent. In extreme cases, a poorly formulated claim can even lead to the rejection of a Patent application, as investigators might not understand properly what actually makes the invention new and unique.
Article 25 of Law 13/2016 about Patents requires every application for Patent registration to be accompanied by a claim. The Patent Law does not further specify any other requirements as to what this claim must encompass, apart from that it must ‘capture the core of the invention in a clear and consistent way’. The written explanation being the claim does have to be made in the Indonesian language as can be concluded from Article 24 of the Patent Law, which in itself may be a good reason to hire an Indonesian legal expert.
Though the law remains rather vague about the criteria a proper Patent claim must meet, it is always good to keep in mind that the claim is what informs third parties about when they infringe on the inventor’s rights. It must, therefore, be ‘clear and consistent’.
An inventor himself might perfectly understand how his creation works without putting certain details into words, while it is crucial outsiders will understand the claim as well. Furthermore, consequences (e.g. water that starts flowing) must logically follow from described parts and actions (e.g. a valve in front of the tube through which the water will flow opens). Likewise, the information described in the claim must match with, and make sense with regards to the description and the accompanying drawings.
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Since specifications about the claim’s scope are not recorded in the law, applicants can choose to file claims as broad as they please. The difference between a broad claim and a narrow one can be recognized in their names. In a broad claim, an element within an invention could, for example, be described as ‘an isolated temperature-measured sensor’. In a narrower claim, this explanation would be more detailed, such as ‘an electrically powered sensor measuring air temperatures and fluctuations therein, protected against water and other forms of possible damage by a plastic case with microscopic holes in order to allow air to pass through’.
Formulating a broad claim certainly comes with its advantages, the biggest one of which is that others can not invent a similar device if the Patent is granted. In our example, the narrow claim only mentions ‘air temperature measuring sensors’, which means someone making a similar device measuring water temperatures instead can do so without infringing the Patent in question.
The broad claim on the other hand states ‘temperature measuring sensors’ in general, meaning similar inventions that measure water temperatures would be considered Patent infringement as well. The broader a claim is, however, the bigger chances are it will overlap with a priorly registered Patent.
By filing broad claim applicants also risk the Directorate General of Intellectual Property (DGIP) will deem it not specific enough, leading to a rejection of the application for Patent registration. This in contrast to narrow claims, which have a higher chance of not overlapping with other Patents and therefore increasing the chance an application will lead to the grant of Patent rights.
A good compromise could be the inclusion of various narrow claims into one single Patent application. Article 25 of the Indonesian Patent law allows for this possibility, which enables applicants to practically make a broad claim comprising of several narrowed down ones.
As a Patent claim comes in the form of a description as well, one might wonder what the separately mentioned ‘description’ actually is. Summarized, the claim of a Patent defines what is actually protected by it. The description explains how to use the invention in order to achieve the result its inventor planned it to have, as is set out in Article 25 of the Patent Law. Usually, the description contained in a Patent application also mentions how the invention is made.
