A Presentation by Mr. Nitin Nair, Partner- BananaIP Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. Basics of patent specification drafting
By
Nitin Nair

2. Object of patent law
• The object of Patent Law is to encourage scientific research,
new technology and industrial progress. The price of the grant
of the monopoly is the disclosure of the invention at the Patent
Office, which after the expiry of the fixed period of the
monopoly, passes into the public domain.
Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries on 13 December, 1978

3. Form of patent application
• Patent Application
• Form of Application
• Provisional Application (Provisional Specification
+ Filing documents)
• Non Provisional/Complete Application (Complete
specification + Filing documents)
• Priority Date- filing date of the first application
in a chain of applications

4. Indian Patent Act
• Section 7(4)- Every such application….shall be
accompanied by a provisional or complete specification
• Section 10(1) Every application…shall describe the
invention and…begin with a title…
• Section 10 (4)- every complete specification shall
• Fully and particularly describe the invention
• Disclose the best method
• End with a claim
• Be accompanied by an abstract

5. Specification contents
• Title
• Preamble of the invention
• Technical field
• Background
• Objects
• Statement of the invention
• Brief description of the drawings
• Detailed description
• Claims
• Abstract
• Drawings

6. Title
• Should be provided in the first page of Form-2
• Should indicate the subject matter
• Should not be more than 15 words
• Should be free from fancy expression or
ambiguity
• Inventor’s name, the word “patent”, words in
other languages and so on should not be
used

7. Title
• Should correspond to the broadest claim
• Should embrace all variants of the invention
(apparatus and method)

8. Pre-amble
• 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

9. Technical field
• Provided in page 2 of Form-2
• Should indicate general art to which the
invention belongs
• Areas of application may be mentioned

10. Background
• 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/criticize the disadvantages
of prior art

11. Objects
• Should set forth broad objectives
• Acts as a pointer while drafting detailed
description

12. Statement of invention
• Usually drafted when omnibus claims are
intended to be introduced.
• According to new manual of patent office
practice and procedure (MPPP), Omnibus
claim should be avoided.
• Paraphrasing of independent claims

13. Brief description of drawings
• Should clearly indicate that the drawings are
showing embodiments of the invention and
not the invention itself
• Should start with “…The invention is illustrated in
the accompanying drawings, throughout which like
reference letters indicate corresponding parts in the
various figures. The embodiments herein will be
better understood from the following description with
reference to the drawings, in which:…”

14. Detailed description
• Should provide sufficient details of the
invention
• The making and using of the invention
should be explained in depth so as to enable
a person having ordinary skill in the art to
practice the invention
• Details of the invention should be explained
with reference to drawings
• Should disclose best mode

15. Detailed description
• Should provide sufficient details of the
invention
• The making and using of the invention
should be explained in depth so as to enable
a person having ordinary skill in the art to
practice the invention
• Details of the invention should be explained
with reference to drawings
• Should disclose best mode

16. Detailed description
• 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

17. Claims
• 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

18. Claims
• Parts of a claim
• Preamble
• Transitional phrase
• Body
• Example Preamble Transitional Phrase
• A system for……., said system
comprising:
• element A;
• element B; and Body
• element C.

19. Claims
• Independent claim
• Stand alone
• usually broad
Example
1. A system for….., said system comprising:
element A;
element B; and
element C.

20. Claims
• 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.

21. Claims
• Multiple dependent claim
– Refers back to more than one claim in
alternative
– Narrow scope
Example
3. The system as claimed in claim 1 or 2, wherein
element A further comprises element E.

22. Claim Drafting - tips
• Draft a broadest independent claim with
at least one novel point and then proceed
with drafting dependent claims
• Do not include unnecessary limitation in
the independent claim
• Claim an apparatus in non-operational
state
• Do not include multiple dependent claims

23. Claims
• Example
1. A chair comprising a seat and a back
rest. Said chair further having four legs.
1. A chair comprising:
a seat;
a backrest; and
at least one leg.

24. Claims
• Example:
1. A fan comprising:
a rotating hub; and
three wings attached to said hub.
1. A fan comprising:
a hub configured to rotate; and
at least one wing attached to said hub.

25. Claims
• Example:
A method for performing rain water harvesting
comprising digging a hole with a length of 10
meters, a width of 5 meters and a depth of 15
meters on a slope of 20 degrees; lining the
hole with a blue tarpaulin; and filling the hole
with water absorbent clay.

26. Claims
• Example:

27. Claims
• Example:

28. Abstract
• 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

29. Drawings
• Should be accurately referenced and
described
• Should show every feature of the
invention

30. Drafting approach
• Title
• Sequence of drawings
• First draft of Claims
• Technical field
• Background
• Object
• Brief description of drawings
• Detailed description
• Final claims
• Abstract

31. Thank you
Nitin Nair
nitin@bananaip.com
www.bananaip.com
Blog: www.sinapseblog.com