Patent Drafting

Dr. Richa Singh

 Prior to Drafting
 Look into the nature of the invention
 Understand the invention wrt the criteria of patenting
 Whether a patentable subject matter?
 Decide how best to protect, bring out novelty & inventive
step
 Patentability search
 Directed towards identifying the inventive step (and not
for novelty)
 Search for anticipation by prior-art is to be done by PATENT
EXAMINER
How to
Pitch
an
Invention
?
 Patent Specification
 A document providing technical details and legal
protection
 Describes the invention
 Provides the scope of protection and patent rights
 Decides monopoly of the product / process
 Describes the technical details and utility to public

 Two types
 Provisional specification
 Complete specification
 Contents of Complete Specification
 Title of the invention
 Field of the invention
 Background & Prior art of the invention
 Objectives of the invention
 Summary of the invention
 Detailed description of the invention
 Examples
 Drawings, if any
 Claims
 Abstract (specification accompanied by abstract)
 Title
 Sufficiently indicative of the subject matter of the invention
 Shall disclose the specific features of the invention
 Brief, precise, definite, no ambiguity
 Should not ordinarily exceed 15 words
 Not permissible in title –
 Inventor’s name
 The word “patent”
 Words in other languages
 Abbreviations, such as etc
 Fancy words
 Technical Field / Field of Invention

 Should preferably begin with a general statement of the

invention as to indicate briefly the subject matter
 “This invention relates to…”
 Advantages of the invention may be mentioned to clarify
the preferable use of the invention
 May substantiate industrial applicability of the invention
Background &
Prior Art
 Objectives

 Clearly bring out the necessity of the invention

 Clearly mention the technical problems associated with
existing technology and the solution for that, bringing out the
difference between the claimed invention and the prior art
 The solution sought by the invention should be clearly
brought out as object(s) of inventions with statements like “It
has already been proposed ..................” followed by the
objects which the inventions has in view
 “The principal object of this invention is ...............”, “Another object of this
invention is .................”, “A further object of this invention is .............” etc.
 Summary
 Clearly set forth the
distinguishing novel
features of the invention
for which protection is
desired
 Intended to declare
different aspects of the
invention
Gist of the invention

Reflect the broadest claim

 Detailed Description
 Required to be furnished in sufficient detail
 Should give complete picture of the invention
 Sufficient for a person skilled in the art to perform the invention
 Nature of improvements / modifications wrt prior art
 Starts with general overview of invention, narrows down to
details of theory and all processes / methods for making and
using the invention
 Describe with the help of preferred embodiment (i.e. Best
Mode)
 Alternative embodiments can be disclosed
 Requirement of utility, best mode and enablement should be
met
 May include examples / drawings or both for clear
description and ascertaining the nature of invention

 Reference to drawing should be specific and numbered

 When a biological material is described in the

specification and when such material is not available to
the public and cannot be described adequately as per the
provisions of the Act, such material shall be deposited in
order to make the application complete.
 Examples
 Are like materials and methods section of manuscript
 Drawings
 Special illustration of the invention is required
 Shall not appear in the description itself, but on a
separate sheet
 Reference has to be given in the description
 Neat, clear, on a durable paper sheet, A4 size
 Margin – 4 cm top/left ; 3 cm bottom/right
 Should be drawn on a scale sufficiently large to show
inventions clearly without any dimensions marked on the
drawings
 Drawings shall be sequentially or systematically
numbered
 Components/parts should also be numbered and cross-
referenced
 Each drawing shall bear—
 in the left hand top corner, the name of the applicant;
 in the right hand top corner, the number of the sheets of
drawings, and the consecutive number of each sheet; and
 in the right hand bottom corner, the signature of the
applicant or his agent.
 No descriptive matter shall appear on the drawings except
in the flow diagrams
Claims
 Define the essential elements, legal limits and scope
 It should be supported by the specification
 It should be consistent with the title of the invention
 Clear, accurate, precise and concise
 What is not claimed in “claims” stand disclaimed, and is open
to public use, even if the matter is disclosed in the description
 Each claim is evaluated on its merit
 If one of the claims is objected, it does not mean that the rest
of claims are invalid.
 All the claims combine to form single inventive concept
 Claims should start as “I / We Claim” (as applicable)
 Claims should start from fresh page
 Claim types
 Independent
 First claim is always independent
 First claim is also known as Principal Claim
 Broad
 Multiple embodiments can be covered
 Dependent
 Dependent on either independent or other dependent claims
 Add further limitation to preceding claims
 Multiple dependent claims
 Elements of a claim
 Single sentence, clearly worded
 Three parts
 The preamble
 The transitional phrase
 The body of the claim
 a. The preamble
 An introductory statement
 Legally not limiting constraint
 Identifies the category of the invention
 An apparatus / a device / an article / a composition /
a method / a process
 Sometimes define purpose
 A machine for waxing paper
 Should be consistent with the title of the invention
 Examples of the preamble
 Object of invention – to cook rice
• An apparatus for cooking rice
 Object of invention – Cooking all types of grains
• An apparatus for cooking grains
 Object of invention – also to cook vegetables and other
foodstuffs
• An apparatus for cooking
 b. The transitional phrase
 Open ended phrase
 Comprising / including / containing / characterized by
 Do not exclude any additional unrecited elements
 Expand the scope of the claim by allowing for other elements
or limitations
• If a claim recites elements A & B
– If you use A and B  infringing
– If you use A, B and C  infringing
– If you use either only A or B  not infringing
 Close ended phrase
 Consisting of / consisting essentially of
 Limits the scope of the claim to nothing more than the
specifically recited elements
 Claim covers only elements named and nothing more
• If a claim recites elements A & B
– If you use A and B  infringing
– If you use A, B and C  not infringing
 If the invention is an improvement on a product or a
process existing in the prior art, the invention should be
distinguished very clearly by characterizing the claim with
respect to the prior art.
 In such cases, the claim will have two parts separated by
the word “characterized by”/ “wherein the improvement
comprises”.
 The part coming before “characterized by” is the prior art
while that comes after will be the features of the invention
 c. The body
 Legally limiting constraint
 Must recite the element of the invention
 Parts and their attachments
 Compositions
 Process steps
 Association of the elements i.e. explains how the
different elements exist in relationship to one another
Examples of open ended claim
 A therapeutic composition, comprising: a polynucleotide
having the sequence of SEQ ID NO:1.
or,
 An expression vector, operable in eukaryotic host cells,
which comprises a polynucleotide having the sequence of
SEQ ID NO:1.
• In two examples, elements are claimed that include SEQ ID
NO:1, but may also include any other unnamed elements; the
only restriction is that contains, at least, SEQ ID NO:1.
• These types of claims may be fairly broad, as any composition
that has SEQ ID NO:1 in it would infringe on these claims.
Examples of close ended claim
 A therapeutic composition, consisting of: a protein having
the sequence of SEQ ID NO:2 and a suitable buffer.
• The below given claim covers only the composition of SEQ ID
NO:2 and a suitable buffer.
• If there were any additional elements added to the mixture
(that were not defined in the specification as being
components of a "suitable buffer"), then the composition
would not be covered by that claim.
Abstract
 Revision…
 Title of the invention
 Field of the invention
 Background & Prior art of the invention
 Objectives of the invention
 Summary of the invention
 Detailed description of the invention
 Examples
 Drawings, if any
 Claims
 Abstract (specification accompanied by abstract)
Thank you…