Structure of a Patent Specification

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patent specification

THE STRUCTURE OF A PATENT SPECIFICATION

A patent specification is a legal document, and its structure is derived and dictated by  statute and common law.

The purpose of a patent specification is to sufficiently describe a new and innovative invention so that it can be replicated and used by the public once the patentee’s exclusive term has expired.

Another purpose is to inform the public of what the patentee regards as his exclusive domain.

It defines the scope of what the patented invention (product, method and/or process) is and thus what the public is prohibited from using, making, importing, or selling unless they purchase the invention from the patentee.

Patent specifications have the following structure:

  1. Title

The specification commences with the title of the invention. Whilst this may be an obvious starting point, the title should be a simple title that doesn’t disclose the essence of the invention. The invention is defined elsewhere in the specification through carefully drafted wording and one should guard against the title influencing or limiting such definition.

Furthermore, during the application phase of a patent and up to the publication of the specification, the specification remains secret, and only the filing date, the name of the applicant/s and inventor/s and title are publicly available. One does not necessarily want your competitors to conduct searches and be able to derive from the title what you are trying to protect.

From a detailed title, competitors may also be able to make an early assessment of other factors such as in which direction your business is being steered.

  1. Field of the invention

The paragraph under this heading must also not disclose the essence of the invention for the same reasons stated above. This paragraph can be seen as an expanded title, setting out the greatest extent of the invention. It may also assist to ensure that the patent application is correctly classified into one of the many international patent classes.

  1. Background to the invention

This section discusses the state of the relevant prior art i.e., publicly known, prior creations or technologies in the same field as the invention. It also highlights the shortcomings of such prior art, which helps to show that the invention (as described later in the specification) is a step forward, inventive, and has application in trade, industry or agriculture when compared to the prior art mentioned in this section.

  1. Object of the invention

The object of the invention is broadly stated and should be achievable. For example, an object of the invention could be to provide an alternative to the prior art to at least mitigate some of the shortcomings of the prior art. This statement should be true when the invention described in the rest of the specification is contrasted to the prior art.

  1. Summary of the invention or Statements of invention

The statements of the invention define the invention and the breadth and scope of the protection (monopoly/exclusivity) sought by the patentee. They are also known as “consistory clauses” and should only define essential features of the invention. The statements of the invention form the basis for the claims at the end of the specification. Main and subsidiary statements of invention usually correspond to independent and dependent claims.

The statements of invention must be clear but must be as broad as possible to not unnecessarily limit the scope of protection sought. At the same time, the statements of invention must define a new and inventive invention when compared to the prior art.

The drafting of a patent specification is best performed by a specialist (a patent attorney) as the drafting of the statements of the invention and the claims is critical and difficult.

  1. List of drawings or brief description of the drawings

Drawings used to describe non-limiting examples of the invention are listed here. In some cases, prior art drawings are also listed here if the applicant deems it necessary to describe the prior art with reference to one or more drawings.

  1. Detailed or specific description

It is important to note that this section describes one or more non-limiting examples (also referred to as “embodiments”) of the invention. These examples are described with reference to the drawings listed in the previous section. The specific description does not limit the scope of the claimed invention.

In some jurisdictions, the preferred embodiments or the “best mode of performing” the invention must be disclosed.

The specific description must be sufficient so that a reader with average skill in the relevant art can replicate (“work”) the invention from what is described. For instance, if a specific component’s length between 150mm and 200mm is crucial for the invention to work, the description could provide an example of the invention where that component is 181mm. This example does not restrict the protection sought. The patentee’s sought protection is defined by the claims, which are discussed in the next section.

  1. Claims

Claims are not always included with a first or provisional patent application, but are included with complete, final, or other patent applications such as a Patent Co-Operation Treaty (PCT).

The claims are based on the statements of invention referred to above.

The claims are a series of one-sentence numbered paragraphs that each define the scope of protection sought by the patentee.

Main or independent claims define the broadest protection. Dependent claims recite additional features.

Claims must include sufficient detail to distinguish the invention from the prior art (to show that the invention is new and inventive) but, at the same time, be as broad and clear as possible.

If, during examination or litigation, it turns out that an independent claim does not relate to a new and inventive invention, the independent claim can hopefully be amended by including a feature claimed in a dependent claim into that independent claim. Such an amendment will reduce the scope of protection afforded by that independent claim but will hopefully remedy the objection that the claim does not distinguish the invention over the prior art (i.e., claims a new and inventive invention) whilst still providing adequately broad protection.

The claims must be clear (unambiguous) to fulfil the purpose of teaching the public what they cannot do i.e., what the exclusive domain of the patentee is.

  1. Drawings

The specification ends with the drawings, if applicable to the explanation of the specific invention. Different jurisdictions have different rules with respect to drawings. In general, the drawings are “patent” drawings and not very technical or manufacturing drawings.

  1. Sequence listings

Nucleotide and/or amino acid sequence listings are included in a specific format in respect of some biological inventions. The required format allows the extraction of information by Patent Offices and enables ease of searching.

  1. Abstract

A brief abstract summarises the invention for ease of classification of the invention into one of the various patent classes and may be required by some Patent Offices for publication in their journals.

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