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BASICS OFSPECIFICATION DRAFTING
bySomashekar Ramakrishna
PartnerBananaIP
Copyright 2016, Banana IP Counsels 1
Object of Patent Law• The object of Patent Law is to encourage scientific research,
new technology and industrial progress. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of the monopoly, passes into the public domain. Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries on 13 December, 1978
SPECIFICATION
Copyright 2016, Banana IP Counsels 2
Specification Types
• Provisional Specification
• Complete Specification
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In the Indian Patent Act• Section 7(4)- Every such application….shall be accompanied by a
provisional or complete specification
• Section 10(1) Every application…shall describe the invention and…begin with a title…
• Section 10 (4)- every complete specification shall• Fully and particularly describe the invention• Disclose the best method• End with a claim• Be accompanied by an abstract
• And so on….
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Specification Contents• Title• Preamble• Technical field• Background • Objects • Brief description of the drawings• Detailed description• Claims• Abstract• Drawings
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Perspectives
• Invention (X+1)
• Third Party
• Patentability/Examination
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Example Invention
• Coffee dispensing machine in which a crusher/grinder for grinding coffee beans is included as a novel and inventive concept
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Title
1. Should be provided in the first page of Form-22. Should indicate the subject matter3. Should not be more than 15 words4. Should be free from fancy expression or
ambiguity5. Inventor’ s name, the word “patent”, words in
other languages and so on should not be used
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Title
6. Should correspond to the broadest claim7. Should embrace all variants of the invention (apparatus
and method)
Title for our Invention? “Apparatus and method for dispensing coffee” “Coffee dispensing Machine and method of dispensing
coffee”
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Preamble
• Should be provided in the first page of Form-2• Provisional Specification
– The following specification describes the invention
• Complete Specification – The following specification particularly describes
the invention and the manner in which it is to be performed
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Technical Field
• Provided in page 2 of Form-2• Should indicate general art to which the
invention belongs• Areas of application may be mentioned Technical field for our invention? “The embodiments herein generally relate to
dispensing machines and more particularly to an apparatus and method for dispensing coffee”
Copyright 2016, Banana IP Counsels 11
Background
• Distinguish the invention from what is already existing in the field
• Should not describe the claimed Invention• Should use drawings to explain any prior art • If the latest art in the field (prior to the
invention at hand) is Applicants own work , then such work should not be described here
• Do not exaggerate the disadvantages of prior art
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Background• Do not criticize the prior art• Example
Mesh layer
Guard panel
• Specification: – Composite guard includes guard
panel and mesh layer attached by continuous fusing or heat/ultrasonic welding
– criticized attachment means in prior art
• Background:“[t]he attachment means used in other prior art gutter guards is generally less effective, and more costly, time consuming, and labor intensive” Copyright 2016, Banana IP Counsels 13
Background• Claim:
– Heat weld...connecting said mesh layer to said guard panel
• Accused product: Mesh screen attached to guard panel by adhesive/hot glue
• Held: No literal infringement and no infringement under DOE
Copyright 2016, Banana IP Counsels 14
Background
• Background for our invention? “…At present, coffee beans are crushed/ground separately to
obtain coffee powder. Thereafter, the coffee powder is packaged and brought to be fed into the coffee dispensing machine. The aforementioned process is tedious and time consuming and further, the baldes/crushing elements of typical a crusher or a grinder are not appropriate enough to crush the coffee beans to the desired size. Therefore, having a crusher/ grinder integral to the coffee dispensing machine is desirable…”
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Background
“…In the existing coffee dispensing machine as shown in Fig. _, powdered coffee is provided manually through an inlet i of the machine…”
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Objects
• Should set forth broad objectives• Acts as a pointer while drafting detailed
description
Objects for our invention? “An object of this invention is to provide an apparatus for
crushing coffee beans and dispensing coffee.”
“Another object of this invention is to provide a method for
crushing coffee beans and dispensing coffee.” Copyright 2016, Banana IP Counsels 17
Brief Description of Drawings
• Should clearly indicate that the drawings are showing embodiments of the invention and not the invention itself
• Should start with “…The embodiments of the invention is illustrated in the accompanying drawings, throughout which like reference letters indicate corresponding parts in the various figures. The embodiments herein will be better understood from the following description with reference to the drawings, in which:…”
Copyright 2016, Banana IP Counsels 18
Brief Description of Drawings
Brief description of the drawings for our invention? “Fig 1 shows a coffee dispensing machine according
to an embodiment of the present invention; andFig. 2 is a flow chart showing the process of
dispensing coffee.”
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Detailed description• Should start with the following, or similar paragraph:• The embodiments herein and the various features and advantageous
details thereof are explained more fully with reference to the non-limiting embodiments that are illustrated in the accompanying drawings and detailed in the following description. Descriptions of well-known components and processing techniques are omitted so as to not unnecessarily obscure the embodiments herein. The examples used herein are intended merely to facilitate an understanding of ways in which the embodiments herein may be practiced and to further enable those of skill in the art to practice the embodiments herein. Accordingly, the examples should not be construed as limiting the scope of the embodiments herein.
Copyright 2016, Banana IP Counsels 20
Detailed Description
• Should provide sufficient details of the invention• The making and using of the invention should be
explained in depth so as to enable a person having ordinary skill in the art to practice the invention
• Details of the invention should be explained with reference to drawings
• Should disclose best mode
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Detailed Description
• The terminology should be consistent• Should be well organized and easily
understandable• Start with a general overview and proceed
with increasing levels of detail• Should set forth several, if not all, alternative
working examples even if only one embodiment is illustrated in the drawings
Copyright 2016, Banana IP Counsels 22
Detailed Description
• Detailed description for our invention?
“… the apparatus 100 as shown in Fig 1 includes a housing 10. The housing 10 is provided with a first hopper 12a and a second hopper 12b on a top portion thereof. The housing 10 is adapted to receive a first container 14a, a second container 14b and a collector 16 and a dispenser 18. The dispenser 18 includes a plurality of outlets 18o. ……..”
Copyright 2016, Banana IP Counsels 23
Claims
• Should start in a different page• Should start with Preamble I/We Claim• Define the scope of protection• Every claim has a date associated with it• Every claim is an invention• What is not claimed in the “claims” stands
disclaimed
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Claims
• Parts of a claim– Preamble– Transitional phrase– BodyExample Preamble Transitional Phrase
A system for……., said system comprising:element A;element B; and Body
element C.
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Claim Format• Independent claim
– Stand alone– usually broad
Example1. A system for….., said system comprising: element A; element B; and
element C.
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Claim Format
• Dependent claim– Dependent on independent claim or another
dependent claim– Narrow scope
Example 1. The system as claimed in claim 1, wherein
element A comprises element D.
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Claim format
• Multiple dependent claim– Refers back to more than one claim in alternative– Narrow scope
Example 3. The system as claimed in claim 1 or 2, wherein
element A further comprises element E.
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Claim drafting-Practical Tips
• Draft a broadest independent claim with at least one novel point and then proceed with drafting dependent claims
• Do not include unnecessary limitation in the independent claim
• Claim an apparatus in non-operational state• Do not include multiple dependent claims
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Claims
• Example 1. A chair comprising a seat and a back rest. Said chair
further having four legs.
1.A chair comprising:a seat;
a backrest; and at least one leg.
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Claims
• Example: 1. A fan comprising: a rotating hub; and three wings attached to said hub.
1.A fan comprising: a hub configured to rotate; and at least one wing attached to said hub.
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Claims
Claims for our invention?
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Abstract
• Should be in a separate sheet • Start with the title of the invention• Should not exceed 150 words• Should indicate the figure which needs to be
published with it
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Drawings
• Should be in a separate sheet• Should be accurately referenced and
described• Should show every feature of the invention
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Drafting Approach • Title • Sequence of drawings• First draft of Claims• Technical field• Background• Object • Brief description of drawings• Detailed description• Final claims• Abstract
Copyright 2016, Banana IP Counsels 35
THANK YOUFor further information contact
rsshekar@bananaip.comand/or visit
www.bananaip.comBlog: www.sinapseblog.com
Copyright 2016, Banana IP Counsels 36
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