Understanding the Invention – Specification

“No one asks you to throw Mozart out of the window. Keep Mozart. Cherish him. Keep Moses too, and Buddha and Lao Tzu and Christ. Keep them in your heart but make room for others, the coming ones, the ones who are already scratching on the window panes”

– Henry Miller   

An inventor is the best person to describe one’s disclosure. What matters is how well the disclosure is comprehendible by a person who wants to know and understand the invention in a simple way. A written description of an invention disclosure to explain the invention is needed. The description is to be simple, comprehendible, technical and within the legal framework. A techno legal document containing the specific information about that part of the invention for which protection is sought is referred to as Patent specification.

A patent specification ensures that the description of the invention is provided in a way comprehendible to a person skilled in the art. Every claim should be accompanied by a corresponding statement of support in the description.

Every patent application needs to be accompanied with a specification. It could be either a provisional specification or a complete specification. A complete specification is a techno-legal document that includes the description of an invention to conduct it in the best possible method. It is mandatory for an inventor to file a complete specification within twelve months of filing the provisional specification else the application filed would be considered abandoned. The date of first filing of specification marks the Birthday of the proposed invention disclosure.

A patent application owes utmost importance to specification as it is this document that is presented to the examiner and it is after going through it a decision regarding the grant or rejection is taken.

The specification of an invention broadly includes;

  1. The Tile
  2. Technical Field
  3. Background
  4. Brief summary
  5. A detailed description of the invention also referred to as disclosure.
  6. Claims
  7. Abstract

This is the minimum expected criteria by all the patent office across the world for a specification. In this segment we will be discussing the parts of the specification without the claims and the abstract.

  1. The title: This marks the beginning of the specification. The title has to be crisp yet capable of conveying the working of the invention in the shortest possible way. The title has to be technically accurate.
  1. Technical Field: This field gives an insight into the general art along with a hint on the specifics related to the invention. The technical field is expected to be accurate and brief. This helps the patent office to comprehend the field with which the invention is being dealt with. This leads to an appropriate decision on appointing the examiner and his team to deal with the invention by the concerned patent office.
  1. Background: It gives a mention about the prior art. Some backgrounds give a reference to the existing patents or the art in the public domain with respect to the invention. A good background acts as a platform to set a good context for apt understanding of the invention. The background also describes what the existing state of the invention is and what the limitations in the field are.
  1. Brief Summary: It deals with the invention and is not broad to deal with the disclosure in entity. The summary also discloses the various advantages of the invention and how the various disadvantages are fixed. A summary is expected to mention the broadest claim.
  1. A detailed description of the invention: This is also referred to as a disclosure. It contains two parts; a brief description of the drawings and a detailed description of the invention.

Claims and Abstract will be dealt exclusively in our next edition.

The drawings descriptions often go as one to two liners stating exactly what each of the drawings illustrate. The drawings could be flow diagrams, block diagrams, pictorial representations, screenshots etc.

The drawings should be presented in separate sheets in compliance with the standards prescribed by the patent office where the invention is intended to be filed. Only the flow charts qualify for accommodating the descriptive matter. Rest all has to be communicated through a uniform numbering format.

The detailed description of an invention contains the best possible information regarding the invention. The term “exemplary embodiment” signifies one way or the best possible way of carrying out the invention or practicing it. The best way of carrying out the invention is described in the best possible detail in the description. The description is presented in accordance with the numbering of the drawings as it makes the job of understanding sequential and simple. The description should be able to convey the invention with utmost clarity to the person skilled in the art. Various embodiments listed should be corresponding to the same part of the invention. The specification must be split into fine paragraphs with proper numbering.

In case of an improvisation over the existing invention the description should be able to convey the points preferably with examples to ascertain the improvement with clarity. Extra details like sequence listings in case of science based patents, listing of formulas in order to support the functioning and calculations involved in the working of the invention can be mentioned.

Section 9 of the Indian patents act 1970, deals with the provisional and complete specifications. Sec 10 deals with the contents of specifications right from the title to the abstract and gives a brief explanation about the contents to be incorporated in them.

Inconsistency, inability to deliver clarification and simple yet perfect explanation of the description may prove to be the ground for objections by the examiner leading to non-grant of the patent.

Patent Specification is the soul of an invention disclosure. A well drafted specification brings out the best in an invention taking it a step closer to protection.

About This Author

Ms. S.L. Soujanya is a registered Patent agent with an academic background in Pharmaceutical sciences. She holds a Bachelor’s degree in Pharmacy from the Osmania University, Hyderabad and holds a Post Graduate Diploma in Intellectual Property Rights Law from NLSIU, Bangalore.

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