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