How to write a Patent Specification

or
How to present your Patent Agent with the necessary and relevant information in such a way as to
forestall all his/her questions and leave him/her with practically nothing to do except tidy up your
efforts a bit.

Foreword: Why you?

There is nothing mystic about writing a Patent Specification; any fool can do it given the necessary
years of hard work and training. Your Patent Agent, as thoughtfully certified by the Chartered
Institute of Patent Agents, is supposed to have that training! However, you, the inventor, are
naturally the person who best knows and understand the invention, its technical background, and the
related Prior Art, and therefore it is you - with a little help from your Agent - who is best equipped to
write the Specification

That little help may be garnered from the following Lessons:-

The general structure of a Specification.

The Introduction and the discussion of the Prior Art.
The Statement of Invention - defining what the invention is.
The Consistory Clauses - what are the options, and what is preferred.
The Specific Description describing actual instances of the invention.
The Claims - defining both the broad and the narrower, preferred, forms of the invention.
The Abstract - a summary to keep the Patent Office happy.

LESSON 1: the Specification in general

1. Every Patent Specification falls into at least six main parts. These parts are:-

(A) As the Introduction:-

(1) The Title

Don't laugh: the Title is very useful for indicating the general area into which the invention falls!

(2) The Technical Background

Many inventions deal with technology that cannot easily be understood on the basis of common
knowledge. It is therefore always desirable to explain the technical background, though it is a matter
for decision in each case how far back that explanation goes.

(3) The Prior Art

By and large, inventions are supposed to be new over, non-obvious (surprising) having regard to,
better than, or different from, the Prior Art. It often (but now always) helps to describe this Prior Art,
pointing out where it fails (or is not so good) and - thus - where the invention succeeds (or is better).

(B) As the General Description:-

(4) The Statement of Invention

Every Specification should contain a definition of what the invention is - and this means what is is,
not what it's for or what it's called. This definition must refer to the individual features, factors,
integers, what-have-you, that go to make up the essence of the inventive concept; it must not refer to
any features, etc, which, though nice, though preferred, though commercially desirable, are not
necessary.

(5) The Consistory Clauses

Following the Statement of Invention, every Specification should contain a series of paragraphs that
deal with the preferred, the nice, the commercially-desirable features, and then with any additional
features that, because they are entirely optional, have not been mentioned at all in the Statement of
Invention.

(C) As the Specific Description:-

(6) The Examples and/or Drawings

When it comes down to it, every Specification must contain a part which tells the man at the bench
how actually to put a particular aspect - a specific instance - of the invention into operation. The
Examples and/or the Drawings, and their associated Description, do just that: they dot the i's and
cross the t's - and they are supposed to be so detailed that the Reader can actually reproduce the
desired results by following them to the letter (rather like effecting a cooking recipe), without having
in any way to be inventive himself.

2. Most Specifications also contain two more parts, namely the Claims and the Abstract.

(7) The Claims

The Claims are rather like a summary of all that has gone before. They are a set of numbered
paragraphs at the end of the Specification which define, in the broadest (Claim 1) and the narrowest
(Claim Z) terms, the various necessary, preferred and optional features of the invention. The Claims
should preferably correspond, word for word, with the Statement of Invention (Claim 1) and the
"preferred" bits of the relevant Consistory Clauses (Claims 2-Z).

(8) The Abstract

The Abstract is a precis of the Specification. It sets out the technical field with which the invention is
concerned, it describes the problems of the Prior Art, and it summarises the solution to those
problems as provided by the invention itself. And all this in about 300 words!

LESSON 2: The Specification in particular

The Introduction

1) The Title

The purpose of the Title is to confuse the Competition while at the same time telling the Applicant or
Inventor - you - which invention is being dealt with (if the Title is really too confusing then the
Patent Office Examiner will request a suitable amendment). The real Title can follow on (using the
mystic words "More particularly, the invention concerns ...").

For example, when writing a Specification about an invention concerning the use of a particular
variety of amphoteric surfactant to stabilise edible herbal compositions in the form of invert
emulsions of the active ingredient dispersed in a vegetable oil (salad cream!) a suitable title might be
"Food compositions", and the Specification might then go on to say that the invention related more
particularly to such compositions in the form of invert emulsions.

2. The Technical Background

You have to remember that, although you fully understand both your invention and the technology
that relates to it, that is because a) you are very clever, and b) you made the invention. Other people,
unfortunately, are by comparison quite stupid - and in addition may well not be so steeped in the
technology concerned. You must also remember that the ultimate purpose of a Patent Specification is
not to serve as a useful (or not so useful) source of technical information to a person already skilled
in the relevant Art (such as yourself) but is instead to serve as the proof that the Patentee - you? - has
the right to sue the pants off any Competitor who uses the invention without paying for the privilege.
As such, you should think of the Specification as being addressed not to the skilled man but rather to
the man who will preside over the Court Action, and who will decide the case - the Judge.

The Judge knows nothing useful about any technology; if he has had any technical training at all, it
was 30 or 40 years ago, and so is now incredibly out of date! Accordingly, in order properly to hear
the Case, the Judge must be told something about the technology concerned. It is of course true that,
if the Specification itself doesn't tell him, you can always tell him yourself during the Action - but in
that situation the infringing Competitor will be telling him as well, and you can bet your life that the
Competitor will explain things in a way designed to support his side of the matter, not yours. This
difficulty can, at least in part, be avoided by giving your explanation in the Specification itself.

The explanation should meet two main - and sometimes conflicting - criteria. Firstly, it should be
simple; remember, the Judge doesn't know a transistor from a half-brother, and thinks that a micron
is yet another sub-atomic particle. Secondly, it should be technically correct; if not, then the
Competition will have a field day casting aspersions upon the veracity of the entire Specification!

3. The Prior Art

The purpose of discussing the Prior Art is to set up the Reader (ultimately the Judge) to appreciate
how wonderful your invention is. One is selective about what Prior Art is discussed; it is very silly to
describe something that is almost the same as the invention, for the prime necessity is to distinguish
between the two - and, if you can't do this easily then don't discuss the Prior Art at all! It is very silly
to mention actual Prior Art documents unless you are absolutely positive that they do not anywhere
contain anything remotely likely to damage the invention (and, if that is really the case, then you
probably don't need to refer to the documents anyway!).

One is also selective about what aspects of the Prior Art are discussed. In general, only talk about
such features as are demonstrably inferior to the corresponding features of the invention. The best
Prior Art discussions are those which are vague, talk in generalities, and tell the truth, yes, but
preferably not the whole truth.

If possible, a Prior Art discussion should end with a specific - but vague - statement about how the
invention is believed to be better!

LESSON 3: The Specification in particular

The General Description (part 1)

4. The Statement of Invention

It is in defining the invention, by way of the Statement of Invention (the S of I) and/or the Main
Claim, that a Patent Agent pays for his keep - or not, as the case may be. The skill required really is
acquired only after years of trying.

But don't be put off!

Consider the following not-so-random points:-

(a) The S of I defines what the invention is, not what it's used for, nor the purpose for which it is
intended, nor how wonderful and cheap it is.

(b) Do not confuse what the invention is called with what it is. What it is called is merely a
convenient handle to describe the invention, whereas what it is should somehow constitute the
essence of the whole concept.

(c) An invention can usually be defined in more than one way, for inventions come in various guises
(aspects), and more than one of these may be applicable in any particular case. Typical such guises
are:-

The new device - a thing, an object, an article, a gadget, a piece of apparatus, a chemical compound
or composition.
The Claim - the definition - will often make no reference to the purpose of the device, or to any
apparatus of which the device might normally form a part.
The new device when combined - a new device, as in (1) above, which is part of an apparatus, when
combined with all the rest of that apparatus. The Claim/definition now relates to the apparatus as a
whole.
The new use - a new process or method for doing something (with an old or new device or an old or
new device combination).

Processes/methods are always defined in terms of what you start with, what you do to it, and what
you end up with. Most processes are old in the sense that the type of operation carried out is
generally well known (albeit for some other purpose). In such a case the novel features are clearly
what you start and end with. A few processes, however, are new in the sense that the type of
operation itself is a brand new one (once upon a time somebody first polarised a ray of light). In such
cases - which are rare - the novel feature is of course the operation carried out.

(d) Every invention is always defined/claimed in every possible way and in terms appropriate to
every possible guise or aspect (why defend yourself with a one-shot pistol when you could use a
machine gun?). Thus - as you will readily appreciate - for every aspect of the invention there is a S
of I (and the consequent Consistory Clauses). Each aspect should always be dealt with fully before
the next is introduced and discussed.

By and large, Device Claims - Claims to an actual piece of equipment, which you can relatively
readily track down and identify - are better than Use Claims (it may not be easy, unless the
Competition is caught red-handed, to determine whether anything has been done according to a
defined Process). However, if both are available then both should be included, so there should be a S
of I to each.

(e) The S of I defines the features essential to the invention. It includes what needs to be included,
and excludes - though usually simply by omission rather than by positive exclusion - what needs to
be excluded. It does not include features which are merely preferred (either preferred sub-types of
essential features or preferred but optional features). It does not exclude features which you'd never
thought about (you'd be surprised how easy it is to exclude something useful by accident!). If some
feature is deliberately either included or excluded you need a good reason!

(f) For an interesting fairy tale about the problem of getting a properly-drafted S of I, ask for the
"Wiggly-legged hairpin" story.

Some of the problems to be faced when drafting a S of I can be seen from the following:-
Imagine that what we call a table is not in fact known, and that you have just invented one.
Specifically, you have invented a four-legged 5x6 oblong table in elm, and now you want to get a
Patent for it. What, then, is it that you have actually invented? What is the essential concept behind
the particular embodiment you have constructed?

Is the "elm" feature essential? No - any wood (oak, ash, pine) could be used.

Is the "wood" feature essential? No - any suitable structurally-rigid material (concrete, metal, glass,
plastic) could be used.

Is the shape essential? No - any shape (square, round, triangular) could be used.

Are the dimensions essential? No - any size (large, medium, small) could be used.

Are the four legs essential? No - any number (one, three, six, eight) of legs could be used.

Are the legs essential? No - any sort of support (hovercraft cushion, magnetic levitation, strings from
the ceiling, cantilevered arms) could be used.

So, what, then, is the invention? What is the essential concept of a table?

Try this:

A table is a substantially flat surface having means to support it above the floor.

It has to be admitted that this is not the world's best definition of a table - apart from any other
problems (What does "substantially flat" mean? How much "above" is "above"? What's a "floor"?),
it includes chairs, shelves, window ledges and flat roofs! - but the approach should illustrate in an
understandable manner the problem of getting to the true nub of the invention ... of discarding all the
inessential dross that relates only to a particular example of the idea and so ending up with a nugget
constituting the very essence of the idea.

And, while on the subject of ideas, of course one can patent an idea (almost anything is patentable
given enough hard work) ... but the idea must be definable in words, and in the end what one gets in
practice is a definition of a generalised embodiment of the idea. After all, the idea behind a table is
that it should be something convenient to put things on, rather than let them stand on the floor - and
that, really, is what the suggested definition given above is trying to embody.

In fact, it is usual that if "ideas" are not patentable in themselves it is not because they are simply
ideas but because they relate to things which are either specifically determined (by the current
Patents Act) to be unsuitable for protection by the Patent System - business schemes, literary works,
mathematical formulae, computer software, medically treating people - or because they are merely
statements of things that are obviously good to have or do but without describing how those things
are to be achieved. In the latter case, where the idea is an obvious desideratum, the real invention lies
in finding out how to achieve the desired end, not in merely re-stating what it is.

LESSON 4: The Specification in particular

The General Description (part 2)

5. The Consistory Clauses

(a) When defining the invention - the inventive concept - in the S of I you have, very properly, left
out all unnecessary features, all features of preference. Now, however, is the time and place to put all
the features of these sorts into the Specification.

(b) Deal first with the features specifically mentioned in the S of I. Take each in order, and expound
upon it, giving the whys, the wherefores, the several possible alternatives, and the specifically
preferred cases (with their whys and wherefores). Here should go explanations - of unusual
words/terms/expressions, or reasons for this and that, of difficulties which might arise if the bits and
pieces of the invention are put together in extreme ways. Remember: if you can't make the Judge
understand, you can be sure the Competition will!

(c) Having dealt with all the features mentioned in the S of I, then discuss, in the same way, all the
features which, because they are optional, are not mentioned in the S of I - extra components, extra
conditions, etc.

(d) When expounding upon any particular feature, always start with the broad case and work your
way, in easy stages, down to the narrow case (usually an actual embodiment of the feature).
Desirable, the chosen actual embodiment is what you intend to make/use/sell, and will also be found
in the Examples/Drawings (see below).
(e) Be frank and truthful. If you don't know why it works, say so. If some things are worse than
others, say so.

(f) There is nothing wrong with mentioning Trade Names (Trademarks). However, do it in CAPITAL
LETTERS ... and, remembering that SURF today is new SURF tomorrow, and new blue SURF with
the added whatever the day after, you should, if you know, say - as well - what the thing or stuff
actually is.

(g) Always write more rather than less. You can usually delete stuff if it turns out to be inappropriate,
but you can never add what you left out, even if - especially if - it turns out to be vital to an
understanding of the true nature and scope of the invention!

What about an example of all this?

Suppose that the invention was a chemical process, and that the S of I had included, as one of its
essential features, a "catalyst means" for a reaction in that process. Now, in the subsequent part of
the Specification, one might say that the catalyst could be any alkaline catalyst, but was conveniently
an alkali metal hydroxide, very preferably sodium hydroxide, and that though it could be employed
in those small amounts commonly referred to as "catalytic" nevertheless - and for reasons not
presently fully understood - it was most preferably used on a mole-for-mole basis with one of the
other reagents, and at a concentration of from 0.01 to 0.1N in the solution.

Or, returning to the table example mentioned above, whereas the S of I might say that there was a
substantially flat surface, the subsequent expansion and explanation might say that the surface
would, of course, be the surface of some material object, and the material could be any appropriate
rigid material capable of supporting whatever load the table was to carry ... and that while typical
such materials were concrete, a metal such as copper or stainless steel, glass (especially heat-
resistant, toughened or laminated glass), and plastic (for example, a rigid polyurethane foam),
nevertheless the preferred material was wood (because wood looks nice, is easy to cut and shape,
and is relatively cheap), and a particularly-preferred wood was elm.

LESSON 5: The Specification in particular

6. The Specific Description with reference to the Examples/Drawings

As noted above, every Specification must contain a part which describes how actually to put a
particular aspect - a specific instance - of the invention into operation. This is what the Examples
and/or the Drawings, and their associated Description, are supposed to do. And accordingly, their
part of the Specification is called the Specific Description (by contrast with the previous part, the
General Description, which is all about general matters).

(a) The Examples/Drawings (and the Text associated therewith) are supposed to be about actual
embodiments of the invention as defined in each of its various aspects. Thus, an Example/Drawing
might show the construction - the structure - of a particular device, its incorporation into a particular
apparatus, and the application of that apparatus to some particular use.

(b) Note that the Example/Drawings part is all about one (or more) particular - that is to say, specific
- part of the invention. Accordingly, it should not include any general comments, for these belong in
the General Description.

(c) The purpose of the Examples/Drawings is, basically, to prove that you really have done what you
say you've done, to prove that it works and is useful where you say it works and is useful, and to
enable the Worker in your Competitor's Lab. to repeat your efforts with the same result.

If the invention is defined broadly but the Examples/Drawings do not illustrate sufficient of the
defined area, then you may lose out for being greedy. If you can't prove the invention works where
you say it works - and if it turns out not to work there - then you lose out for being careless. If the
invention does not work where the "fudged" Examples/Drawings say it does work, then you lose out
for lying.

(d) In most cases the Specific Description should read like a child's step-by-step guide - like a tidied-
up version of a Lab. Notebook, or better - like a "paint-it-by-numbers" supplement. Write it so that
no-one could go wrong repeating the operation or designing the apparatus.

(e) The Examples/Drawings are supposed to exemplify/describe the invention. Make sure they do!

However, it may well be desirable that the invention be specifically described with reference to some
Prior Art device or process. This may be so a) because it's the best way to ensure the Reader really
understands the technology, and/or b) because only by comparing the invention and the Prior Art can
the true advantages and benefits of the former over the latter be seen with the required degree of
clarity.
And where comparisons are in order, the magic phrase is "Comparative Test Results". It's not good
enough merely to assert that the invention is better; you need to provide proof to back up such an
assertion. If, for example, the invention's design of radar antenna gives a better sensitivity pattern (or
what-have-you), then provide the Polar Diagrams to show this!

As you will appreciate, proper Examples etc can only be provided if you have actually made or used
the invention; they are not available - and should not be faked - when the invention is merely a
twinkle in your eye, and has not even been worked out on paper, let alone been reduced to practice.

LESSON 6: The Specification in particular

7. The Claims and Abstract

This is a very short Lesson: do not trouble yourself with the Claims or Abstract, for although they
must eventually be prepared and filed (within one year of the date of the Patent Application to which
the Specification belongs) they do not need to be a part of the Documentation until then.

However, you might just care to note that the term "Claims" refers to the numbered paragraphs at the
end of the Specification define the invention and its various preferred features, and is nothing
whatsoever to do with the promises an Adman might swear - the claims he might make - for the
value and advantages of the invention.

And for an interesting fairy tale illustrating the reasons for the accepted structure of a set of Claims,
ask your Patent Agent for the "fortified castle" story.

AFTERWORD: By way of illustration only

For those who are interested there is available an example of a Specification written to illustrate
most of the point made above. It concerns a mythical invention relating to hairgrips. Enjoy!

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(Copyright) John Hooper 1978/1999

5 Haslingfield Road, Harlton, Cambridge, England, 01223 263729
john-hooper@patents.demon.co.uk