Patent specifications

One of the first things you will notice when starting to read patent specifications, is that it is quite different to a peer-reviewed journal publication. The language is different, the structure is different, and the purpose is of course also different.

What is a patent?

A patent is a monopoly right to practice your invention commercially for a specific period (usually 20 years) in exchange for full disclosure of your invention. The original intention was (and still remains) to speed up development – before patents, everyone used to keep their inventions secret as a means of maintaining a competitive advantage. Patents enabled people to share their methods with others in exchange for a limited duration monopoly.

Patent specifications are generally written in a specific way (see Anatomy of a Patent Document) – it contains some background to the invention, a description of the invention, some examples of where the invention was applied or ‘worked’, and the claims. Ultimately it is only the claims section that determines the area of monopoly rights when a patent is granted. Thus it is very important to give careful attention to the claims, how they are structured, in what order the claims are made, the broadness of the scope of the claims, etc.

The strength of a patent thus depends very much on the scope of protection of the claims in the patent specification. The narrower the claims (i.e. the narrower the scope of what is protected), the less value the patent has, and the easier it is for competitors to circumvent or work around the patent and compete in the same market/area.

Thus it is typical for applicants to file broad claims initially, and for examiners to reject the claims, but indicate what sort of narrowing of scope might make the patent ‘allowable’, if it is to be granted at all.
The first person or organisation to file a patent application in a new field of science, engineering or technology, is usually able to obtain quite broad protection in that field, and such patents are usually quite valuable (although it might take more than 20 years for new fields to yield large commercial returns!)… After a while, fields become crowded, and narrower and narrower patents are granted.

This is why it is important to understand the field that you are attempting to play in or enter with your invention, how crowded the space is, who your competitors are, etc. These aspects inform how you write your patent specification. (Speak to your R&D Outcomes Manager, the Licensing & Ventures office, or CSIRIS about doing a patent landscape analysis to help you understand the field…)

So one of the first things you can do to see how valuable a patent is, is to look at the claims and their broadness of protection. Typically the longer the independent claims are (see box-out for an explanation of independent and dependent claims), the narrower the protection and the less value the patent has.

What are independent and dependent claims?
When you read a patent specification, you will notice that it typically contains two or three independent claims – i.e. claims that do not refer to other claims in the patent specification. These are the main claims that describe what protection is claimed for. The other claims all refer back to the independent claims and are called dependent claims.

So when the examiner provides a report indicating that the independent claims are not novel or inventive, they would sometimes indicate that some of the dependent claims are allowable. The applicant would then combine one or more dependent claims into the independent claim in order to try and obtain grant.

This is one of the reasons that how you write your patent specification is critical – the ultimate value and protection of the patent (and your ability to get the patent granted) are critically dependent on your claims.
Also, you should write your patent claims strategically, keeping in mind what competitors in the field are doing, what other patents have been granted in the field, etc. Usually it is good to build a number of fall-back positions into the patent specification – one would have a broader scope independent claim, but include a number of dependent claims that would narrow the scope, but still protect the essentials of your invention.

These ‘fall-back positions’ come in handy when you need to narrow the scope of your patent specification in order to obtain grant. But it is also important to remember that the examiner might require you to incorporate a number of dependent claims that you did not plan to into your independent claims, and thus the dependent claims should be written with this eventuality in mind.

Between filing a provisional patent application and a PCT or national phase application, one is allowed to make changes to the patent specification (with any substantial changes having as priority date the new date of filing, and not the original date of filing the provisional application). However, after this point, no changes can be made to the specification apart from the claims. Also, any changes to the claims can only be made based on other claims or information already contained in the rest of the specification.

This is why the other sections of a patent specification are also important – they might later serve as justification for modifications to your claims that you might need to make in order to get grant.

The “background to the invention” section discusses the state of the art in the field, including typically the closest prior art, and why your invention is novel and an improvement to the prior art. Some patent lawyers prefer to be very brief in this section, but it is probably better to be quite explicit here on what the novel and inventive concepts are in your invention as compared to the prior art. This can become quite important later when submitting arguments to the examiner in order to try and obtain grant (especially when arguing obviousness).

What are the basic requirements for a patent to be granted?
It must:

  1. Be novel (new – never been disclosed in other patents, publications, posters, conference talks, public speeches, or any other document or piece of information that is in the public domain, in any language or format);
  2. Have an inventive step (be unobvious) – it should not be obvious to a person of ordinary skill in the art (i.e. a trained person in the field of the invention) to put two or more prior art concepts together to come up with the invention. This is usually the area where issues arise with getting your patent granted, and around which a lot of the arguments are centred;
  3. Have industrial applicability or usefulness – there must be some potential use for it.

It is also important to provide as many examples as you can of how your patent is worked. If only one example is provided, the examiner might require you to narrow the scope of your claims only to the scope covered by the example. (Some countries, such as Japan, are especially strict on this.)

There are different types of patents, and you can quickly recognise what type of patent it is by looking at the independent claims. There are product, process or method, apparatus and use patents. Depending on the type of invention, the different types might be more suitable or provide better protection. For example, for a new drug the best type of patent would be a product patent (claiming the chemical composition of the drug) – you would not want to claim only a specific process for making the drug, since that would mean that anyone who invents or develops a different process to produce the same drug, would be able to put the same drug on the market.

There is a lot more to it (please discuss with your R&D Outcomes Manager, your patent lawyer or contact the Licensing & Ventures office to learn more!), but here are a few basic tips: Tips for writing patent specifications.

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