BASICS OFSPECIFICATION DRAFTING

bySomashekar

PartnerBananaIP Counsels LLP

Object of Patent Law• The object of Patent Law is to encourage scientific research,

new technology and industrial progress. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of the monopoly, passes into the public domain. Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries on 13 December, 1978

SPECIFICATION

Form of Application

• Patent Application– Form of Application

• Provisional Application (Provisional Specification + Filing documents)

• Non Provisional/Complete Application (Complete specification + Filing documents)

• Priority Date- filing date of the first application in a chain of applications

In the Indian Patent Act• Section 7(4)- Every such application….shall be accompanied by a

provisional or complete specification

• Section 10(1) Every application…shall describe the invention and…begin with a title…

• Section 10 (4)- every complete specification shall• Fully and particularly describe the invention• Disclose the best method• End with a claim• Be accompanied by an abstract

• And so on….

Specification Contents• Title• Preamble• Technical field• Background • Objects • Brief description of the drawings• Detailed description• Claims• Abstract• Drawings

Example Invention

• Coffee dispensing machine in which a crusher/grinder for grinding coffee beans is included as a novel and inventive concept

Title

1. Should be provided in the first page of Form-22. Should indicate the subject matter3. Should not be more than 15 words4. Should be free from fancy expression or

ambiguity5. Inventor’ s name, the word “patent”, words in

other languages and so on should not be used

Title

6. Should correspond to the broadest claim7. Should embrace all variants of the invention (apparatus

and method)

Title for our Invention? “Apparatus and method for dispensing coffee” “Coffee dispensing Machine and method of dispensing

coffee”

Preamble

• Should be provided in the first page of Form-2• Provisional Specification

– The following specification describes the invention

• Complete Specification – The following specification particularly describes

the invention and the manner in which it is to be performed

Technical Field

• Provided in page 2 of Form-2• Should indicate general art to which the

invention belongs• Areas of application may be mentioned Technical field for our invention? “The embodiments herein generally relate to

dispensing machines and more particularly to an apparatus and method for dispensing coffee”

Background

• Distinguish the invention from what is already existing in the field

• Should not describe the claimed Invention• Should use drawings to explain any prior art • If the latest art in the field (prior to the

invention at hand) is Applicants own work , then such work should not be described here

• Do not exaggerate the disadvantages of prior art

Background• Do not criticize the prior art• Example

Mesh layer

Guard panel

• Specification: – Composite guard includes guard

panel and mesh layer attached by continuous fusing or heat/ultrasonic welding

– criticized attachment means in prior art

• Background:“[t]he attachment means used in other prior art gutter guards is generally less effective, and more costly, time consuming, and labor intensive”

Background• Claim:

– Continuous heat weld...connecting said mesh layer to said guard panel

• Accused product: Mesh screen attached to guard panel by adhesive/hot glue

• Held: No literal infringement and no infringement under DOE

Background

• Background for our invention? “…At present, coffee beans are crushed/ground separately to

obtain coffee powder. Thereafter, the coffee powder is packaged and brought to be fed into the coffee dispensing machine. The aforementioned process is tedious and time consuming and further, the baldes/crushing elements of a typical crusher or a grinder are not appropriate enough to crush the coffee beans to the desired size. Therefore, having a crusher/ grinder integral to the coffee dispensing machine is desirable…”

Background

“…In the existing coffee dispensing machine as shown in Fig. _, powdered coffee is provided manually through an inlet i of the machine…”

Objects

• Should set forth broad objectives• Acts as a pointer while drafting detailed

description

Objects for our invention? “An object of the embodiments of this invention is to provide an

apparatus for crushing coffee beans and dispensing coffee.”

“Another object of the embodiments of this invention is to provide a

method for crushing coffee beans and dispensing coffee.”

Brief Description of Drawings

• Should clearly indicate that the drawings are showing embodiments of the invention and not the invention itself

• Should start with “…The embodiments of the invention is illustrated in the accompanying drawings, throughout which like reference letters indicate corresponding parts in the various figures. The embodiments herein will be better understood from the following description with reference to the drawings, in which:…”

Brief Description of Drawings

Brief description of the drawings for our invention? “Fig 1 shows a coffee dispensing machine according

to an embodiment of the present invention; andFig. 2 is a flow chart showing the process of

dispensing coffee.”

Detailed Description

• Should start with the following, or similar paragraph:The embodiments herein and the various features and advantageous details thereof are explained more fully with reference to the non-limiting embodiments that are illustrated in the accompanying drawings and detailed in the following description. Descriptions of well-known components and processing techniques are omitted so as to not unnecessarily obscure the embodiments herein. The examples used herein are intended merely to facilitate an understanding of ways in which the embodiments herein may be practiced and to further enable those of skill in the art to practice the embodiments herein. Accordingly, the examples should not be construed as limiting the scope of the embodiments herein.

Detailed Description

• Should provide sufficient details of the invention• The making and using of the invention should be

explained in depth so as to enable a person having ordinary skill in the art to practice the invention

• Details of the invention should be explained with reference to drawings

• Should disclose best mode

Detailed Description

• The terminology should be consistent• Should be well organized and easily

understandable• Start with a general overview and proceed

with increasing levels of detail• Should set forth several, if not all, alternative

working examples even if only one embodiment is illustrated in the drawings

Detailed Description

• Detailed description for our invention?

“… the apparatus 100 as shown in Fig 1 includes a housing 10. The housing 10 is provided with a first hopper 12a and a second hopper 12b on a top portion thereof. The housing 10 is adapted to receive a first container 14a, a second container 14b and a collector 16 and a dispenser 18. The dispenser 18 includes a plurality of outlets 18o. ……..”

Claims

• Should start in a different page• Should start with Preamble I/We Claim• Define the scope of protection• Every claim has a date associated with it• Every claim is an invention• What is not claimed in the “claims” stands

disclaimed

Claims

• Parts of a claim– Preamble– Transitional phrase– BodyExample Preamble Transitional Phrase

A system for……., said system comprising:element A;element B; and Body

element C.

Claim Format• Independent claim

– Stand alone– usually broad

Example1. A system for….., said system comprising: element A; element B; and

element C.

Claim Format

• Dependent claim– Dependent on independent claim or another

dependent claim– Narrow scope

Example 1. The system as claimed in claim 1, wherein

element A comprises element D.

Claim format

• Multiple dependent claim– Refers back to more than one claim in alternative– Narrow scope

Example 3. The system as claimed in claim 1 or 2, wherein

element A further comprises element E.

Claim drafting-Practical Tips

• Draft a broadest independent claim with at least one novel point and then proceed with drafting dependent claims

• Do not include unnecessary limitation in the independent claim

• Claim an apparatus in non-operational state• Do not include multiple dependent claims

ClaimsExample: Provisional specification was filed disclosing elements A B and C on

March 2, 2015. Complete specification will be filed on March 2, 2016 disclosing elements D and E along with elements A,B and C.

1. Can the complete specification claim priority from provisional specification?

2. What is the priority date of a claim claiming elements A B and C? 3. What is the priority date of a claim claiming elements D and E?4. What is the priority date of a claim claiming elements A, B, C, D

and E?

Claims

• Example 1. A chair comprising a seat and a back rest. Said chair

further having four legs.

1.A chair comprising:a seat;

a backrest; and at least one leg.

Claims

• Example: 1. A fan comprising: a rotating hub; and three wings attached to said hub.

1.A fan comprising: a hub configured to rotate; and at least one wing attached to said hub.

Claims

Claims for our invention?

Abstract

• Should be in a separate sheet • Start with the title of the invention• Should not exceed 150 words• Should indicate the figure which needs to be

published with it

Drawings

• Should be in a separate sheet• Should be accurately referenced and

described• Should show every feature of the invention

Drafting Approach • Title • Sequence of drawings• First draft of Claims• Technical field• Background• Object • Brief description of drawings• Detailed description• Final claims• Abstract

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