Patent Drafting

An essential step in applying for a patent is preparing a patent application, also termed as a patent specification. The process of preparing a patent application is termed as patent drafting.

A patent specification is a techno-legal document, preparation of which requires deep knowledge of the invention’s underlying technology as well as legal procedure and statutes of relevant jurisdictions in which the patent application will be filed. Typically, it contains parts such as an abstract, one or more claims, a background, a detailed description and drawing, and a summary.

Two types of patent applications are used in patenting process. A provisional application is made when an inventor is ready with sufficient details of the core idea upon which he/she wants protection but feels can add/improve upon it with further research. At this stage a provisional application can be filed that secures a ‘priority date’ for the application (and the underlying core idea) over any other application which is likely to be filed in respect of the same invention being developed concurrently, or later. A provisional specification need not carry ‘claims’ of the application. The claims are the most important part of an application and define, in technical terms, the scope of protection sought in the patent application. They serve to warn others of what they must not do if they are to avoid infringement liability. The claims are of the utmost importance both during prosecution and litigation alike. Within 12 months of filing the provisional application, a complete specification including the claims as elaborated above has to be filed. The complete specification fully and particularly describes the invention and discloses the best method of performing the invention, and has to be within boundaries set by the provisional application. Of course, an inventor can directly proceed to filing a complete specification.

As is apparent from above, writing a high quality patent specification – whether provisional or complete – is very important. The complete specification is a document that is published in public domain (website, nowadays) of concerned Patent Authority ( for instance, Indian Patent Office website) and is the ‘go-to’ document that is read by all people who at any time may have an interest in the technology and the invention described therein. Even if patent application does not get converted into a patent, it stands as prior art for all times in the future.

We have a very strong patent drafting team with complete in-house capability in all domains. Our patent professionals in the drafting team have deep domain knowledge backed by that of patenting laws and their nuances. Every application goes through a stringent peer-review process before it is filed, and we can say with pride that all applications filed by us are of top notch quality in all patent drafting aspects.

Process

  • Non-Disclosure
    Agreement
    To give inventor complete assurance that the invention will be confidential with us, we sign a Non-Disclosure Agreement (NDA) and then only initiate the project.
  • Inventive Disclosure
    Form
    An Invention Disclosure Form (IDF) is submitted by the inventor to our patent professional with description of the invention. The form contains a set of questions to make the understanding of invention more specific and detailed so that the patent professional can perceive the essence of invention and its novelty. It helps in better understanding of the invention.
  • Detailed DiscussionAfter going through the IDF, a detailed discussion takes place between the patent professional and the inventor to ensure that the professional has understood the invention in the same sense as the inventor. Such discussion can take place via face to face meetings, telephone conversations or virtual meetings as most appropriate.
  • DraftingOnce our patent professional and the inventor are on the same page regarding scope of the invention, the professional drafts the specification with an appropriate claim set, backed by a comprehensive technical description elaborating various embodiments of the invention. The objective is to achieve as broad claims as possible, while at the same time minimizing the possibility of challenges being raised due infringement on prior arts.

Timelines

 

Frequently Asked Questions

Theoretically, the inventor can himself draft a patent application. But, as any good inventor who has in turn used a good patent drafting professional can vouch for, this is not the recommended course of action for any inventor serious about getting a patent. There is an appreciable difference between regular English writing/Technical writing and the language, form and expression of English involved in the Techno-Legal Disclosure of a patent.

It can readily be appreciated that an inventor can describe his/her invention best. Whether that satisfies patentability requirements is a different matter altogether. Most inventors can describe usage of their inventions. Some can even elaborate how they are better than existing ones and/or why they came up with the invention. However, both these aspects, while useful, are not particularly important with respect to patentability.

A patent application has to describe in great detail how the invention is ‘enabled’ , i.e., how can it be made and used so that a ‘POSITA’ – person ordinarily skilled in the art – can make and use the invention. Further, the invention has to be distinguished from the prior art in terms of structure rather than in terms of function.

While writing the entire patent application is quite challenging, it is the claims that determine the scope of the patent. Writing broader claims than acceptable ones can invite objections based on close arts and writing narrower claims than needed shall prejudice the inventor’s interest if and when infringement occurs.

As can be understood from above, it is extremely important to engage a patent professional for patent drafting owing to the stringent technical requirements and that of a fine balance of broad and narrow claims.

Frequently, an inventor describes how useful his invention is without explaining clearly how it actually offers those advantages. For example, if an inventor invented a medicine composition which can cure a patient within 3-4 days of the dosage, rather than the average period of 15 days required by other similar medicines; writing only this would not help anyone in understanding the invention, or the inventor in getting proper protection.

Mostly, inventors describe their invention only to the extent what they have actually done and, consequently, end up writing very ‘narrow’ claims. That is, such claims barely cover their invention, if at all, and can be easily ‘designed around’ by potential infringers. A skilled patent professional however, can significantly widen the scope of the claims thereby granting a much wider protection to the inventor.

Another very common mistake committed by inventors is usage of indefinite terms such as very long, very hot, etc. in claims. Such terms do not stand the test of indefiniteness and a patent claim that fails this test is deemed unpatentable, invalid, and unenforceable.

Indeed a patent specification and claims therein is a document and statements where even a coma put at the ‘wrong’ place can impact the situation dramatically when prosecution/ litigation happens. Which is why it is always much better that a patent application be drafted by a patent professional with good understanding of both the underlying technology and patentability requirements.

As has already been indicated, claims are the most important aspect of a patent application. While drafting a patent application, claims usually are on the last page. As said, the claims are the heart of a patent as they define the limits of exactly what the patent does, and does not, cover. The patent when granted gives the patentee the right to exclude others from making, using or selling, only those things which are described by the claims (as finally granted).

Writing claims is a fine balancing act. Broad claims have the lure of greater protection but, at the same time, possibility of more challenges from existing prior arts. Narrower claims raise the fear of an invention easily being ‘designed around’ by others.

A patent professional is well versed in treading this fine line and make the best efforts to get the invention the maximum protection possible.

Subject matter of the invention has a strong bearing upon this. For instance, while a method of treating human beings is not patentable in India, it is in the US. Again, while the method of treatment of humans is not patentable in India, the instrument used may be patentable.

A patent professional is well-versed with such situations and can change application drafting and claiming strategies accordingly.

While the provisional specification has no such requirement, the complete specification has to. Indeed it is in the interest of the inventor that the best method is described and appropriately claimed. Else others may just ‘design around’ the invention. Or the patent application (and the patent when granted) may be open to opposition or revocation.
Traditional knowledge is not patentable in India even though it may be patentable in other countries. Section 3 in India prohibits some inventions from being considered as inventions in India and traditional knowledge falls within that list under Section 3(p).
You can refer to the IP India website for viewing this particular provision.
To fully understand this, this system needs to be compared with first-to-invent system. In first-to-invent system, whoever invents first gets the patent irrespective of who filed the patent application. In first-to-file system, irrespective of who invented, whoever files the patent application first gets the patent. For instance, inventor A invents a machine but delays filing a patent application (that can even be a provisional application) for the same. Meanwhile, inventor B invents the same machine and files a patent application or the same. Thereafter, even if inventor A files a patent application, that filed by inventor B will act as prior art and so prevent inventor A from getting the patent.

The first-to-file system is used in all countries including the United States, which switched to a first-inventor-to-file (FITF) system on March 16, 2013 after the enactment of the America Invents Act. Prior to this, the US was following first-to-invent system. The FITF system, in case of dispute, affords the first inventor a ‘grace period’ to file for his invention after a public pre-filing disclosure. However, it is to be note that such ‘grace period’ is not granted in other jurisdictions that do not recognize such a period for disclosures made in advance of filing a patent application. In such a situation, an inventor’s public disclosure of his invention may stand as prior art against his own invention !

To avoid such ambiguities, it is strongly recommended that an inventor file at least a provisional application as soon as he is ready with sufficient description of at least the core idea that he wants to be protected.

Any such admission, either during drafting of a patent application or during the prosecution phase qualifies as prior art. This again brings to the fore importance of good patent drafting, as well as appropriate drafting of various replies etc. during the prosecution phase.
Drawings may be submitted along with the patent application by the applicant himself (on his own cognizance) to further illustrate the invention, whereas drawings may also be needed if they are required to be submitted by the Patents Controller. Drawings can be submitted along with provisional or complete specification.
In India pure business methods are not patentable, as set out under Section 3(k) of Indian Patent Act. They may be patentable under other jurisdictions.
You can refer to the IP India website for viewing this particular provision.
Patented or patent granted can be used only after a patent has been granted and not after only filing of application. However after patent application filing, an inventor can use patent application pending, patent pending and patent applied unless the patent application has been withdrawn/ refused/ abandoned.