BASICS OF PATENTBASICS OF PATENTSPECIFICATION DRAFTINGSPECIFICATION DRAFTING

By

SomashekarPartner, BananaIP Counsels LLP

Object of Patent LawObject of Patent LawThe 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 ApplicationForm of ApplicationPatent 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 ActIn the Indian Patent ActSection 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 ContentsSpecification Contents Title Preamble Technical field Background Objects Brief description of the drawings Detailed description Claims Abstract Drawings

Example InventionExample InventionCoffee dispensing machine in which a

crusher/grinder for grinding coffee beans is included as a novel and inventive concept

TitleTitle

1. Should be provided in the first page of Form-2

2. 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

TitleTitle6. 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”

PreamblePreambleShould be provided in the first page of

Form-2Provisional 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 FieldTechnical FieldProvided in page 2 of Form-2Should indicate general art to which the

invention belongsAreas 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”

BackgroundBackgroundDistinguish the invention from what is

already existing in the fieldShould not describe the claimed InventionShould 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

Do not criticize the prior artExample

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”

BackgroundBackground

Claim:◦ 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

BackgroundBackground

Background 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…”

BackgroundBackground

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

ObjectsObjectsShould set forth broad objectivesActs as a pointer while drafting detailed

description

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

apparatus for crushing coffee beans and dispensing coffee.”

“Another object of this invention is to provide a method for crushing coffee beans and dispensing coffee.”

Brief Description of DrawingsBrief Description of DrawingsShould 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 DrawingsBrief 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; and

Fig. 2 is a flow chart showing the process of dispensing coffee.”

Detailed DescriptionDetailed DescriptionShould 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 DescriptionDetailed DescriptionShould provide sufficient details of the

inventionThe 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 Detailed Description The terminology should be consistentShould be well organized and easily

understandableStart with a general overview and

proceed with increasing levels of detailShould set forth several, if not all,

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

Detailed Description 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. ……..”

ClaimsClaimsShould start in a different pageShould start with Preamble I/We ClaimDefine the scope of protectionEvery claim has a date associated with itEvery claim is an inventionWhat is not claimed in the “claims”

stands disclaimed

ClaimsClaimsParts of a claim◦ Preamble◦ Transitional phrase◦ Body

Example Preamble Transitional Phrase

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

element C.

Claim formatClaim formatIndependent claim◦ Stand alone◦ usually broad

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

element C.

Claim formatClaim formatDependent 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 formatClaim formatMultiple 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 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

ClaimsClaimsExample: 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?

ClaimsClaimsExample 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.

ClaimsClaimsExample: 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.

ClaimsClaims

Claims for our invention?

AbstractAbstractShould be in a separate sheet Start with the title of the inventionShould not exceed 150 wordsShould indicate the figure which needs to

be published with it

DrawingsDrawingsShould be in a separate sheetShould be accurately referenced and

describedShould show every feature of the

invention

Drafting approach Drafting approach Title Sequence of drawingsFirst draft of ClaimsTechnical fieldBackgroundObject Brief description of drawingsDetailed descriptionFinal claimsAbstract

THANK YOUFor further information contact:

rsshekar@bananaip.comand/or visit:

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