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Imperative Tips for Patent Drafting

According to World Intellectual Property Organization (WIPO), Patent is an exclusive right granted for an invention which is a product or process. To get a patent for an invention, drafting the patent application is very important. However, drafting the patent application is quite difficult. Writing Patent Application and claiming all the invention is an art. This article explains the structure of Patent Drafting according to Indian Patent Act (IPA) 1970 along with important tips of patent drafting.

Section 10 of Indian Patent Act 1970

Section 10 of IPA 1970 states 'Content of specification' for provisional application and for complete specification. Section 10 states that every patent application filed in India shall begin with a title which adequately explains the invention and shall include drawings as of patent specification. Further, the IPA 1970 states that, in any particular case, the Controller may ask the Patent Applicant to provide a model or sample which will illustrate the invention.

According to Section 10, Patent Application shall describe the invention, its operation or use and the method by which it is to be performed. The Patent Application discloses the best method of performing the invention for which protection is claimed. Patent claims define the scope of the invention. Finally at the end, application contains an Abstract to provide technical information on the invention.

Structure of the Patent Specification/Application

Content of Specification according to Section 10 of IPA 1970 as under:

  1. Title
  2. Field of Invention
  3. Background of Invention
  4. Statement of Objective of Invention
  5. Statement of Invention
  6. Brief Summary of Invention
  7. Brief Description of Drawings
  8. Detailed description of the Invention
  9. Claims
  10. Abstract
  11. Drawings

Title:

Title of an invention is very important part of patent application and thus must be framed by taking at most care. Title is the first impression of the main content of the invention. According to WIPO guidelines: title of the invention should be meaningful, title should clearly, concisely and specifically indicate the subject to which the invention relates, title should evident the claim categories (Process, product, apparatus etc.), title should avoid the use of the word 'patent', personal names, fancy names, trade names, trademarks, or abbreviations or term such as 'etc'. A title can be used for more than one invention.

Field of Invention

Field of invention should describe scope of invention and subject matter of the invention to which it is related. Advantages of the invention must be mentioned in the field of invention which clearly relates the area of application. It should be crisp and clear enough so that Patent Examiner will understand the nature of the invention and its category. Field of invention shall include evidences which will support the industrial applicability of the invention.

Background of Invention

Background of Invention is similar to literature survey. It mentions the state of the art of the subject area which the invention is related. It contains previous references or prior art related to the invention. This section should focus on the problems remains to be solved or disadvantages of the prior art solutions. Background should describe what others have done before and the problems which are not solved by this prior art. The improvements needed in the previous inventions can be discussed here. It is always better to include the prior art which is closely related to the claimed inventions. This section should describe the invention by clearly distinguishing it from the closest prior art.

Statement of Objective of the Invention

Object of Invention should clearly replicate the advantages of claimed invention. It shall mention the problems associated with existing technology and solution for that. It shall mention the differences between the claimed invention and the prior art. Each advantage of the invention should be described in separate sentence. This section gives the comparative analysis of the claimed invention and the existing technology.

Statement of Invention

Statement of Invention describes exact features of invention. It should clearly highlight the inventive features over the existing prior art. It should clearly summarize the invention including all steps of process or essential features of product or machine in case of process or product patent. Statement of invention is useful to declare the inventiveness of the invention and relates it to the independent claims which will define clearly exclusive right required in case of infringement proceedings.

Brief summary of Invention

Summary presents the general idea of the invention in summarized form. The nature of invention and technology domain is included in the summary. It described board overview of the invention and helps to understand the detailed description of the invention and claim section of the patent specification. The advantages of the invention are mentioned in summary. The problems existed previously which are mentioned in background section and solutions to these problems are highlighted in summary.

Brief description of Drawings

The invention is illustrated with the help of drawings. Figures with numerical labeling are mentioned in patent drawings. Drawings help to understand the claims of the invention. The brief description of drawings consists of description of the invention which explains how to use the invention. The drawings should be clear enough so that skilled person can understand the invention.

Detailed description of Invention

Detail description of invention includes the details of an invention, how invention is made and how it can be used. The details described here should sufficient enough so that any skilled person in the same field can use this invention. It can include examples or drawings which will help to describe the invention. Reference to drawings should be specific. Each and every detail of the invention should be mentioned here along with the best mode of performing invention.

Claims

The most important element of patent application is the patent claims. Claims are the heart of the patent application. Patentability of an invention mainly depends on claims as it defines scope of the invention. Claims define the invention and gives exclusive rights to exclude others from making use of the invention. The major function of claims is to define clear scope of the invention for which patent can be granted. The patent claims should be drafted very carefully on a new page. Each claim should be written in a new sentence. There are two basic types of claims; Independent Claims and Dependent Claims. Dependent claims should be framed in reference to independent claims.

Abstract
Abstract provides technical information of an invention. It should mention technical field of invention with existing problems and the solutions to overcome such problems. The purpose of an abstract is to assist in the official classification of the application based on prior art and to provide a brief text which will help third party to carry out searches. The abstract contain a concise summary of the invention. The abstract should be briefly drafted within 150 words.

Drawings

Drawings will be helpful to illustrate the invention. Patent drawings can be the best way to expand disclosure. Most of the inventions in the field of engineering can be explained with the help of drawings. Multiple drawings with its detail description can made a perfect patent application. Drawing should be drawn on the drawing sheet, at the right and left top corners, name of an applicant and total number of drawings should be mentioned. Also every drawing sheet ends with a signature of an applicant or the agent at the right bottom corner.

Sequence Listing

Sequence listing is required in case of biological inventions where nucleotide or amino acid sequences are present. It is presented in a particular text format so that patent office can extract information and help in searching prior art.

Imperative tips for Patent Drafting

Patent are granted only for new inventions and patent application has to describe this completely new invention. Describing or presenting something new that has not previously existed is very challenging task. Getting patent for any new invention mostly depends on the innovativeness of the invention and draft of patent application. Thus while drafting a patent application, one should be very vigilant and should take at most care. Following are the imperative tips for Patent Drafting.

Title
  • While framing the titles of the inventions, it should bear in mind that title belongs to bibliographic data which mostly transferred onto a machine readable data carrier. So, title preferably contains only characters and signs which can be read and printed by computer.
  • Title should be meaningful.
  • Title should be framed normally within 15 words.
  • Title should be centre aligned and in bold.
  • Title should be concise, related to invention but should not the limit the scope of the invention.
  • Avoid use of the words like patent, inventor's name, etc and fancy words.

Field of Invention
  • Field of invention is the first part of patent application, so should give formal introduction of the invention.
  • This section should begin with general statement about the invention and mention scope and technology of the invention.
  • First statement can begin with 'The invention relates to…' and further describe the technology area of the invention.
  • Field on invention describe the technology area and thus classify the patent application.
  • Preferably, details of the invention should not be included in this section.
  • Should not have any language that can be interpreted to limit the scope of the invention.
  • Each subsequent paragraph in this section should be assigned a referral numeral. This numeral can help in pointing out a specific portion.

Background of Invention
  • Avoid use of term 'prior art' in complete specification.
  • This section should not label anything as 'invention' while describing previously published work.
  • The state of art should focus on the problem that is solved by the proposed invention.
  • The state of art does not limit the scope of invention to any particular field.
  • The details of the problem should be discussed in this section; it should be mentioned in Detailed Description.
  • This section should be written in maximum in two paragraphs.
  • The offensive or insulting words should not used to any prior art.

Statement of Objective of the Invention
  • Objective refers to what the invention aims to achieve.
  • Objectives should emphasis on the invention and effectively stated.
  • Advantages of the invention must be highlighted rather than the disadvantages of the prior art.
  • Avoid use of conflicting terms while drafting the objectives of the invention.
  • Avoid mentioning narrow objectives for the invention as they can limit the scope of invention.
  • Conclude the section by generalizing or broadening the scope of the invention.
     
Statement of Invention
  • It should focus on actual implementation and embodiments of an invention.
  • It should be written in plain English and not include any legal language.
  • Statement of invention should focus at stating the exact invention, its nature, operation and application
  • It should be broad enough to include alternative personification and implementation for more elements are possible for the invention.
  • This section should be short enough stated within 2-3 paragraphs.
  • Statement of Invention also commonly referred as Summary

Brief description of Drawings
  • Brief description of drawings should be mentioned clearly so that any skilled person can understand it
  • Brief and concise explanation of each figure should be written in this section
  • The terms whose interpretation may limit the scope of the invention should be avoided.

Detailed description of invention
  • The invention should be described in detail so that any ordinary person can understand the invention.
  • This section should disclose the details of invention along with the best mode to practice the invention.
  • The nature of improvements/modifications done in prior art should be mentioned clearly and described in detail in case of Patent of Addition application.
  • This section should highlight the preferred embodiments of the invention. Whether the invention is a product or process, the physical structure or the method of conducting the invention should be described in detail.
  • Reference to drawings should be specific and clearly written in a definite format.
  • This section should support all the features that need to be protected in the patent application.
  • Detailed description should not contain unnecessary terms or any absurd language which will limit the scope of the invention.
  • The format of detailed description depends on the field of invention, type of invention and technology to which the invention relates. Thus depending upon the invention category, this section should be framed.

Claims
  • Claims should be stated clearly in a single sentence.
  • As Patent rights are given to claims only, so they should be framed with at most care.
  • As per the patent law, 'what is not claimed in the claims will be considered as disclaimed even if the matter is disclosed in the specification'. Therefore, claims should cover all the elements of the invention.
  • While framing the claims, appropriate legalese needs to be incorporated.
  • Claims are related to single invention or group of inventions to form a single inventive concept.
  • The statement of claim should start with 'I claim or We claim'.
  • As per the patent law, claim should consist of 'introductory phase', 'the body of the claim' and 'the linking words that joins these two parts'.
  • The first claim has to be Independent Claim and subsequent claims would be Dependent Claims. All these claims are linked to form a single inventive concept.
  • There is no restriction on number of claims. However, additional charges are required if the number of claims are greater than 10.
  • Each Claim should be written in separate page with Arabic number starting with 1.

Abstract
  • Brief technical information about the invention should be included in the abstract that are consistent with the broadest claim.
  • It should be written within 150 words on a fresh page.
  • This section should include technical problem and its solution along with the usefulness of invention.
  • Abstracts are primarily used for searching patents, so should be written with at most care.
  • Generally, abstract is the first part to be read in the patent application, so it should comprise level of protection to be accorded to the application.
  • Referring to claims or drawings should be avoided.
  • Abstract should aim only at describing the main components of the invention and how they work.

Drawings
  • Drawings should demonstrate a device, a system, an apparatus of the invention or methods/procedures of carrying out an invention.
  • Drawings should be made on A4 size sheet using black indelible ink on thick and durable paper with margin of 2.5cm on each side.
  • At the left-hand top corner of the sheet, the name of the applicant should be mentioned.
  • Total number of sheets and consequential sheet number should be mentioned at the right-hand top corner.
  • No descriptive matter should appear on drawings.
  • Drawings shall be on scale sufficiently large to show the inventions clearly and dimensions shall not be marked on the drawings.
  • In the right-hand bottom corner, the signature of the applicant/agent should be added.

According to the Patent Rules 2003, all documents and copies of the documents except affidavits and drawings shall be typewritten or printed in Hindi or English in large and readable characters not less than 0.28cm high with deep permanent ink and one and half spacing only upon one side of the paper.

The paper used for printing should be flexible, white, smooth, non-shiny and durable. The pages in the application should be numbered in consecutive Arabic numerals at the centre of the bottom of the sheet. It should contain numbering to every fifth line of each page of the description and each page of the claims at the right half of the left margin. According to the Sub-Rule 3 of Rule 9, the sequencing listing of nucleotides or amino acid sequences shall be filed in computer readable text format along with the application.

According to Section 8 of Indian Patent Act 1970, the applicant voluntarily shall submit the details of the foreign application (if any) at the Indian Patent Office and keep the Indian Patent Office informed time to time and update the status of these applications.

According to the Indian Patent Act 1970, all the required documents should be submitted along with the patent application within specified time.

Remarks
Patent application (Complete Specification) is a legal document and it is the face of an invention. It helps in understanding the invention and its usefulness. Complete specification is a self-contained document of an invention. It is applicant's attempt to get the rights for his invention. So, at most care should be taken while drafting the patent application which will follow the Sections and Rules of Indian Patent Act 1970.

To write Complete Specification for the applicant who has a clear problem with its solution is easy. It is beneficial for the applicant if he has required experimental data that supports the claims. However, otherwise Patent Specifications are complex to draft.

As granting a patent includes commercial perspective and has business opportunities in future, every inventor should focus on drafting a patent application and consider it as an investment.

Reference links:
  1. http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
  2. http://ipindia.nic.in/writereaddata/Portal/ev/sections-index.html
  3. http://nbaindia.org/uploaded/Biodiversityindia/Legal/14.%20The%20Patents%20Act,%201970.pdf
  4. http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf
  5. http://ipindia.nic.in/writereaddata/Portal/ev/rules-index.html

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