Patent DNA

8/14/2019 Patent DNA

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Patent DNA

By

Nitin

Brain League IP Services


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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


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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 termsas to enable any person skilled in the art towhich it pertains, or with which it is mostnearly connected, to make and use the

same, and shall set forth the best modecontemplated by the inventor of carryingout his invention.


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In other words, the requirements ofa specification are

A) The enablement requirement;B) The best mode requirement; and

C) The written description requirement.


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A) Enablement requirement:

The inventor must disclose the

invention in sufficient detail to allowone of ordinary skill in the art topractice the invention without undueexperimentation.

This requirement extends only to theinvention as claimed.


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The level of detail in the specificationdepends on the level of a fictionalperson of ordinary skill in the art


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Factors that need to be considered whether adisclosure requires undue experimentation:

1) the quantity of experimentation necessary;

2) the amount of direction or guidance presented;

3) the presence or absence of working samples;4) the nature of the invention;

5) the state of the prior art;

6) the relative skill of those in the art;

7) the predictability or unpredictability of the art;8) the breadth of the claims.


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MPEP states that

while no specific universally applicable ruleexists for recognizing an insufficiently

disclosed application involving computer programs, an examining guideline togenerally follow is to challenge thesufficiency of such disclosures which fail toinclude either the computer program itself

or a reasonably detailed flowchart whichdelineates the sequence of operations theprogram must perform.


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MPEP states that with regards to thehardware side of the invention

the examiner should determine whether

certain of the hardware or softwarecomponents depicted as block elements arethemselves complex assemblages whichhave widely differing characteristics and

which must be precisely coordinated withother complex assemblages.


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In case of ASIC design, ideally describe thesimulation program and then illustrate theoperations performed by the hardware

using flow charts or state diagrams.


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B) Best mode requirement:

Disclose the last, best way of making or using theinvention that is known to the inventor at the time offiling the application.

The subject matter which is needed to implement oruse the invention in the best way known to theinventor at the filing is subject to the best moderequirement, whether or not it is claimed.

Only relates to the operation of the invention asclaimed.


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Violating the best mode requirement:

a) Intentional concealment

b) Accidental concealment (an inventorintends to disclose a key element ofa invention, but does not do so insufficient detail to allow a skilled

person to practice the invention)


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C) Written description requirement- To explain how to make and use the

invention

- To convey with reasonable clarity to thoseskilled in the art that, as of the filing datesought, the inventor was in possession ofthe invention.

The written description can also be satisfiedby figures or by an appendix.


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Issues relating to the written descriptionarise during prosecution

a) If claims have been made broad by an

amendment, then the new claim should besupported by the description.

b) If claims have been made narrow by anamendment, then the new claim should be

supported by the description.


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A patents claims must be read in view of thespecification, of which they are a part. For claimconstruction purposes, the description may act as asort of dictionary, which explains the invention and

may define terms used in the claims. A patentee isfree to become his own lexicographer. The caveat isthat any special definition given to a word must beclearly defined in the specification. To construe claimlanguage, the court should also consider the patentsprosecution history, if it is in evidence. The court may

in its discretion, receive extrinsic evidence in order toaid the court in coming to a correct conclusion as tothe true meaning of the language employed in thepatent.


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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


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Points to be noted while writingbackground/prior art

Write as much detail as possible.

Attempt to differentiate the prior artfrom the invention.


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Claim drafting

35 U.S.C 112 paragraph 2:

The specification shall conclude with

one or more claims particularly pointing out and distinctly claimingthe subject matter which theapplicant regards as his invention.


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Points to be noted while draftingclaims

Think from the point of view of theinventor and from the point of view of apotential infringer.

Ensure sufficient support for each claimis present in the description.

Support may be in the form of written

description or figures/drawings.


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Thank You

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