A patent specification is a technical-legal document having a written description of the invention, along with the manner and process of making and using the invention. The patent specification must include the novel and inventive steps of the invention. It must be clear and concise to enable understanding of the invention to any person skilled in the art. Under the Indian patent law, a patent specification defines the boundaries of exclusive rights granted to the inventor.
Before drafting a patent specification, it is highly important to consider several aspects to make sure that the invention is legally protected. The key points before drafting a patent specification are listed below.
- Understanding ‘What’ is the invention.
A patent specification must meet the legal requirements in the country in which the patent is to be obtained. The patent attorney can help in the preparation of the patent specification based on the disclosure provided by the inventor. Thus, providing the complete disclosure of the invention to the patent attorney is highly important to make the patent specification preparation easier.
It is also critical to determine if the invention is patentable and to determine if it can be protected. An invention must have patentable subject matter to be eligible for patent protection. The invention must be new, inventive and must have a utility. The invention must not have any prior use before the invention is made public. It is important to know what can and cannot be patented. If the information related to the invention is publicly disclosed, one cannot get a patent for that invention. Therefore, a search of all previous public disclosures should be conducted to identify the prior arts including foreign patents and publications.
The patent specification requires a high level of detail and the patent attorney uses these details to prepare a detailed disclosure of the invention. The patent specification, whether a provisional or complete specification, must present the subject matter of the invention in a clear manner where the disclosure can portray the method of making and using the invention to any person skilled in the art.
The level of detail in the patent specification must demonstrate clearly that the inventor or the applicant is in possession of the invention in the form of the best example. The invention can have any number of applications, which might not be in practice or be implemented at the time of filing the patent application. Importantly, the complete technical disclosure of the invention, along with the expertise in defending the invention during prosecution increases the chances of getting the grant for the patent.
The complete patent specification includes claims that define the key technical aspects and boundaries of the invention for which protection is sought. It is important to construct the claims clearly and precisely, to avoid serious objections during patent prosecution stages. Clearly drafted claims are essential as the claims define the scope and set the boundaries of the patent rights.
- Understanding ‘Why’ to file a patent
It is necessary to understand why we must file a patent application, before drafting the patent specification.
It is important to understand why to file a patent application, as once a patent application is filed, it acts as a prior art and dissuades the other inventors from trying to patent the same invention in the future. Whether the patent is issued, published or a pending application, the document acts as a public document.
The reasons for filing a patent application might be to protect the invention from competitors trying to enter the market and to stop the infringement and gain control over the market. The reason can also be securing the exclusive rights over the invention, which can be used for licensing or transferring the rights of the invention, and many more. A patent grant can increase the negotiating power of the inventor with the competitors and licensees; nowadays, filing a patent application is considered necessary by potential investors or businesses looking to acquire your invention.
- Understanding ‘Where’ the invention is to be filed.
The inventor must access the market for their invention to determine where to file for the protection of the invention. This requires the inventor or the applicant to study the market related to their invention and seek protection in countries with high demand and value.
If the product or method developed by the inventor is going to revolutionize the related industry, then it is highly critical to prevent their competitors from copying their invention or imitating their invention for a low-priced product. Thus, there is a need for filing a patent application. But patents are territorial rights, meaning the rights for a patent is only applicable in the region where the patent application is filed, which creates a need for foreign patent protection. Foreign patent protection requires the inventor to file a patent application in all the countries where there is a good market for their invention, and it might deter competitors from infringing, but pursuing it comes at a greater cost.
Upon receiving the complete technical disclosure of the invention from the inventors or the applicant, the patent attorney will start preparing a patent specification draft. The patent attorney has to carefully select the terms used in the patent specification, to avoid limiting the scope of the invention. Use of such terms might lead to undesirable consequences during patent prosecution. During patent prosecution, generally, the claims protecting the key aspects of the invention can be amended to redefine the scope of the invention. Still, the patent specification is rarely amended to a greater extent. Thus, drafting the patent specification is highly critical. Taking all the above points into account, a clear and concise document has to be created, as the inventor or the applicant gets only one opportunity to explain their invention.
- Conclusion
Patent specification drafting is a complex procedure but can be done precisely with the help of a patent attorney. Considering the complexities of the Indian patent law and rules, the patent attorney considers all the strategies and considerations before drafting a patent specification. A thoughtfully drafted patent specification creates valuable intellectual property and avoids unnecessary time and cost consumed during patent prosecution.
Author: Megha S Nadiger, Origiin IP Solutions LLP
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