Efficient Drafting of Patent Application
The relevance of Intellectual Property (IP) has increased around the world and is much evident with increasing technological intervention and more businesses getting into this field. Each IP constitutes an important part of the company’s assets which needs to be structured in a focused manner to provide maximum benefit to the company. Patents are, therefore, the most important asset for a company that plays a substantial role in its profitability. The patent protects an invention that fulfills all the technical requirements associated with it. There are three main requirements for a patent to be granted for an invention. Firstly, the invention must be novel, secondly, it must involve inventive steps, and finally, it must be capable of industrial applicability. It is important for an invention to work and must be there in practice. With different jurisdictions having altogether different laws and their legislative requirements, the inventor must be clear with the jurisdictions they want to apply in and the requirements therein. The strong team at GPF has helped thousands of clients over the year for their inventions to be granted a patent, in multiple jurisdictions. Nevertheless, multiple things remain almost the same throughout various jurisdictions, although with small variables, of which, the main one is drafting of patents and their preparation and filings. There are few parts of these preparations which are discussed hereunder.
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For a professional who will help in structuring the patent application, the details will be enshrined as follows:
- Descriptions (or specifications)
The preparation of claims is the first thing to do for the invention, although it can be done at a later stage. For a patent agent, this claim will help in disclosing the invention. They are the legal definitions for which the protection is sought, or as the name suggests, it specifies what the invention claims for. The agent might not be using highly abstract language to describe the invention in the claim section. The agent can also draft several claims as to their first step. The claim needs to be drafted in the sense that everything must revolve around it. Drafting of claims can be done in the first part nevertheless; there can be instances when such drafting might not be possible for an agent at first, due to complexities involved in the invention.
The claims must be very clear in terms of rights where it must specifically mention the novel part, with the inventive steps and the industrial applicability. Therefore, the claims must correspond to the description/specification and must be interpreted in its light. It must also be noted that the claims must not be broad enough and neither it must be too narrow. The first point can define the essential features of the invention and the second point can expand the features of the same. Both of them must be drafted to provide all the pertinent information which must directly correspond to the specifications.
This part deals in disclosing the invention which helps in satisfying the requirement that any ordinary person skilled in the art can make and understand the invention. Every detail must be put in a sense that it must be made clear to the person who is skilled in the field, regarding structuring the invention. Such details must achieve the desired results without any error.
Providing each detail, for putting the invention into effect might not be possible, nevertheless, the details in the description must correspond to the claim. As mentioned, that the details in the description must address the person skilled in the art, it must not be so generic which is already known or is there in the public domain. There must be an extensive interpretation of the details mentioned in the claim. Those features which surprise the skilled person should be extensively written in detail as compared to the features which are less surprising or known, since they might not be novel.
Some agents might argue that the drawings are the most important part of the patent application. The drawing part helps in providing a perfect visual material which acts as a strong supporting part describing the invention. There are jurisdictions where drawing is a prerequisite to every claimed element. Drawing generally helps in understanding the invention in a much sufficient detailed form. Corresponding to the information provided in the description, the drawing part merely confirms such information in its visual manner. Undoubtedly, drawing might not be possible for all inventions. Most of the agents might wish to prepare drawing after preparing claims because it becomes very easy for the agent to dictate the detailed description and it greatly improves the efficiency. All such measures help in preparing a perfect patent application with an effectively detailed description.
The technical area of the invention must be made clear to the examiner for helping in performing the official search in that area. The technical field must comply with the invention, where the field must be in existence before. The purpose of the background must be to describe the problems where there were no such concrete solutions to the same in the prior art. The fundamental proposition must align with the idea of the invention and the contribution that this invention makes in the field.
This abstract does not touch upon any such legal portion and does not impact the legal scope of the patent. The abstract only contains the technical information which helps the application to be searched when published. The abstract concisely describes the invention and its use. The drafting of the abstract must be done cautiously and a check concerning the disclosure being made in the abstract is inevitable as abstract cannot be used for amendment at a later stage. This is a common mistake that is generally found where the abstract discloses some patentable features which are not found in the specification. It is always necessary that the agent must re-check the abstract after completing the patent application.
Generally the last part of the patent application, the summary section puts more emphasis on the nature of the invention and the purpose of the invention. The primary aim of the summary is to moreover provide an overhaul view of what the invention is and the benefits thereof in simple language. As mentioned, the fundamental point is to set out the nature and purpose of the invention and it must be straightforward.
The experienced professionals at GPF are there to guide the clients through the process associated with the drafting of the patent application. The team at GPF works with clients to provide and implement filing strategies based on the client’s demands and making it in a timely scheduled manner.
Author: Saransh Chaturvedi an associate at Global Patent Filing, in case of any queries please contact/write back us at firstname.lastname@example.org.