Drafting a Patent Specification
Introduction and Approach
A patent specification is considered to be a techno-legal document because of the presence of technical details of the invention and legal limits of the protection embedded therein. The language used in a patent specification has a combination of technical and legal jargons.
Patent specification is a document through which an inventor discloses the details of his invention in exchange for the exclusive rights awarded by the government. From a broader perspective, the government expects a patent specification to disclose the invention details so that any person from the public (after the patent expires) can make and/or practice the invention thereby meeting the objective of the Patent law. While the aforementioned perspective is the bottom line for any patent specification, Patent Applicants/Inventors/Patent Professionals (hereinafter “patent drafter”) will have to employ several other perspectives when drafting a patent specification to obtain a quality patent. Broadly, the patent drafter will have to employ,
1. Invention perspective;
2. Third Party perspective; and
3. Patentability perspective.
1. Invention perspective: The patent drafter should have sufficient clarity on what the invention is, where the invention is being applied to, what would the future improvements/ modifications be and so on. The patent drafter should endeavor to expand the scope of protection to the invention (“X+1” rule, where X is the invention and 1 is the future modifications to the invention). For example, if the invention is a “click pen” (assuming that a pen with a cap is the prior art) where there is one button which is adapted to move a nib of the refill from a writing position (nib being outside of the pen body) to the closed position (nib being inside the pen body), then the patent drafter should have the foresight to consider at least a click pen with multiple refills of different color, a pencil or a sketch pen employing the aforementioned mechanism and accordingly draft a patent specification. 2. Third Party perspective: The patent drafter should carefully evaluate as to who the potential infringers are. An invention may be more relevant to and practiced by one or more of a vendor for a company, a manufacturer, an assembler who assembles the manufactured components and an end user. The patent drafter should duly consider the aforementioned factor and draft a patent specification, which will, without any ambiguity, make the potential infringers liable for infringement.
3. Patentability perspective: While the patent drafter should constantly endeavor to expand the scope of protection for the invention, care should also be taken to steer clear of the unwanted prior arts being considered by a patent examiner during prosecution. The patent drafter should be aware of the existing prior arts in the filed of subject invention and draft the patent specification differentiating the invention from the prior art in addition to highlighting the utility, novelty and non-obviousness features of the invention. With this backdrop, it is absolutely necessary for a patent drafter to employ all the aforementioned perspectives while drafting each section of a patent specification.
Types of Specifications
1) Provisional specification; and
2) Complete specification.
A provisional specification is a document, which broadly, though not completely, discloses an inventive concept. The provisional specification is filed mainly to secure a “priority date” when the inventor is in need of more time to work out the details of his invention and to perfect the same. Therefore, the provisional specification seldom discloses all relevant details of the invention in a sufficiently clear and complete manner. Though complete information is not required, it is recommended to provide, in the provisional specification, as much information as the inventor/applicant has about the invention at the time of filing because the provisional specification will be used at a later stage to determine whether the complete specification claims the invention that forms part of the provisional specification. Drawings, which relate to the invention, may also be submitted with the provisional specification and such drawings will be deemed as part of the specification.
A complete specification is a document, which discloses all details of an invention in a sufficiently clear and complete manner, as opposed to disclosing broad inventive concept in the provisional specification, so as to enable a person having ordinary skill in the art to practice the invention. The complete specification is further different from that of the provisional specification because it must conclude with a claim or a set of claims. As a fundamental aspect of specification drafting, one should understand that each claim in the complete specification defines an invention. Therefore, each claim has a respective priority date associated with it.
Contents of a Specification
A specification should be drafted and submitted in Form 2 to the Indian Patent Office. As mentioned in the previous section, a provisional specification as opposed to the complete specification will not have a claim section. The sections are as follows
2) Preamble of the invention;
3) Technical field;
6) Brief description of the drawings;
7) Detailed description;
8) Claims (for complete specification); and
In the following paragraphs, each of the sections is discussed briefly along with the best practices to be followed while drafting those sections.
The complete specification should begin with the title of the invention. The title should fairly capture specific features of the invention. It should not be more than fifteen (15) words. Further, Inventor’s name, the word “patent”, words in other languages, the abbreviation “etc” and fancy words may not be used in the title. The title should embrace all variants (apparatus) of the invention. For example, a title may be “A system and a method for ____”, “An apparatus and a method for___” and so on.
Preamble of the invention
The preamble for a provisional specification should state “The following specification describes the invention”. Further, the preamble of a complete specification should state “The following specification particularly describes the invention and the manner in which it is to be performed.” The preamble along with the title of the invention, name, address and nationality of the applicant(s) should appear in the first page of Form 2.
The “Technical field” section in the specification will mention as to what field the invention belongs to and particularly states as to the subject matter of the invention. For example, the Technical Field may state “The invention generally relates to dispensing machines and more particularly to a machine which dispenses coffee”.
The objective of this section is to distinguish the invention at hand from that of what is already being practiced in the industry. The aforementioned objective will be achieved by briefly discussing the teachings of the prior art and drawbacks or disadvantages, if any, of such teachings. This section sets the stage for describing, at a later stage, the invention at hand clearly and in more detail.
For example, if the invention relates to a coffee dispensing machine in which a crusher is included, as a novel and inventive concept, to grind the coffee seeds, the disadvantages or drawbacks of existing coffee dispensing machine (assuming that the concept of grinding the coffee seeds in the dispensing machine itself is not present in the existing coffee dispensing machine) may be briefly discussed.
The objective of this section is to bring about the necessity of the invention.
This section is aimed at bringing about the objectives, advantages or solutions achieved by employing the invention at hand. It may include statements such as “The principle object of an embodiment of this invention is…..; Another object of the embodiment of this invention is……; yet another object of the embodiment if this invention is… and so on.
Brief description of the drawings
This section will refer to all the figures in “Drawing” part of the specification. In this section, a brief discussion is presented as to the embodiments depicted by each of the figures. For example, it may be stated that “Figure 1 is a perspective view of a coffee dispensing machine having a crusher according to an embodiment of the invention; and Figure 2 depicts crusher of figure 1 connected to a collecting chamber and so on.
Detailed description of the invention
The objective of this section is to provide sufficient details of the invention. The making and using of the invention and the objectives, advantages or solutions achieved by employing the invention (as discussed in “Objects of the invention ”section of the specification) should be explained in depth. Further, the details of the invention should be explained with respect to the drawings. The details provided in this section are considered sufficient if a person having ordinary skill in the art is able to practice the invention without undue experimentation. This section may also include examples to facilitate better understanding of the invention. Further, this section should provide or disclose the best method of performing the invention, which is known to the applicant.
Claims are the sum and substance of the patent specification. The patent rights are granted to the claimed subject matter. The subject matter which is in the description but not claimed will be considered disclaimed and hence is donated to the public. Each claim is a separate invention and hence all the claims are not held invalid for one claim being invalid.
A claim is a sentence and hence should start with a capital letter and end with a full stop. The claims section of the specification should start on a separate page after the “Detailed description of the invention” section. The preamble to claims section should be, “I claim”, “We Claim” or “What is claimed is” and should follow with the claim listings.
Almost always, the first independent claim is drafted broadly to cover the important aspects of the invention. Further details of the invention may be covered in dependent claims which will have narrow coverage. Different set of claims may be drafted to vary the scope of protection sought.
A claim has to be structured in three parts viz, Introductory phrase, body and a link that joins the introductory phrase and the body.
For example, consider the following claim
Claim 1: A coffee dispensing machine comprising:
a container; and
a collector in fluid communication with said crusher and said container.
In the afore mentioned example A coffee dispensing machine is the Introductory phrase, the elements “a crusher”, “a container” and “a collector” forms the body, and the term “comprising” is the linking element which links the introductory phrase and the body.
There are three types of link terms, viz, comprising, consisting of and consisting essentially of”. The term “comprising” is considered to have broad meaning, the term “consisting of” is considered to have narrow meaning than the term “comprising”. Further, the term “consisting essentially of” is considered to have narrow meaning than the link term “comprising of” and broad meaning than “consisting of”.
Another important thing to remember is to not claim an apparatus in an operation state. For example, I claim “…a fan comprising…a rotating hub”. The word “rotating” in the claim would require an alleged product to be rotating to infringe the claim.
Abstract An abstract, essentially is a summary of the matter contained in the specification. The abstract section should start with the title of the invention and should not be more than one hundred and fifty (150) words. The feature of the invention when mentioned in abstract should contain the reference number accorded to that feature in the drawing.
Authored by Mr. Somashekar Ramakrishna, Sr. Partner – BIP Counsels