DRAFTING PATENT SPECIFICATION
by
Adv. Paresh R. Chinchole
Lawyer & IP Consultant
BEFORE DRAFTING
What is the invention ?
Is invention patentable ?
Is invention novel, inventive ?
Prior art/prior disclosure ?
Oral disclosure ?
Prior printed publication available to the public ?
Prior public use ?
BEFORE DRAFTING:VERIFY
DRAFTING: THE FOLLOWING:
Conduct search
Enlist problems in prior art
What is the problem sought to be solved by the invention?
What is the novelty?
Is the solution obvious?
Is it artificially excluded ?
Has publication ensued?
Ascertain the type of application -whether complete or provisional is to be
filed
Decide the area and nature of protection- Paris convention, PCT, ordinary
application.
PUBLIC DOMAIN
Public knowledge - known to persons in the art. A part of the mental
equipment of those concerned in the art under consideration
Common general knowledge: All available public knowledge and all that is
published
PUBLICATION
Kinds of publications: documents
papers or publications should provide unmistakable direction/disclosure of
the invention
even single disclosure is sufficient - extent of publication/ availability of
publication-immaterial
PATENT SPECIFICATION
Read by:
Patent Office
Licensee/Assignee
Court
Technical peers/skilled persons
Competitors
Commercial players
General public
KINDS OF SPECIFICATIONS
PROVISIONAL COMPLETE
Kinds of applications:
Conventional (Paris/PCT), non-conventional
Divisional
Patent of addition
A PROVISIONAL SPECIFICATION
Pros & Cons
o when there is an Urgency
o commercial disclosure
o Submission of thesis
o Inventors/Seniors leaving the company
o Accidental disclosure
o Many competitors
A PROVISIONAL SPECIFICATION
o Is a document describing the invention and need not contain claims
o Disclose as much as possible
o Decides the date of the application
o FORM 2 “ The following specification describes the invention”
A PROVISIONAL SPECIFICATION
o Specification can be amended to add new information at the time of filing
o To be completed in 12 months
o If not- post dating to a maximum of 6 months
A COMPLETE SPECIFICATION
Is a techno-legal document, describing and specifically claiming the
invention
FORM 2 “ The following specification particularly describes and ascertains
the nature of the invention and the manner in which it is to be performed.”
PATENT SPECIFICATION
Description Claims
• Description discusses the invention
• Claims define boundary of monopoly
WHAT IS A COMPLETE SPECIFICATION
Section 10(4) of the Patents Act, 1970:
” … specification shall fully and particularly describe the invention and its
operation or use and the method in which it is to be performed;
discloses the best method of performing the invention which is known to
the applicant and for which he is entitled to claim protection…”
DESCRIPTION
Description must describe the invention comprehensively
Should fully explain the problem to be solved with examples
No ambiguity
Should be adequate and sufficient so as to enable a person skilled in the art
to perform and repeat the invention without inventor’s further inputs
DESCRIPTION
To reflect that invention is:
novel
inventive
industrially applicable
patentable under Indian Patent Law
CONTENTS OF THE DESCRIPTION
Title
Field of the Invention
Background of Invention
Prior Art details
Objects of Invention
Statement of Invention
Detailed description of Invention
TITLE
A concise statement providing the crux of the invention
Care should be taken to incorporate all major aspects claimed
Product-Process-Apparatus
Examples:
- Brush Vs. Cleaning Article
- Pen Vs. Writing Instrument
PREAMBLE
Should be provided in the first page of Form-2
Provisional Specification
The following specification describes the invention
Complete Specification
The following specification particularly describes the invention and the
manner in which it is to be performed
FIELD OF THE INVENTION
Provided in page 2 of Form-2
Should indicate general art to which the invention belongs
Areas of application may be mentioned
Example:
“The embodiments herein generally relate to dispensing machines and more
particularly to an apparatus and method for dispensing coffee
BACKGROUND
Provides the technical background of the invention;
Distinguish the invention from what is already existing in the field
Should not describe the claimed Invention
Should use drawings to explain any prior art
If the latest art in the field (prior to the invention at hand) is Applicants own
work, then such work should not be described here
Do not exaggerate the disadvantages of prior art
PRIOR ART
Is a brief write-up of what is known
before the invention; sets out the
problems associated with each of the
known art; and describes the problem
proposed to be solved by the invention
In India, this is not mandatory
PRIOR ART
Un-solved problems
Prior art solution not working
Describe new solution adequately
OBJECTS OF THE INVENTION
Provides purpose of the invention
Main object(s) and Ancillary object(s)
Essential aspects and preferred/optional aspects.
Example:
“An object of the embodiments of this invention is to provide an apparatus
for crushing coffee beans and dispensing coffee.”
“Another object of the embodiments of this invention is to provide a method
for crushing coffee beans and dispensing coffee.”
SUMMARY OF THE INVENTION
As noted earlier, not all jurisdictions require a summary of the invention
section.
However, such sections are customarily prepared in many jurisdictions even
when not strictly required by national law.
We usually draft the summary of the invention section in a manner that
highlights the important aspects of the invention using words drawn from the
application’s claims.
BRIEF DESCRIPTION OF DRAWINGS
good visual supporting materials that describe the invention;
Should be in a separate sheet
• Should be accurately referenced and described
• Should show every feature of the invention
The patent application itself should contain a list of the drawings between
the summary of the invention section and the detailed description section.
The drawing section should begin with a statement indicating that the
drawings are illustrative of one or more embodiments of the invention (and
not illustrative of THE invention), such as:
BRIEF DESCRIPTION OF DRAWINGS
An exemplary embodiment of the present invention is illustrated by way of
example in the accompanying drawings in which like reference numbers
indicate the same or similar elements and in which:
Figure 1 is a diagrammatic representation of a coffee dispensing machine
according to an embodiment of the present invention;
Figure 2 is a flow chart showing the process of dispensing coffee
DETAILED DESCRIPTION OF INVENTION
Sets out best mode of performing the invention;
Describes the invention in greater detail with
examples/illustration/tables/graphs/diagrams, etc.;
Description sufficient to enable a skilled person to put the invention into
practice;
The terminology should be consistent;
Should be well organized and easily understandable;
Start with a general overview and proceed with increasing levels of detail;
Should set forth several, if not all, alternative working examples even if only
one embodiment is illustrated in the drawings
DETAILED DESCRIPTION OF INVENTION
“… the apparatus 100 as shown in Fig 1 includes a housing 10. The housing
10 is provided with a first hopper 12a and a second hopper 12b on a top
portion thereof. The housing 10 is adapted to receive a first container 14a, a
second container 14b and a collector 16 and a dispenser 18. The dispenser
18 includes a plurality of outlets 18o.……..”
CLAIMS
Is the operative part of the specification;
Defines the monopoly to be conferred by the patent;
Define the metes and bounds of the invention: at the time of infringement
proceedings, only claims will be interpreted;
Should start in a different page;
Should start with Preamble I/We Claim;
Define the scope of protection;
Every claim has a date associated with it;
Every claim is an invention;
What is not claimed in the “claims” stands disclaimed;
Do’s and Don'ts
Generic expressions should be substantiated /supported properly.
The names/terms used shoud be familiar to the person skilled in the
art.
Any newly coined terms/named should be clearly described
Do’s and Don'ts
Specification must describe the invention concisely
should explain the problem solved fully with examples
no ambiguity
should be adequate and sufficient so as to enable in the art to perform the
invention
CLAIMS
Parts of a claim
– Preamble
– Transitional phrase
– Body
Example Preamble Transitional Phrase
A system for……., said system comprising:
element A;
element B; and
element C.
CLAIM FORMAT
Independent claim
– Stand alone
– usually broad
Example
1. A system for….., said system comprising:
element A;
element B; and
element C.
CLAIM FORMAT
Dependent claim
– Dependent on independent claim or another dependent claim
– Narrow scope
Example
1. The system as claimed in claim 1, wherein element A comprises element
D.
CLAIM FORMAT
Example
A chair comprising a seat and a back rest.
Said chair further having four legs.
A chair comprising:
a seat;
a backrest; and
at least one leg.
ABSTRACT
The patent abstract should describe the invention very clearly in the fewest
possible words.
Should be in a separate sheet
• Start with the title of the invention
• Should not exceed 150 words
• Should indicate the figure which needs to be published with it
