Drafting of a patent specification
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  • 1. DRAFTING OF A PATENT SPECIFICATION Author: Som Shekhar Ramakrishna1 Introduction In order for an applicant to be awarded patent rights, the applicant should disclose his/her invention to the patent office and later to the public through a patent specification. The specification has to accompany the patent application and based on the details provided in the specification and claims written in it, the patent office determines as to whether the invention is patent worthy. Patent Specification A patent specification is a document through which an inventor discloses the details of his invention to the patent office and the public. The patent specification is a techno-legal document that has to be filed along with a patent application in the Patent office. The patent specification is a technical document because it includes the technical details of the invention. Further, it is also a legal document because it defines the legal limits of the protection sought by the inventor. The language used in a patent specification has a combination of technical and legal jargon. There are two types of patent specifications viz, 1) Provisional specification; and 2) Complete specification. Provisional 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.2 Complete 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.31 Email: rsshekar@brainleague.com2 Section 10(2) of the Indian Patent Act as amended in 20053 Section 9 of the Indian Patent Act as amended in 2005
  • 2. The complete specification can be filed in two ways 1) Subsequent filing; or 2) Direct filing. In subsequent filing, the complete specification is filed subsequent to the filing of the corresponding provisional specification and further claiming priority from the corresponding provisional specification. Such subsequent filing of complete specification should be done within twelve (12) months from the “priority date” or the filing date of provisional specification.4 Further, if the description in the complete specification refers to the drawings that were submitted with the corresponding provisional specification, such drawings may incorporated by reference without having to re-submit the drawings with the complete specification.5 Further, to avail priority from the corresponding provisional specification, the subject matter as claimed in the complete specification should be fairly supported in the provisional specification.6 For example, consider the following scenario: On August 25, 2009 a provisional specification is filed disclosing an invention broadly to the extent of describing elements A, B and C. On August 24, 2010 a complete specification is filed claiming priority from the provisional specification. In the “claims” section of the non-provisional specification, claim 1 is directed to elements A, B and C and claim 2 is directed to elements A, B, C and D. The element D is disclosed in the complete specification filed on August 24, 2010 In the scenario, claim 1 is accorded priority date of August 25, 2009 (filing date of provisional specification) and claim 2 is accorded priority date of August 24, 2010 (filing date of complete specification) since element D was not disclosed in the provisional specification. In direct filing, no corresponding provisional specification is present and the complete specification is first filed directly with the patent office. Filing format: The provisional or complete specification and the accompanying drawings must be prepared on A4 size paper of approximately 29.7x21 cm with a margin of at least 4 cm on the top and left hand part and 3 cm on the bottom and right hand part thereof.7 The drawings should be furnished as a different set of papers and should not appear in the specification itself. 8 Parts of the complete specification The complete specification should be drafted and submitted in Form 2 to the Indian Patent Office. The complete specification must be drafted in the following format. 1) Title; 2) Preamble of the invention; 3) Technical field; 4) Background of the invention; 5) Objects of the invention; 6) Statement of the invention;4 Section 9 of the Indian Patent Act as amended in 20055 Rule 13(4) of the Indian Patent Rules 20036 Section 11(2) of the Indian Patent Act as amended in 20057 Rule 9(1) of the Indian Patent Rules 20038 Rule 15(2) of the Indian Patent Rules 2003
  • 3. 7) Brief description of the drawings; 8) Detailed description of the invention; 9) Claims; and 10) Abstract. Title: 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. 9 Further, Inventor’s name, the word “patent”, words in other languages, the abbreviation “etc” and fancy words may not be used in the title.10 However, words such as improved or improvements may be used in the title. Preamble of the invention The preamble of the invention should state that “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. Technical Field 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”. Background of the Invention 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. Objects of the invention 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 this invention is…..; Another object of the invention is……; yet another object of the invention is… and so on. Statement of the Invention This section is usually drafted when omnibus claims are intended to be introduced. This section should recite the independent claims in plain English.9 Rule 13 (7)(a)of the Indian Patent rules 200310 Manual of Patent Practice and Procedure, third edition, 2008, section 5.6.1 (a), page 104
  • 4. It section may include statements such as “Accordingly, the invention provides an apparatus comprising…….’ 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.11 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.12 Claims 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 crusher; 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.11 Section 10 (4)a of the Indian Patent Act as amended in 200512 Section 10(4)b of the Indian Patent Act as amended in 2005
  • 5. 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”. Abstract An abstract, essentially is a summary of the matter contained in the specification.13 The abstract section should start with the title of the invention14 and should not be more than one hundred and fifty (150) words.15 The feature of the invention when mentioned in abstract should contain the reference number accorded to that feature in the drawing.16 Summary An applicant for a patent has to provide patent office with the patent specification which describes about his invention. Further, the applicant may file a provisional specification or a complete specification depending upon the stage of the invention. If the invention is in the initial stages of perfecting, one may opt for filing provisional specification to secure the “priority date”, else a complete specification along with the claims may be filed with the patent office. The format, as outlined above, has to be followed while drafting a complete patent specification13 Rule 13(7)(b) of the Indian Patent Rule 200314 Rule 13(7)(a) of the Indian patent Rule 200315 Rule 13(7)(c) of the Indian Patent Rule 200316 Rule 13(7)(d) of the Indian Patent Rule 2003