Presentation on Patent DNA by Nitin Nair, Brain League IP Services Now 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. Patent DNA
By
Nitin Nair
Brain League IP Services now BananaIP
© 2009 Brain League IP Services Pvt. Ltd. Now BananaIP

2. Sections of a patent specification
 Abstract
 Field of invention/technical field
 Background of invention/prior art
 Objects of the invention
 Summary of invention
 Brief description of figures
 Detailed description
 Claims

3. Requirements for a specification
 35 U.S.C §112 paragraph 1:
 “The specification shall contain a written
description of the invention, and of the
manner and process of making and using it,
in such full, clear, concise, and exact terms
as to enable any person skilled in the art to
which it pertains, or with which it is most
nearly connected, to make and use the
same, and shall set forth the best mode
contemplated by the inventor of carrying
out his invention.”

4. Requirements for a specification
 In other words, the requirements of
a specification are
A) The enablement requirement;
B) The best mode requirement; and
C) The written description requirement.

5. Requirements for a specification
A) Enablement requirement:
The inventor must disclose the
invention in sufficient detail to allow
one of ordinary skill in the art to
practice the invention without undue
experimentation.
This requirement extends only to the
invention “as claimed”.

6. Requirements for a specification
 The level of detail in the specification
depends on the level of a fictional
“person of ordinary skill in the art”

7. Requirements for a specification
 Factors that need to be considered whether a
disclosure requires undue experimentation:
1) the quantity of experimentation necessary;
2) the amount of direction or guidance presented;
3) the presence or absence of working samples;
4) the nature of the invention;
5) the state of the prior art;
6) the relative skill of those in the art;
7) the predictability or unpredictability of the art;
8) the breadth of the claims.

8. Requirements for a specification
 MPEP states that
“while no specific universally applicable rule
exists for recognizing an insufficiently
disclosed application involving computer
programs, an examining guideline to
generally follow is to challenge the
sufficiency of such disclosures which fail to
include either the computer program itself
or a reasonably detailed flowchart which
delineates the sequence of operations the
program must perform.”

9. Requirements for a specification
 MPEP states that with regards to the
hardware side of the invention
“the examiner should determine whether
certain of the hardware or software
components depicted as block elements are
themselves complex assemblages which
have widely differing characteristics and
which must be precisely coordinated with
other complex assemblages.”

10. Requirements for a specification
In case of ASIC design, ideally describe the
simulation program and then illustrate the
operations performed by the hardware
using flow charts or state diagrams.

11. Requirements for a specification
B) Best mode requirement:
Disclose the last, best way of making or using the
invention that is known to the inventor at the time of
filing the application.
The subject matter which is needed to implement or
use the invention in the best way known to the
inventor at the filing is subject to the best mode
requirement, whether or not it is claimed.
Only relates to the operation of the invention as
claimed.

12. Requirements for a specification
 Violating the best mode requirement:
a) Intentional concealment
b) Accidental concealment (an inventor
intends to disclose a key element of
a invention, but does not do so in
sufficient detail to allow a skilled
person to practice the invention)

13. Requirements for a specification
C) Written description requirement
- To explain how to make and use the
invention
- To convey with reasonable clarity to those
skilled in the art that, as of the filing date
sought, the inventor was in possession of
the invention.
The written description can also be satisfied
by figures or by an appendix.

14. Requirements for a specification
 Issues relating to the written description
arise during prosecution
a) If claims have been made broad by an
amendment, then the new claim should be
supported by the description.
b) If claims have been made narrow by an
amendment, then the new claim should be
supported by the description.

15. Requirements for a specification
 A patent’s claims must be read in view of the
specification, of which they are a part. For claim
construction purposes, the description may act as a
sort of dictionary, which explains the invention and
may define terms used in the claims. A patentee is
free to become his own lexicographer. The caveat is
that any special definition given to a word must be
clearly defined in the specification. To construe claim
language, the court should also consider the patent’s
prosecution history, if it is in evidence. The court may
in its discretion, receive extrinsic evidence in order to
aid the court in coming to a correct conclusion as to
the true meaning of the language employed in the
patent.

16. Steps in preparing a specification
A) Understanding the invention
B) Describing the invention
(i) functional block diagrams
(ii) flowchart diagram
(iii) state diagrams
C) Alternative embodiments

17. Points to be noted while writing
background/prior art
 Write as much detail as possible.
 Attempt to differentiate the prior art
from the invention.

18. Claim drafting
 35 U.S.C §112 paragraph 2:
 “The specification shall conclude with
one or more claims particularly
pointing out and distinctly claiming
the subject matter which the
applicant regards as his invention.”

19. Points to be noted while drafting
claims
 Think from the point of view of the
inventor and from the point of view of
a potential infringer.
 Ensure sufficient support for each
claim is present in the description.
 Support may be in the form of written
description or figures/drawings.

20. Thank You
© 2009 Brain League IP Services Pvt. Ltd. Now BananaIP