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How to draft patent specification?

Drafting of a patent application is an art. It requires both legal and technical


expertise. In addition, it may have a lot of bearing on the future enforcement of
the patent itself.

In general, Patent applications are drafted with the help of patent attorney or
patent agent who has the technical background as well as legal background or
patent law expertise. In order to obtain a patent for an invention, the invention
must have the patentability criteria such as novelty, inventive step, industrial
application and also disclosure of technical information to satisfy to practice the
invention by a person skilled in the art. The patent applications are drafted and
submitted to the patent office, mainly to disclose the technical information to the
public and, to get the exclusive right for a defined period which is being claimed
by the patentee in the application.

A patent application has the following major parts such as Title, Background,
Technical disclosure, Abstract and Claim. The person who writes patent
application must have the capability of understanding the area of invention, so
that he would be able to draft the application to meet the patent application
requirement. To understand the area/strength of the invention, the technical
person can only able to differentiate with existing technology, and can able to
bring the novel feature and inventive step of the invention in the technical
disclosure and background of the invention.

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The main part of the patent application is Claim, which defines the scope of the
protection of invention and prohibits others from making, using, selling or
offering for sale the subject matter defined by the claims, without the permission
from the patentee. Hence, the claim construction is considered to be the heart of
the patent, and it is imperative to protect the invention as well as enforcing the
patent. The word in the claim has to be written very clear and succinct. The
meaning and interpretation of each claim is referred with the technical disclosure
in the application. While drafting the claim, the patentee needs to be very careful
for selecting the words in the claim to avoid any ambiguity.

In order to construct the claims, the person needs to now the law in the
jurisdiction, so that he would be able to craft the claims to meet the patent law of
the jurisdiction. Therefore, it is essential to have legal expertise for crafting the
claims. For example, two part claim [Jepson claim] is essential in EPO to
differentiate the novel feature, where as is US, it is taken as known in the art
before the separation phrase in the two part claim. Another example, Omnibus
claim is allowed in India; however it is not allowed in US. Without the knowing
the patent law in the jurisdiction, it would not be possible to draft the claims
properly.

In a patent application, it is essential to have to comprehensive technical


disclosure before filing the patent application as the new matter can not be added
after filing the patent application, but at the same time, claims can be amended
during the prosecution of application. The patent is granted based on the technical
disclosure and patentability of inventions and, the claim is sought to protect the

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TeleFax No: 080-42173649, Email: contact@intepat.com Web: www.intepat.com
invention. Therefore, drafting of patent application is an art and it requires both
technical and legal expertise to obtain a patent.

Patent applications are filed to protect the invention and to obtain the patent, and
also to enforce the patent. The future enforcement of any patent application is
mainly depends upon the scope of the protection of invention, particularly the
scope of the protection is determined by the claim crafting. Hence clearly drafted
patent application with proper claim will help the patentee to find the potential
infringer. While drafting the patent application, the subject matter has to be
distinguished from the prior art to avoid from the litigation, and also the claim has
to be written with well support of technical disclosure to avoid the invalidation of
patent. Therefore, enforcement of patent is determined by the quality of patent
application drafting.

Please contact us at contact@intepat.com, in case any queries.

____________________________________________________________________________
TeleFax No: 080-42173649, Email: contact@intepat.com Web: www.intepat.com

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