Patent Drafting in India

Provisional/Complete Specification

Before filing a patent in India, patent applicants are required to understand the complete process of patent filing. In essence, a patent is acquired in India by filling an application for the grant of patent through following documents:

• Form 1 (Application for Grant of Patent);
• Form 2 (Provisional/Complete Specification);
• Form 3 (Statement and undertaking u/s 8 of Patent Act, 1970);
• Form 5 (Declaration as to Inventorship);
• Form 26 (Authorization of a Patent Agent/or any person in a matter or proceeding under the Patent Act).

The application for patent has four basic attachments which are filed under Form 2:

    (a) Complete/provisional specification (Section 9 of Patents Act, 1970): A provisional application is a summary of the invention and is filed to protect the invention at its early stage. If an applicant has filed the patent application for grant of patent he/she has to file the complete specification within a period of 12 months from the date of filing of the provisional application or else the application will be considered to be abandoned. 

    (b) No. of Claim(s): Claims define the contours of legal rights when the patent is granted. Section 10 (4) (c) of the Patents Act, 1970 states that every complete specification must end with a patent claim or patent claims that defines the scope of the invention for which protection is claimed.

    (c) Abstract: Abstract is a concise summary of the invention which the applicant wants to get patented. According to Section 10 (4) (d) of The Patents Act, 1970, every complete specification shall include an abstract section to provide technical information on the invention. According to Rule 13 (7) of The Patent Rules, the abstract section shall begin with the title of the invention.

    (d) No. of Drawing(s): The patent applicant shall furnish at least one drawing of the invention he/she seeks to get patented which can also be called a patent illustration, showing every feature of the invention for a better understanding of the invention. The drawings must show every feature of the invention specified in the claims, and it is required by Patent Office rules to be in a particular form.

A patent can be filled either through e-filing or through physical filing. A requisite fee is payable for filling of the patent which is provided in Table I of the First Schedule. (See Rule 7 of the Patent Rules, 2003).

Basics of Drafting a Patent Application 

Writing a patent application is a skillful task for a patent attorney. However, while drafting the patent application the most important section of the patent application are the patent claims. The patent attorney has to perform numerous in-house quality checks to ascertain that all the patent claim elements and features of the patent invention are claimed in the patent application. The “heart” of the invention is the patent claims and the patent claims must be selected carefully from the invention disclosure form which the inventor is provided.

Patent drafting includes the written description of the invention and the patent claims. Patent drafting is evaluated for granting a patent as it describes the best mode of performing the invention. Patent drafting should be complete and abbreviated. Patent drafting should detail the invention and explain the process, machine, manufacture or composition of matter and also give the description of mode of operation or principal. Patent drafting should be done by patent agents or patent attorneys or a lawyer with a good knowledge of patents and drafting of it. The person drafting the patent should be good in English communication and in written and technical knowledge.  

The parts of the process, machine, manufacture or composition of matter which is related to improvement is signalized in the drafting of the patent. Patent drafting includes background of the invention, subject of the invention, declaration of the invention, compressed explanation of the drawings and summary of the invention. The draft should also comprehend the valuable uses either to the humans or to the industry. The methods and the processes should be told clearly to the attorney before drafting a patent which is called claim drafting. Depending upon the invention and the inventor, there may be one or more drafts. If the claim is considered irrelevant it may lead to its rejection.

A patent drafting should have following patent sections, in following order:

• Title of the invention
• Reference to related topics
• Background of the invention
• Summary of the invention
• Explanation of the drawings
• Description of the invention
• Claims
• Abstract of the disclosure
• Sequence listing

Title of the Invention

The title of the invention should be short and concise.  The title of the invention should appear as the heading of the page.

Cross-Reference to Related Applications

With the help of patent application cross references can be made to other patent applications by identifying the title, the application number or the international application number and the international filing date.

Abstract

The abstract should have only hundred and fifty words in a separate page. 

Summary of the invention

The nature of the invention is included in the summary of the invention. It also includes detailed description of the process, machine, manufacture or composition of matter. The advantages of the invention are discussed in the summary too. The summary represents the general idea of the invention in a summarized form. The problems which existed previously and were identified in the background of the invention are pointed out in the summary with their solutions.

Patent Drawings

A number of figures are described and specified in patent drawings. These descriptions and specifications point out the claims of the invention. The invention is described visually with the help of drawings. Drawings are made using structures – chemical or mechanical and charts and graphs.

Claims

The most important part of patent drafting is claims. The subject matter of the invention which distinguishes the invention from what is old is written in the claims. Patentability is judged by the claims as it is the operative part. The major function of the claim or claims is to clearly define the scope of protection granted. The claims must be supported by the invention disclosed in the descriptive part of the patent drafting. The claims should be drafted from a new page and each claim should be written in a new sentence.

A reference numeral is followed to mention the claim and to illustrate the drawings. However, the claims of a patent specification must relate to the same invention.

Background of the Invention

Background of the patent invention contains references related to specific documents which are related to the invention. The improvements needed by the invention should be discussed in the background of the invention. Prior patents are identified by the background frequently. Key features of the current invention and prior art are compared and discussed.

Detailed Description of the Invention

It is a detailed explanation of the invention with specific examples of how to practice the invention. It also gives the description of the patent drawing with respect to the invention. It includes written description, embodiment and enablement. Written description should be well detailed so that the invention is disclosed at the time of filing the patent application.

One or more embodiments for performing the invention should be disclosed in the description of the invention. Preferred embodiment may be included in the patent description, if applicable.

The invention should enable a person skilled in the art to duplicate your invention to arrive the same results without undue experimentation.

Sequence Listing

The patent application may include nucleic acid or amino acid sequences in case of biotechnology patent cases and others. For the sequences a sequence list is required to be submitted with the respective patent office. Sequence listing should be in a specific text form. A free software download is provided by USPTO that is often used to compile sequence listing.

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