Patent Drafting/Filing

Patent Specification is a techno-legal document, preparation of which requires deep knowledge of technology as well as legal procedure and statutes. A Patent Application typically contains parts such as an abstract, one or more claims, a background, a detailed description and drawing, and a summary. Writing a high-quality patent specification is important because it sets out in a clear fashion the terms by which the patent owner and others will be bound.

We help clients in drafting – Provisional as well as Complete Specifications for any technological domain.

A Provisional Specification is drafted when an applicant finds that his/her invention is not fully backed and is undergoing further research but sufficient details are there to protect the core idea. A provisional specification secures a priority date for the application over any other application which is likely to be filed in respect of the same invention being developed concurrently. In case of provisional specification filing, Complete Specification has to be filed within 12 months.
A Complete Specification fully and particularly describes the invention and discloses the best method of performing the invention.

Process

  • Non-Disclosure
    Aggrement
    To give you complete assurance that your invention will be confidential with us, we sign a Non-Disclosure Agreement (NDA) and then only initiate with 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 our 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 our patent professional and the inventor to ensure that the professional has understood the invention in the same sense.
  • DraftingOnce our patent professional and the inventor agree on scope of the invention, we draft the specification with an appropriate claim set and ensure support for the same in the specification.

Timelines

 

Frequently Asked Questions

Theoretically, yes the inventor can himself draft a patent application, but it is not recommended as such. 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. There have been numerous cases which showed the requirement of patent professionals for drafting purposes to be vigilant about the manner in which they write patent applications. 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. Thus, it is generally recommended to engage an expert for patent drafting owning to the fine balance of broad and narrow claims and the profound understanding of techno-legal writing that is required for a strong patent to enter the patent prosecution cycle.

Many a the inventor explains how useful his invention is without explaining clearly how it actually offers those advantages. For example, if you have 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 in understanding your invention.

Another prevalent mistake committed by inventors when they draft the patent themselves is that they tend to describe their invention only till the extent of what they have actually done, and fail to expand the scope of the patent. As a result they end up writing improper claims which tend to be very narrow in scope; making their patents enforceable only till a limited extent, and easy to design around by potential infringers.

Another mistake inventors commit when they draft patent themselves is that they use indefinite terms such as etc, very long, very short, very thick, very hot; which are not descriptively indicative enough to understand the exact invention.

A claim is that portion of the patent that determines legal scope of the patent. However, you cannot submit very broad level of claims just to get the greater protection as this will invite more objections based on the arts. At the same , you should not write than needed. There are still other criteria to be met like description of the invention should be fully supporting claims. A provisional specification is not required to include claims whereas complete specification must include claims. No extra fees have to be paid till 10 and specification of 30 pages, beyond which fees have to paid based on the number of extra claims and/or extra pages.

Though same claims may be acceptable in many countries, this is greatly affected by the subject matter. For example, a method of treating human beings is not patentable in India but it is in USA. It is also to be noted that though method of treatment is not patentable in India, instrument to be used in the treatment may be patentable. Accordingly, claims need to be changed to claim the subject matter that may be patentable where they are to be submitted.

You need to disclose the best method of performing the invention in the complete specification and not the provisional specification. If you fail to provide best method in the complete specification, your patent application or patent may be opposed or revoked.

No, traditional knowledge is not patentable in India even though they 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 the particular provision

To fully understand this, this system needs to be compared with -to-invent system. In -to-invent system, whoever invents gets the patent irrespective of who filed the patent application. In -to-file system, irrespective of who invented, whoever files the patent application gets the patent. To further understand this system, an example has been given below:

If a person has invented a machine and he does not file for a patent and by that someone else invents the same machine and files for the patent, in that case the person will not have any right to get the patent.

If you have admitted something as already known either during drafting of patent application or during replying to examination reports, then it will be used as art against you. This is called as rule of estoppel.

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 controller. Drawings can be submitted along with provisional or complete specification.

No, pure business methods are not patentable in India even though they may be patentable in other countries. Section 3 in India prohibits some inventions from being considered as inventions in India and business method falls within that list under Section 3(k)

You can refer to the IP India website for viewing the particular provision

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Patented or patent granted can be used only after a patent has been granted and not only after filing of application. However after patent application filing, one can use patent application pending, patent pending and patent applied unless his patent application has been withdrawn/ refused/ abandoned.