DRAFTING OF A PATENT SPECIFICATION

Submitted to :
Dr. SreeNiwasan Murthy

By:-
J M Rashmi
LLM 2017-18
 Content
1. Introduction

2.Types of patent specifications

a. Provisional specification

b.Complete specification

3. Ways of filing Complete Specification

a.Subsequent filing

b.Direct filing

4. Format of complete specification

a.Title

b.Preamble of the invention

c.Technical field

d.Background of the invention

e.Objects of the invention

f.Statement of the Invention

g. Detailed description of the invention

5.Abstract

6.Summary

7.Sample of Patent application

 DRAFTING OF A PATENT SPECIFICATION

Introduction

In order for an applicant to be awarded patent rights, the applicant should disclose his/her
invention to the patent office and later to the public through a patent specification. The
specification has to accompany the patent application and based on the details provided in the
specification and claims written in it, the patent office determines as to whether the invention
is patent worthy. Patent Specification A patent specification is a document through which an
inventor discloses the details of his invention to the patent office and the public. The patent
specification is a techno-legal document that has to be filed along with a patent application in
the Patent office. The patent specification is a technical document because it includes the
technical details of the invention. Further, it is also a legal document because it defines the
legal limits of the protection sought by the inventor. The language used in a patent
specification has a combination of technical and legal jargon.

There are two types of patent specifications viz,

1) Provisional specification; and

2) Complete specification.

Provisional Specification

A provisional specification is a document which broadly, though not completely, discloses an

inventive concept. The provisional specification is filed mainly to secure a priority date
when the inventor is in need of more time to work out the details of his invention and to
perfect the same. Therefore, the provisional specification seldom discloses all relevant details
of the invention in a sufficiently clear and complete manner. Though complete information is
not required, it is recommended to provide, in the provisional specification, as much
information as the inventor/applicant has about the invention at the time of filing because the
provisional specification will be used at a later stage to determine whether the complete
specification claims the invention that forms part of the provisional specification. Drawings,
which relate to the invention, may also be submitted with the provisional specification and
such drawings will be deemed as part of the specification.
 Complete Specification

A complete specification is a document which discloses all details of an invention in a

sufficiently clear and complete manner, as opposed to disclosing broad inventive concept in
the provisional specification, so as to enable a person having ordinary skill in the art to
practice the invention. The complete specification is further different from that of the
provisional specification because it must conclude with a claim or a set of claims. As a
fundamental aspect of specification drafting, one should understand that each claim in the
complete specification defines an invention. Therefore, each claim has a respective priority
date associated with it. Section 10(2) of the Indian Patent Act as amended in 2005, Section 9
of the Indian Patent Act as amended in 2005

The complete specification can be filed in two ways

1) Subsequent filing; or

2) Direct filing.

In subsequent filing, the complete specification is filed subsequent to the filing of the
corresponding provisional specification and further claiming priority from the corresponding
provisional specification. Such subsequent filing of complete specification should be done within
twelve (12) months from the priority date or the filing date of provisional specification.

Further, if the description in the complete specification refers to the drawings that were
submitted with the corresponding provisional specification, such drawings may incorporated by
reference without having to re-submit the drawings with the complete specification.

Further, to avail priority from the corresponding provisional specification, the subject matter as
claimed in the complete specification should be fairly supported in the provisional
specification.6 For example, consider the following scenario: On August 25, 2009 a provisional
specification is filed disclosing an invention broadly to the extent of describing elements A, B
and C.
On August 24, 2010 a complete specification is filed claiming priority from the provisional
specification. In the claims section of the non-provisional specification, claim 1 is directed to
elements A, B and C and claim 2 is directed to elements A, B, C and D.

The element D is disclosed in the complete specification filed on August 24, 2010 In the
scenario, claim 1 is accorded priority date of August 25, 2009 (filing date of provisional
specification) and claim 2 is accorded priority date of August 24, 2010 (filing date of complete
specification) since element D was not disclosed in the provisional specification. In direct filing,
no corresponding provisional specification is present and the complete specification is first filed
directly with the patent office. Filing format: The provisional or complete specification and the
accompanying drawings must be prepared on A4 size paper of approximately 29.7x21 cm with a
margin of at least 4 cm on the top and left hand part and 3 cm on the bottom and right hand part
thereof.7 The drawings should be furnished as a different set of papers and should not appear in
the specification itself. 8 Parts of the complete specification The complete specification should
be drafted and submitted in Form 2 to the Indian Patent Office.

The complete specification must be drafted in the following format.

1) Title;

2) Preamble of the invention;

3) Technical field;

4) Background of the invention;

5) Objects of the invention;

6) Statement of the invention; Section 9 of the Indian Patent Act as amended in 20055 Rule
13(4) of the Indian Patent Rules 20036 Section 11(2) of the Indian Patent Act as amended in
2005, Rule 9(1) of the Indian Patent Rules 20038 Rule 15(2) of the Indian Patent Rules 2003

7) Brief description of the drawings;

8) Detailed description of the invention;

9) Claims; and
10) Abstract.

Title:

The complete specification should begin with the title of the invention. The title should fairly
capture specific features of the invention. It should not be more than fifteen (15) words. 9
Further, Inventors name, the word patent, words in other languages, the abbreviation etc
and fancy words may not be used in the title. However, words such as improved or
improvements may be used in the title.

Preamble of the invention

The preamble of the invention should state that The following specification particularly
describes the invention and the manner in which it is to be performed. The preamble along with
the title of the invention, name, address and nationality of the applicant(s) should appear in the
first page of Form 2.

Technical Field

The Technical field section in the specification will mention as to what field the invention
belongs to and particularly states as to the subject matter of the invention. For example, the
Technical Field may state The invention generally relates to dispensing machines and more
particularly to a machine which dispenses coffee.

Background of the Invention

The objective of this section is to distinguish the invention at hand from that of what is already
being practiced in the industry. The aforementioned objective will be achieved by briefly
discussing the teachings of the prior art and drawbacks or disadvantages, if any, of such
teachings. This section sets the stage for describing, at a later stage, the invention at hand clearly
and in more detail. For example, if the invention relates to a coffee dispensing machine in which
a crusher is included, as a novel and inventive concept, to grind the coffee seeds, the
disadvantages or drawbacks of existing coffee dispensing machine (assuming that the concept of
grinding the coffee seeds in the dispensing machine itself is not present in the existing coffee
dispensing machine) may be briefly discussed.
Objects of the invention

The objective of this section is to bring about the necessity of the invention. This section is
aimed at bringing about the objectives, advantages or solutions achieved by employing the
invention at hand. It may include statements such as The principle object of this invention
Another object of the invention yet another object of the invention and so on.

Statement of the Invention

This section is usually drafted when omnibus claims are intended to be introduced. This section
should recite the independent claims in plain English. It section may include statements such as
Accordingly, the invention provides an apparatus comprising Brief description of the drawings
this section will refer to all the figures in Drawing part of the specification. In this section, a
brief discussion is presented as to the embodiments depicted by each of the figures.

Detailed description of the invention

The objective of this section is to provide sufficient details of the invention. The making and
using of the invention and the objectives, advantages or solutions achieved by employing the
invention (as discussed in Objects of the inventionsection of the specification) should be
explained in depth. Further, the details of the invention should be explained with respect to the
drawings. The details provided in this section are considered sufficient if a person having
ordinary skill in the art is able to practice the invention without undue experimentation. This
section may also include examples to facilitate better understanding of the invention. Further,
this section should provide or disclose the best method of performing the invention which is
known to the applicant. Claims are the sum and substance of the patent specification.

The patent rights are granted to the claimed subject matter. The subject matter which is in the
description but not claimed will be considered disclaimed and hence is donated to the public.
Each claim is a separate invention and hence all the claims are not held invalid for one claim
being invalid. A claim is a sentence and hence should start with a capital letter and end with a
full stop. The claims section of the specification should start on a separate page after the
Detailed description of the invention section. The preamble to claims section should be, I
claim, We Claim or What is claimed is and should follow with the claim listings. Almost
always, the first independent claim is drafted broadly to cover the important aspects of the
invention. Further details of the invention may be covered in dependent claims which will have
narrow coverage. Different set of claims may be drafted to vary the scope of protection sought. A
claim has to be structured in three parts viz, Introductory phrase, body and a link that joins the
introductory phrase and the body.

For example, consider the following claim Claim 1: A coffee dispensing machine comprising: a
crusher; a container; and a collector in fluid communication with said crusher and said container.
In the afore mentioned example A coffee dispensing machine is the Introductory phrase, the
elements a crusher, a container and a collector forms the body, and the term comprising
is the linking element which links the introductory phrase and the body. Section 10 (4)a of the
Indian Patent Act as amended in 2005, Section 10(4)b of the Indian Patent Act as amended in
2005

There are three types of link terms, viz, comprising, consisting of and consisting essentially of.
The term comprising is considered to have broad meaning, the term consisting of is
considered to have narrow meaning than the term comprising. Further, the term consisting
essentially of is considered to have narrow meaning than the link term comprising of and
broad meaning than consisting of.

Abstract

An abstract, essentially is a summary of the matter contained in the specification. The abstract
section should start with the title of the invention14 and should not be more than one hundred
and fifty (150) words.15 The feature of the invention when mentioned in abstract should contain
the reference number accorded to that feature in the drawing.

Summary

An applicant for a patent has to provide patent office with the patent specification which
describes about his invention. Further, the applicant may file a provisional specification or a
complete specification depending upon the stage of the invention. If the invention is in the initial
stages of perfecting, one may opt for filing provisional specification to secure the priority date,
else a complete specification along with the claims may be filed with the patent office.
 Sample

of

Patent application
 FORM 1

THE PATENTS ACT 1970 (FOR OFFICE USE ONLY)

(39 OF 1970)

& Application No.:

The Patents Rules, 2003 Filing Date:

APPLICATION FOR GRANT OF PATENT Amount of Fee Paid:

(See section 7,54 & 135 and rule 20 (1)) CBR No.:

Signature:

1. APPLICANT

Name Nationality Address

Indian Institute of Technology, Indian Indian Institute of Technology,

Bombay Powai,

Mumbai 400076, India

2. INVENTOR ( S )

Name Nationality Address

Inventors name Indian Permanent Address

Indian

3. TITLE OF THE INVENTIONTitle to be added

4. ADDRESS FOR CORRESPONDENCE OF APPLICANT / Telephone No. : 91-22-28873766

AUTHORIZED PATENT AGENT IN INDIA
Fax No. 91-22-28844782
 Mobile No. 9820352815

DrPrabuddhaGanguli, 103 B Senate, Lokhandwala Township, E-mail : ramugang@vsnl.com

Akurli Road, Kandivli East, Mumbai 400101, India

5. PRIORITY PARTICULARS OF THE APPLICATION (S) FILED IN CONVENTION COUNTRY

Country Application Filing Date Name of the Applicant Title of the Invention
Number

N.A.

6. PARTICULARS FOR FILING PATENT COOPERATION TREATY (PCT) NATIONAL PHASE

International application number N.A.

9. DECLARATIONS :

(i) Declaration by the Inventor (s)

We, the above named inventor(s) are the true & first inventor(s) for this invention and declare that the applicant(s)
herein is our assignee.

(a) Date

(b) Signature (s)Signature

(c) Name(s)Inventors name

(a) Date

(b) Signature (s) Signature

(c) Name(s) Inventors name

(ii) Declaration by the applicant (s) in the convention country

I/We, the applicant(s) in the convention country declare that the applicant(s) herein is our assignee

(a) Date

(b) Signature (s) N.A.

(c) Name(s) of the signatory

(a) Date

(b) Signature (s) N.A.

(c) Name(s) of the signatory)

(iii) Declaration by the applicant (s):

I/We, the applicant(s) hereby declare(s) that:

o We are in possession of the above mentioned invention.

o The provisional/complete specification relating to the invention is filed with this application.
o The invention as disclosed in the specification uses the biological material from India and the
necessary permission from the competent authority shall be submitted by me/us before the grant of
patent to me/us.
o There is no lawful ground of objection to the grant of the Patent to me/us.
o I am/We are the assignee or legal representative of true & first inventors.
o The application or each of the applications, particulars of which are given in Para 5 was first
application in convention country/countries in respect of my/our invention.
o I/We claim the priority from the above mentioned application(s) filed in convention country/countries
and state that no application for protection in respect of the invention had been made in a convention
country before that date by me/us or by any person from which I/We derive the title.
o My/our application in India is based on international application under Patent Cooperation Treaty
(PCT) as mentioned in Para 6.
o The application is divided out of my/our application particulars of which are given in Para 7 and pray
that this application may be treated as deemed to have been filed on ____________ under sec. 16 of
the Act.
o The said invention is an improvement in or modification of the invention particulars of which are given
in Para 8
10. Following are the attachments with the application:

(a) Complete specification.

(b) Complete specification (in conformation with the international application) / as amended

before the International Preliminary Examination Authority (IPEA), as applicable (2 copies ).

No. of pages 263 No. of claims 215

(c) Drawings (in conformation with the international application) / as amended before the

International Preliminary Examination Authority (IPEA), as applicable (2 copies). No. of

sheets 11

(d) Priority documents

(e) Translation of priority document / specification/ International Search Report
(f) Statement and undertaking on Form 3
(g) Power of Authority
(h) Declaration of inventorship on Form 5
(i) Sequence listing in electronic form (floppy disc)
 (j)
Fee Rs. in Cash/Cheque/Bank Draft bearing no. ..

Date . On .. Bank.

I/We hereby declare that to the best of my/our knowledge, information and belief the fact and matters stated herein
are correct and I/We request that a patent may be granted to me/us for the said invention.

Dated this day of September 2005.

Signature :-

Name :

To,

The Controller of Patent

The Patent Office, at Mumbai

 FORM 3

THE PATENT ACT, 1970

( 39 OF 1970 )

&

The Patents Rules, 2003

STATEMENT AND UNDERTAKING UNDER SECTION 8

( See section 8, rule 12 )

We INDIAN INSTITUTE OF TECHNOLOGY, BOMBAY hereby declare

(i) that /We who have made this application No.1267/MUM/2004Dated25 November 2004 alone, made for the
same/substantially same invention, application(s) for patent in the other countries, the particulars of which are given
below :

Name of the Date of Application No. Status of the Date of Date of grant
country Application application publication

Not Applicable

(iii) that the rights in the application(s) have been assigned to us and that We undertake that upto the date of grant
of the patent, by the Controller. We would keep him informed in writing the details regarding corresponding
applications for patents filed outside India within three months from the date of filing of such application.

Dated this day of September 2005

For INDIAN INSTITUTE OF TECHNOLOGYBOMBAY

To,

The Controller of Patent

The Patent Office, Mumbai

 FORM 2

THE PATENTS ACT, 1970

(39 of 1970)

PROVISIONAL / COMPLETE SPECIFICATION

(See section 10 and rule 13)

1. TITLE OF THE INVENTION

2. APPLICANT(S)
(a) NAME
(b) NATIONALITY
(c) ADDRESS

3. PREAMBLE TO THE DESCRITION

PROVISIONAL COMPLETE
The following specification describes invention The following specification particularly describes the invention and the
manner in which it is to be performed

4. DESCRIPTION (Description shall start from next page)

5. CLAIMS (not applicable for provisional specification. Claims should start with the preamble I/We claim on separate page)

6. DATE AND SIGNATURE ( to be given on the last page of specification)

7. ABSTRACT OF THE INVENTION (to be given along with complete specification on the separate page)

Note:
*Repeat boxes in case of more than one entry
*To be signed by the applicant(s)or the authorized registered patent agent
*Name of the applicant should be given in full, family name in the beginning
*Complete address of the applicant should be given stating with postal index no. / code, state and country
*Strike out the column which is/are not applicable