THE ART OF DRAFTING PATENT SPECIFICATION AND THE CLAIMS by Armaggedon

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									THE ART OF DRAFTING PATENT
  SPECIFICATION AND THE
          CLAIMS




                        THIS PAPER IS PREPARED FOR
                                   NATIONAL
                               SEMINAR/TRAINING
                             WORKSHOP ON PATENT
                             SYSTEM TO BE HELD IN
By Abdul Hameed Iqbal     PEARL CONTINENTAL HOTEL,
Patent Attorney                LAHORE – PAKISTAN
Ali & Associates         FROM 15TH – 16TH APRIL 2008
Description Requirement

There may be various ways of explaining the description/requirements, but the
   fundamental idea of this principle can be said as follows:

1. You must disclose your invention in an understandable way:
    • A patent is given to an inventor (applicant) in return for disclosure of his
       invention.
    • If you do not disclose the invention, you cannot have a patent.
    • How should you disclose your invention? By writing.
    • Thus, you need to prepare some documents.

Necessary documents for patent application are:
    • Application form;
    • Claims;
    • Specification;
    • Drawings;
    • Abstract.
2. Application form

Several types of application forms are used in the circumstances, under which the
application is filed, but the most common forms are:

Form P-1            when the inventor is sole or joint applicant.

Form P-1A           when the inventor is not a party to the application

Form P-2            when priority is claimed.

The application form must indicate:

     •   Applicant’s name, address and nationality
     •   Title of the invention
     •   Name, address and nationality of the inventor(s)
     •   Summary of pages of description, claims, abstract, drawings etc.
     •   Address for service in Pakistan
2. Application form

     •   The application form must be complete in all respect. If priority is claimed a
         certified copy of priority document must be filed in the Patent Office alongwith
         the Application. However if it could not be filed alongwith the Application at
         the time of filing the Application for the grant of Patent, it can be filed later on
         but within 9 month from the date of filing of such priority application upon
         filing requests for extension of time and paying the prescribed fee.

The specification, claims, abstract and drawings, must be written in English language.
Pakistani Patent Office accepts the documents particularly the priority documents in
any language but it must accompany its verified English translation. If the English
translation is not filed with the original priority document, it must be filed before the
examination of the patent application.
Specification:

The specification is the description of the invention. It is drawn up like a story, the plot of
   which should be very simple and must contain:
     • Prior art and its problems;
     • Minimum requirements to solve the problems;
     • Detailed story of the invention;

Since the reader of the specification may be
     • Other inventors
     • Examiners
     • Judges
     • Competitors
     • Ordinary people

Therefore, the specification must be clear and should provide full and correct
   understanding of the invention, where the prior art should also be described in full
   and correct understanding.

Always use scientific and standardized terms so that every one should understand the
   invention in the same way.

The specification must support the claims.
The specification must be arranged in the following manner:
     • The Abstract of the invention.
     • Title of the invention
     • Technical field
     • Background art (prior Act)
     • Summary of the invention
     • Embodiments
     • Brief description of the drawings

The specification can also be prepared in the following manner:
     • The Abstract of the invention.
     • Title of the invention
     • Technical field
     • Background Act
       * Description of the prior art
       * Problems of the prior art
     • Summary of the invention
       * Objects of the invention
       * Means to solve the problem
       * Advantages of the invention
     • Embodiments
     • Brief description of the drawings
The abstract of the invention should be given firstly so that the reader must have
   the idea of the invention before going into its description. It is normally the
   first claim of the invention.

    •   The purpose of the invention is to solve problems of the prior art.

    •   The problems of the prior act should be recognized by the reader of the
         specification.

    •   The prior art should be described in a manner to enable the reader to
        understand            the problems of the prior art.

    •   Can use drawings to describe the prior art.
When you prepare the “Background Art” section, you should first pick up one (or two)
  prior art, and explain how the prior art apparatus works.

     •   Then point out the problems of the prior art.

     •   Point out only those problems which will be solved by the invention.

     •   Do not write any problems which the invention does not solve.

     •   Always choose well described/good prior art.

     •   The “good prior art” is prior art which fits in the story of the invention.

     •   The story of the invention is a happy-end story; you make the reader
         understand values of the invention. The prior art should be selected for this
         purpose.

     •   Chose a single prior art. The story of the invention starts here. Think yourself
         as the storywriter. The goal is to make the reader believe that this invention
          provides great improvements. The description of the prior art is the starting
          chapter.
What is summary of the invention?

  The summary of the invention is normally the technical measures to solve the
   problems of the prior art. This section is consistent to the claims – usually the
   independent claims are copied here alongwith some of the dependent claims so as
   to make them understandable as the language of the independent claim is often
   very complicated and not easy to understand. The reader may not understand how
   the claim apparatus works if you only describe the structure of the apparatus. Then
   you can add some sentences to explain how the claimed apparatus works.
   Therefore, the summary of the invention may consist of:

    1. Structure of the apparatus

    2. Function of the apparatus

    3. Advantages of the apparatus
Embodiments

   •   An Embodiment is an example of an apparatus which works under a principle
       of the invention.

   •   The Embodiment section is a detailed description of the invention with the help
       of the drawings if any.

   •   In this section every element of the apparatus should be described in such a
       way that firstly the structure of the apparatus be described and then describe
       as to how the apparatus works.

   •   The terminology in the embodiment should be consists to the terminology in
       the claims, so that the reader can understand the relationship between the
       elements in the claims and the elements of the embodiments.

   •   The embodiments must be described in such a manner that a person skilled in
       the art can easily make and use the apparatus. This is called “enablement
       requirement”.
Brief description of the Drawings:

  This section deals with the drawings, if any.

  The drawings attached to the specification must be described in brief by indicating
   the type of the drawing, such as front view, perspective view, block diagram and
   cross-sectional view etc.

    The drawings should be consistent with the description of the embodiment.
Claim Drafting:

What do you require to do when drafting claims of the invention?

1. To understand the invention with the help of:
       * Laboratory note;
       * Manufacture drawings;
       * Experimental data;
       * Scientific paper; and
       * Samples / models.

2. Interview with the inventor.

3. Prior art searching.

4. Full and correct understanding of the prior art. (The prior art provides the help in
   determining the language of the claims).

5. Grasp the main idea of the invention in the following manner:
      * ask yourself “is it really required”;
      * inventor shows you a product; and
      * that product often includes unnecessary elements.
Various ways to protection:

How many independent claims can you make for a product?

    •   Final product;
    •   Intermediate product;
    •   Sub-combination;
    •   Parts of the product;
    •   Method of making the product;
    •   Method of using the product;
    •   Machine for making the product; and
    •   Parts of the machine.
Various ways to protection:

How many independent claims can you make for a product?

    •    Unity of the invention should be maintained.
    •    The unity of invention means how many inventions can be included in a single
        application.
    •    According to new Patent Ordinance, 2000 each application shall rotate to one
        invention only.
    •    Claim is definition of the invention (you have to define the invention by words).
    •    Everything written in the claim is the required element of the invention.
    •    Claims should be drafted as broad as possible.
    •    Claims should be supported by the specification as a claim is an abstract idea
        derived from the detailed description.
    •    Since the patent is given to the inventor in return for disclosure of this
        invention, therefore, it is necessary to review the specification and confirm that
        there is sufficient support for the claims.
    •    The claim should cover all embodiments, as the claims determines the scope
        of protection e.g. if two or more embodiments are disclosed in the
        specification, the claim must cover all these embodiments. If the second
        embodiment is not covered by the claims the second embodiments is
        dedicated to the public.
Various ways to protection:

A claim has three parts in its structure, namely
        * Preamble
        * Transition
        * Body

              i.     Preamble is an introductory statement that indicates a subject of
                     the invention and its category. e.g.
                     An apparatus for controlling fuel injection.
              ii.    Transition is a bridging words placed between “preamble” and
                     “body”. E.g. “Comprising”;
              iii.   Body is a part that describes all necessary elements of the
                     invention i.e. a sensor for detecting a flow rate of a fuel supplied to
                     a fuel injector; and a controller for adjusting an opening degree of a
                     value located on a fuel delivery line when the flow rate of the fuel
                     detected by the sensor exceeds a predetermined value.
Various ways to protection:

There are three types of claims:

       * Independent claims
       * Dependent claims
       * Multiple dependent claims

The claims should always be arranged in the manner that the independent claim should
   lead the dependent claims and the multiple dependent claims should follow the
   dependent claims.
Various ways to protection:

THE DRAWINGS

The drawings which illustrate the invention should be filed in duplicate along with the
   Application for Patent or at such other time as the controller may direct. The sheets
   may be of a size, as described in the Patens Rules, 2003. One copy of the drawing
   i.e., the Original should be capable of reproduction by the Vandyke process, and
   such should be on white or light blue tracing cloth or on durable tracing paper and
   executed in black ink. Drawings should be free from colour washes, erasures and
   patches. The other copy of the drawing i.e., duplicate may be a blue print or the
   like, provided that it is permanent, legible and exact copy of the original.

•    Photographs are not acceptable.
•    Sketches or drawings should not be inserted in the letter press of the specification.
•    The drawing should bear the name of the Applicant at the left hand corner and total
    number of sheets employed together with the serial number of each sheet at the
    right hand top corner.

								
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