Patent Dna: By Nitin Nair Brain League Ip Services

Patent DNA By Nitin Nair Brain League IP Services

© 2009 Brain League IP Services Pvt. Ltd.

Sections of a patent specification        

Abstract Field of invention/technical field Background of invention/prior art Objects of the invention Summary of invention Brief description of figures Detailed description Claims

Requirements for a specification  35 U.S.C §112 paragraph 1:  “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, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Requirements for a specification  In other words, the requirements of a specification are A) The enablement requirement; B) The best mode requirement; and C) The written description requirement.

Requirements for a specification A) Enablement requirement: The inventor must disclose the invention in sufficient detail to allow one of ordinary skill in the art to practice the invention without undue experimentation. This requirement extends only to the invention “as claimed”.

Requirements for a specification  The level of detail in the specification depends on the level of a fictional “person of ordinary skill in the art”

Requirements for a specification  1) 2) 3) 4) 5) 6) 7) 8)

Factors that need to be considered whether a disclosure requires undue experimentation: the quantity of experimentation necessary; the amount of direction or guidance presented; the presence or absence of working samples; the nature of the invention; the state of the prior art; the relative skill of those in the art; the predictability or unpredictability of the art; the breadth of the claims.

Requirements for a specification  MPEP states that “while no specific universally applicable rule exists for recognizing an insufficiently disclosed application involving computer programs, an examining guideline to generally follow is to challenge the sufficiency of such disclosures which fail to include either the computer program itself or a reasonably detailed flowchart which delineates the sequence of operations the program must perform.”

Requirements for a specification  MPEP states that with regards to the hardware side of the invention “the examiner should determine whether certain of the hardware or software components depicted as block elements are themselves complex assemblages which have widely differing characteristics and which must be precisely coordinated with other complex assemblages.”

Requirements for a specification In case of ASIC design, ideally describe the simulation program and then illustrate the operations performed by the hardware using flow charts or state diagrams.

Requirements for a specification B) Best mode requirement: Disclose the last, best way of making or using the invention that is known to the inventor at the time of filing the application. The subject matter which is needed to implement or use the invention in the best way known to the inventor at the filing is subject to the best mode requirement, whether or not it is claimed. Only relates to the operation of the invention as claimed.

Requirements for a specification  Violating the best mode requirement: a) Intentional concealment b) Accidental concealment (an inventor intends to disclose a key element of a invention, but does not do so in sufficient detail to allow a skilled person to practice the invention)

Requirements for a specification C) Written description requirement - To explain how to make and use the invention - To convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention. The written description can also be satisfied by figures or by an appendix.

Requirements for a specification  Issues relating to the written description arise during prosecution a) If claims have been made broad by an amendment, then the new claim should be supported by the description. b) If claims have been made narrow by an amendment, then the new claim should be supported by the description.

Requirements for a specification  A patent’s claims must be read in view of the specification, of which they are a part. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. A patentee is free to become his own lexicographer. The caveat is that any special definition given to a word must be clearly defined in the specification. To construe claim language, the court should also consider the patent’s prosecution history, if it is in evidence. The court may in its discretion, receive extrinsic evidence in order to aid the court in coming to a correct conclusion as to the true meaning of the language employed in the patent.

Steps in preparing a specification A) Understanding the invention B) Describing the invention (i) functional block diagrams (ii) flowchart diagram (iii) state diagrams C) Alternative embodiments

Points to be noted while writing background/prior art  Write as much detail as possible.  Attempt to differentiate the prior art from the invention.

Claim drafting  35 U.S.C §112 paragraph 2:  “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

Points to be noted while drafting claims  Think from the point of view of the inventor and from the point of view of a potential infringer.  Ensure sufficient support for each claim is present in the description.  Support may be in the form of written description or figures/drawings.

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© 2009 Brain League IP Services Pvt. Ltd.