OMS Patent Services

Drafting ProceduresBy Vidya

OMS Patent Services

Introduction

Each Drafting Rule sets out a guideline for drafting a

single aspect of a patent application. Guidelines

should provide direction, not absolute limits.

A Driving Rule, for example, could be stated as,

“Driving speed should be chosen with an eye to the

legal speed limit, and based on other conditions”.

rather than “Do not exceed 55 miles per hour.”

OMS Patent Services

In order for an application to be awarded patent rights, the

applicant should disclosure his/her invention to the patent

office and later to the public through a patent specification.

A patent specification is a document through which an

inventor discloses the details of his invention to the patent

office.

The patent specification is a techno-legal document that has

to be filed along with a patent application in the Patent

office.

Kinds of Specifications

A provisional specification is a document which

broadly, though not completely, discloses an inventive

concept. The provisional specification is filed mainly to

secure a “priority date” when the inventor is in need of

more time to work out the details of his invention and to

perfect the same.

A complete specification is a document discloses all

details of an invention in a sufficiently clear and

complete manner. OMS Patent Services

OMS Patent Services

Provisional SpecificationWhen there is an Urgency

Submission of thesis

Inventors/Seniors leaving the company

Accidental disclosure

Many competitors

OMS Patent Services

Complete Specification Is a techno-legal document, describing and specifically

claiming the inventionFORM 2 “ The following specification particularly describes

and ascertains the nature of the invention and the manner in which it is to be performed.”

Section 10(4)

” … specification shall fully and particularly describe the invention and its operation or use and the method in which it is to be performed; discloses the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection…”

OMS Patent Services

Patent Specification

Description Claims

•Description discusses the invention

•Claims define boundary of monopoly

OMS Patent Services

Specification draftingA specification is a techno-legal document containing

scientific information constituting patent rights.

Purpose of specification:

Disclosure details of the invention for which

protection is sought.

Define legal boundaries of the invention for which

protection is sought.

OMS Patent Services

Sufficiency of Disclosure

Disclosure of an invention in the specification is

intended for a person skilled in the art to understand

and work the invention.

Disclosure must be clear, precise, honest and open.

No doubts must be casted on the scope of the

invention.

OMS Patent Services

StructureIPO USPTO1. Title of invention;2. Field of invention;3. Background of invention with

regard to the drawback associated with known art;

4. Object of invention;5. Statement of invention;6. A summary of invention;7. A brief description of the

accompanying drawing;8. Detailed description of the

invention with reference to drawing/examples;

9. Claims; and10. Abstract.

1. Title of invention2. Cross‐reference to related

applications;3. Statement regarding federally

sponsored research or development (if any);

4. Reference to a Sequence Listing (if any);

5. Background of the invention;6. Brief summary of the invention;7. Brief description of the several

views of the drawing (if any);8. Detailed description of the

invention;9. Claims; and10. Abstract of the Disclosure.

OMS Patent Services

TitleSufficiently indicating the subject matter of the invention.

Fifteen words

Has to indicate the nature of invention.

Need not describe the invention

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

languages, the abbreviation “etc” and fancy words

may not be used in the title.

OMS Patent Services

PreambleThe following specification particularly describes the

invention and the manner in which it is to be

performed.

Name, address and nationality

Full name

Address: Place of business or residence

Nationality of applicant

OMS Patent Services

Field and Use of Invention General art to which the invention belongs.

Utility of Invention

The section may start as follows

“The invention generally relates to……”

For example, the Technical Field may state “The

invention generally relates to dispensing machines

and more particularly to a machine which dispenses

coffee”.

OMS Patent Services

Prior Art Must clearly bring out the current state of the art of

technology relating to the invention.

Identify closest prior art

Patents or applications

Technical literature

Books

Differentiate the invention from prior art

Disadvantages or problems existing with the prior art that the

invention solves.

OMS Patent Services

For example, if the invention relates to a coffee

dispensing machine in which a crusher is included, as

a novel and inventive concept, to grind the coffee

seeds, the disadvantages or drawbacks of existing

coffee dispensing machine (assuming that the concept

of grinding the coffee seeds in the dispensing machine

itself is not present in the existing coffee dispensing

machine) may be briefly discussed.

OMS Patent Services

Prior art should be written in a manner that makes the

typical reader think: “Wow! I don’t know how anyone

could ever solve this problem!”.

OMS Patent Services

Statement/ Objective of InventionStatement of invention describes the exact novel

features of the invention. It should clearly reflect the

inventive feature of the invention over the existing one.

This part is very useful to declare inventiveness of the

invention and also relates exactly to the independent

claims and to complement the omnibus claim in

situations of infringement proceedings.

OMS Patent Services

It may include statements such as “The principle object of this

invention is…..; Another object of the invention is……; yet

another object of the invention is… and so on.

Summary of Invention

Summary of invention describes a broad overview of the

invention and, thus, provide a structure for understanding the

Detailed Description and Claim sections of the specification.

The summary of the invention describes the invention overall,

e.g., the purpose of the invention, problems solved, advantages

offered, and so forth.

OMS Patent Services

Drawings Submitted on separate sheets

Made on a scale sufficiently large to show the invention

clearly

Dimensions must not be marked

Sequentially numbered

Must not have any descriptive matter unless they contain flow

diagrams

Consistent Labeling

OMS Patent Services

OMS Patent Services

OMS Patent Services

For example, “Figure 1 is a perspective view of a coffee

dispensing machine having a crusher according to an

embodiment of the invention; and

Figure 2 depicts crusher of figure 1 connected to a collecting

chamber and so on.

A black box labelled “coffee dispensing machine” with no

subcomponents will provide insufficient explanation for a

patent application that purports to disclose a “coffee dispensing

machine”.

OMS Patent Services

Detailed DescriptionThe detailed description section, sometimes known as the

“preferred embodiment of invention” section or

the “disclosed embodiment of the invention” section breathes life

into the claims.

Provides a sufficient explanation of the invention for an ordinary

person skilled in the art to make and understand the invention.

The detailed description section must be closely tied to the

drawings.

OMS Patent Services

reflects the disclosure material provided by the

inventors,

provides sufficient information to enable an ordinary

artisan to reproduce the invention and

provides sufficient depth so that the claims can be

narrowed during patent prosecution to avoid close

prior art.

The patent law of the US specifically requires that:

The specification shall contain a written description

of the invention, and of the manner and

process of making and using it, in such full, clear,

concise, and exact terms as to enable any person

skilled in the art to which it pertains, or with which it

is most nearly connected.

OMS Patent Services

OMS Patent Services

Do’s and Don'tsUse Direct sentence in the specification.

Specification should not be written in the past tense.

Provide link to the next paragraph.

Avoid “is” , “can be”, “will be”, “must” , “always”

Use “may be” in the specification.

Start the specification from the broader term and narrow

down the process to meet the exact invention in stage by

stage.

OMS Patent Services

In drafting the specification, avoid using phrases such as

“the invention is…”.

Instead use phrases like “in an embodiment of the

invention.”

Detail the essential novel features of the invention for

multiple embodiments.

Sufficient detail so as to give a complete picture of the

invention.

Specific examples.

OMS Patent Services

ClaimsThe claims are the heart of a patent, in that they define the

limits of exactly what the patent does, and does not, cover.

That is, the patentee has the right to exclude others from

making, using or selling, only those things which are

described by the claims.

Reading and understanding the claims of a patent is the

key to determining if a given product or process infringes

the patent. 

OMS Patent Services

Abstract Acts as a notice

Concise summary of the invention

Must start with the title of invention

Indicate clearly the technical field and the technical

problem and solution.

150 words

Not used for purpose of interpreting the scope of

protection.

OMS Patent Services