DRAFTING OF A PATENT SPECIFICATION

Patent specification is a document through which an inventor discloses the details of his invention in exchange for the exclusive rights awarded by the government. From a broader perspective, the government expects a patent specification to disclose the invention details so that any person from the public (after the patent expires) can make and/or practice the invention thereby meeting the objective of the Patent law.

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DRAFTING OF A PATENT SPECIFICATION

By Mr. Somashekar Ramakrishna (Sr. Partner – BIP Counsels)
Introduction and Approach

A patent specification is considered to be a techno-legal document because of the presence
of technical details of the invention and legal limits of the protection embedded therein. The
language used in a patent specification has a combination of technical and legal jargons

Patent specification is a document through which an inventor discloses the details of his
invention in exchange for the exclusive rights awarded by the government. From a broader
perspective, the government expects a patent specification to disclose the invention details so
that any person from the public (after the patent expires) can make and/or practice the
invention thereby meeting the objective of the Patent law . While the aforementioned
perspective is the bottom line for any patent specification, Patent Applicants/Inventors/Patent
Professionals (hereinafter “patent drafter”) will have to employ several other perspectives when
drafting a patent specification to obtain a quality patent. Broadly, the patent drafter will have
to employ,

1. Invention perspective;
2. Third Party perspective; and
3. Patentability perspective.

1. Invention perspective: The patent drafter should have sufficient clarity on what the
invention is, where the invention is being applied to, what would the future
improvements/ modifications be and so on. The patent drafter should endeavor to
expand the scope of protection to the invention (“X+1” rule, where X is the invention and
1 is the future modifications to the invention). For example, if the invention is a “click
pen” (assuming that a pen with a cap is the prior art) where there is one button which is
adapted to move a nib of the refill from a writing position (nib being outside of the pen
body) to the closed position (nib being inside the pen body), then the patent drafter
should have the foresight to consider at least a click pen with multiple refills of different

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color, a pencil or a sketch pen employing the aforementioned mechanism and
accordingly draft a patent specification.

2. Third Party perspective: The patent drafter should carefully evaluate as to who the
potential infringers are. An invention may be more relevant to and practiced by one or
more of a vendor for a company, a manufacturer, an assembler who assembles the
manufactured components and an end user. T he patent drafter should duly consider
the aforementioned factor and draft a patent specification, which will, without any
ambiguity, make the potential infringers liable for infringement.

3. Patentability perspective: While the patent drafter should constantly endeavor to
expand the scope of protection for the invention, care should also be taken to steer
clear of the unwanted prior arts being considered by a patent examiner during
prosecution. The patent drafter should be aware of the existing prior arts in the filed of
subject invention and draft the patent specification differentiating the invention from the
prior art in addition to highlighting the utility, novelty and non-obviousness features of the
invention.

With this backdrop, it is absolutely necessary for a patent drafter to employ all the
aforementioned perspectives while drafting each section of a patent specification.
Types of Specifications

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

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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.

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.
Contents of a Specification
A specification should be drafted and submitted in Form 2 to the Indian Patent Office. As
mentioned in the previous section, a provisional specification as opposed to the complete
specification will not have a claim section. The sections are as follows

1) Title;
2) Preamble of the invention;
3) Technical field;
4) Background;
5) Objects;
6) Brief description of the drawings;
7) Detailed description;
8) Claims (for complete specification); and
9) Abstract.

In the following paragraphs, each of the sections is discussed briefly along with the best
practices to be followed while drafting those sections.

Title:

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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. Further,
Inventor’s name, the word “patent”, words in other languages, the abbreviation “etc” and
fancy words may not be used in the title. The title should embrace all variants (apparatus) of the
invention. For example, a title may be “A system and a method for ____”, “An apparatus and a
method for___” and so on.

Preamble of the invention

The preamble for a provisional specification should state “The following specification describes
the invention”. Further, the preamble of a complete specification should state “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

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

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coffee seeds in the dispensing machine itself is not present in the existing coffee dispensing
machine) may be briefly discussed.

Objects

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 an
embodiment of this invention is…..; Another object of the embodiment of this invention is……;
yet another object of the embodiment if this invention is… and so on.

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. 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.

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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.

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

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essentially of” is considered to have narrow meaning than the link term “comprising of” and
broad meaning than “consisting of”.

Another important thing to remember is to not claim an apparatus in an operation state. For
example, I claim “…a fan comprising…a rotating hub”. The word “rotating” in the claim would
require an alleged product to be rotating to infringe the claim.

Abstract

An abstract, essentially is a summary of the matter contained in the specification. The abstract
section should start with the title of the invention and should not be more than one hundred and
fifty (150) words. The feature of the invention when mentioned in abstract should contain the
reference number accorded to that feature in the drawing.


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