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Drafting a Patent Specification

A patent application should be filed with various forms and declarations as specified in Annex 2 Part B. Apart from the contents of the specification (which require careful drafting by a patent attorney), the remaining contents are fairly standardized.  In this discussion, we shall discuss the requirements for drafting a complete patent specification. The patent specification generally comprises of the following details:

  1.  Title of the invention (indicating its technical field)
Depending on the nature of the invention, the title will pertain to a product or a process. Consider the following examples for a product -
  • "a steering mechanism incorporating an automatic feed-back circuit ...";
  • "an insecticide consisting of X, Y, Z"; or
  • "a communication system comprising a plurality of transmitting and receiving stations"
  • “Motorised rubber tapping machine”
  • “Automatic bicycle shifting system”
Consider the following title for a process patent:
  • “Method of converting vehicle into hybrid vehicle”
  • “Method of issuing a machine readable international electronic passport card” 
  • Matters pertaining to prior art and summary of the invention
  •  - The title is usually followed by a ‘background’ to the invention which explains the prior art as it exists and the gap or deficiency in the prior art. Broadly speaking, the background contains the following details: 
  •  The description of prior art (that is, current state of art in the relevant technical field)
  •  The deficiency or gap in the prior art (which is proposed to be resolved by the invention)
  •  The solution provided by the inventor to obviate the drawbacks of the prior art,
  • A brief description of the invention and its usefulness, drawings (if any) and details of the method of its implementation.

What is prior art?
Prior art is merely the state of technology which exists before the invention was created. For example, if a company creates the first 5G cellular communication technology, it will explain prior art as comprising 2G, 3G and 4G and other communications technologies that have been invented thus far.
  • Summary - The background is usually followed by a summary of the invention which explain how the invention works, its features and how it addresses the drawback in the prior art.
  • Detailed description and drawings - Most inventions are usually accompanied by drawings to explain the working of the invention. The working of different components as indicated in the drawings must be explained in the specification (although that is not required in the abstract). Therefore, the summary of the invention is followed by a ‘detailed description of the invention’. This section explains how various components of the invention (as mentioned in the drawing) function together to produce the desired result.
  •  Abstract
The abstract should be within 150 words, and should provide a summary of the specification. It should commence with the title of the invention, disclosing specific features of the invention in not more than 15 words. As per the Patents Rules, it should state the technical field to which the invention belongs, the problem to which it relates, the solution provided by the invention to the problem and the uses of the invention.
Examples of abstract –
  • The invention consists of a board with multiple phone devices mounted on it for installing it at a Sports Stadium which allows multiple callers to cheer and participate in the excitement of the game, and speak and listen to callers on their adjoining phones and nearby persons at the Stadium. The invention allows a group of friends to call their respective phones on the device to collectively enjoy seeing the match on TV in the comfort of their respective homes and at the same time hear one another and shout at the stadium venue with the crowd through the invented device.
    [Application No.2124/MUM/2010 A, filed on 26 July 2010, published in Official Journal of the Patent Office, Issue 42/2010 dated 15 October 2010, p. 30660].
  • An automatic bicycle shifting system for automatically controlling the shifting of a bicycle transmission based upon a plurality of Wheel speeds selected by rider. The system includes a controller that operates a shifting mechanism such as an internal gear hub system. The system operates in three modes: a setting mode, an automatic mode, and a manual mode. The rider selects the plurality of Wheel speeds by manually shifting the bicycle at desired bicycle speeds during the setting mode. The controller stores a bicycle speed each time the rider manually shifts the bicycle during the setting mode in its memory. The stored bicycle speeds are then used by the controller to shift the bicycle during the automatic mode.
At the stage of publication of the application in the journal of the Patent Office it is the title and abstract (and any drawings specifically selected by the applicant) which are published. A detailed description of how the invention works is not published.
  1.  Drawings and models
The applicant can submit drawings, which should be systematically numbered and present the name of the applicant. Typically, most inventions which have an apparatus or a machine have a numbered drawing like the one presented in the table below. For chemical compounds the formula may also be mentioned. Models or samples are only required to be submitted if a request has been made by the Controller.
Sample of Drawing  
(this drawing was published with an abstract of a patent application)

Note that the drawing is serially numbered, and the patent application will explain how each numbered component of the drawing is relevant to the functioning of the invention.
  1. Claims

‘Claims’ actually describe the scope of what the applicant seeks a patent on. Drafting a claim appropriately is critical for an inventor - it is possible to draft a claim in broad terms or in narrow terms. The scope of the claim will determine the scope of the invention, so it is in an inventor’s interest to describe the claims very broadly. This is why large companies engage specialized patent attorneys and remunerate them very highly for drafting the right kind of claim. It is not necessary to mention the claims in the provisional specification – this makes it easier to file the specification.
However, the complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought. Claims should indicate technical features of the invention (or sometimes its functions), but not commercial advantages or other non-technical matters.
Usually, an invention may have more than one claim pertaining to its essential features. Each claim will be called an ‘independent claim’. For example, consider the following independent claim:
“1. A bicycle actuating system, comprising:
a shift actuator configured to .................... ; 
a controller configured to ........................  ; 
a Y for ................................................; and
a memory coupled to ...................   
X                   -        X        -        X

Certain claims may also have one or more ‘dependent claims’, i.e. sub-claims for a particular product or process which is already being claimed. For example, consider the following:
A method as in claim 1 (see above) further comprising the steps of displaying a current gear of the bicycle on a display coupled to the controller.”

NOTE: A real patent claim can be relatively technical to read for the lay reader. 
For example, claim 1 of the patent specification mentioned above stated as follows:

“1. A method for controlling a bicycle transmission based on rider-selected wheel speeds, the method comprising the steps of:
actuating a controller mounted on a bicycle, while riding the bicycle, to enter a setting mode;
manually shifting the bicycle transmission into a selected gear during the setting mode by operating a shift actuator coupled to the bicycle transmission; and
setting mode by operating a shift actuator coupled to the bicycle transmission.”

Sometimes, a dependent claim could relate to a particular embodiment of the invention. An embodiment is essentially a manifestation of the invention. For example, a new kind of communication device manufactured by Apple could either be represented in a spherical form, or in the form of a cube, and could perform the same function. In such cases, it is not necessary that the patent application must refer to all possible shapes by which the invention will work - it may contain any one ‘embodiment’.

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