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Why should patent specifications be drafted by patent professionals?

Patent Specification; the most important document

A patent specification is a techno-legal document based on which patent rights are decided. The specification is what appears in public domain once it is published. Competitors, person with ordinary skill in the art and general public may be among those who read the specification, apart from the patent Examiner. Hence, it is important to bestow extreme care while drafting patent specification, most importantly with respect to the language and structure.

Using/Picking the right language is important

A specification is a tool, which may be used in favour of the patentees or against the patentees. Since it is a tool of such importance, it should not be left to a layman to design it.

Often, inventors are seen drafting their own patent specifications, without taking help of professionals, due to various reasons. But, some inventors may not even be aware of the patenting process and its requirements and hence may not necessarily be able describe the invention to satisfy the requirements in legal terms. As such, inventors, who are novice to the process of patenting, may easily make mistakes in the specification and such applications may face rejections for failing to comply with the requirements set forth by the Patents law. As such, all the effort put into the patenting process may go in vain.

It is extremely important to use carefully selected language to describe an invention to satisfy requirements both in legal terms as well as in technical terms. Selection of the right words/language may prove tricky when the draft-person is a novice. Words have to be chosen extremely carefully because even the slightest mistake, which may not seem harmful, may be often used against the patentees during prosecution or opposition proceedings. Unclear and indefinite languages used in the specification are always likely to attract competitors, or any person interested to invalidate or oppose the patent/patent application.

A specification is valuable and it should be refined to perfection by choosing the language carefully and intelligently. To apply such intelligence in drafting, it is recommended that a skilled professional drafts the specification.

Probable mistakes in a specification

There are certain critical areas where mistakes might occur when one does not understand the importance of language and the structure of the specification and the nuance involved in using the appropriate language. Not only is the language important, satisfying the requirements of patentability is equally important.

Critical terms not defined:

MPEP § 2111.01 states, any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.”

In a patent application, the claims may use critical terminologies. Such terminologies may have to be defined well enough in the specification; as such terms may not always interpret a dictionary meaning. In a patent specification one can define the terms one wants to use in the claims to give them the meaning one intends. Unless certain critical terminologies are not well defined, the terminologies are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art (MPEP § 2111.01).

While discussion about the mistakes that may occur with respect to language used in a specification, reference can be made to the case of Chef America v. Lamb-Weston.

Chef America (the plaintiff) sued Lamb-Weston (the defendant) in the United States District Court for the District of Colorado on charges of infringement on their patent US Patent No. 4,761,290. The plaintiffs appealed from the United States District Court for the District of Colorado. The United States Court of Appeals for the Federal Circuit affirmed the judgment passed by the District Court.

Claim 1 of the above patent reads as follows,

“ A process for producing a dough product which is convertible upon finish cooking by baking or exposure to microwaves in the presence of a microwave susceptor into a cooked dough product having a light, flaky, crispy texture, which comprises the steps of: providing a dough; applying a layer of shortening flakes to at least one side of said dough; coating a light batter to a thickness in the range of about 0.001 inch to 0.125 inch over said at least one side of said dough to which said shortening flakes have been applied; heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F. for a period of time ranging from about 10 seconds to 5 minutes to first set said batter and then subsequently melt said shortening flakes, whereby air cells are formed in said batter and the surface of said dough; and cooling the resulting dough product.”

With respect to the step of “heating”, because the specification did not define the some of the critical terms in the claim, the district court looked at the ordinary meaning of the terms and concluded that the claims clearly refer to the “temperature of the dough” and not the “temperature at which the oven should be set”. It was noted that the defendant’s process did not involve heating its dough products to the temperature range specified in the plaintiff’s patent and, therefore, has not infringed on the plaintiff’s patent. According to the court, when the patentees (now plaintiffs) say, dough is to be heated to the specified temperature, nothing indicates that these words are to be interpreted differently from their literal meaning. The Court of Appeals for the Federal Circuit’s statement, “These are ordinary, simple English words whose meaning is clear and unquestionable” is worth mentioning. The plaintiff’s patent does not even remotely suggest that it is the air inside the oven that is to be heated and not the dough products.

The plaintiffs urged that the claim should be read as heating the . . . dough “at” a temperature in the range of,” to interpret that it is the air inside the “oven” that is being heated and not the “dough”. The Court of Appeals for the Federal Circuit discerned nothing in the claims, the specification, or the prosecution history that indicates that the patentees here defined “to” to mean “at.” The prosecution history, in contrary, suggested that the patentees intentionally used “to” rather than “at” in drafting the temperature requirements of the claim.

The plaintiffs criticized the district court for failing to construe the claims as one of ordinary skill in the art would do. The district court, however, rejected this contention and so did the United States Court of Appeals for the Federal Circuit.

Indefiniteness in claim language

Claims are considered indefinite when they are ambiguous and do not distinctly point out the subject matter. One who drafts the specification needs to understand the subject matter and accordingly strategize the claims. Claims should provide information to the public/person with ordinary skill in the art of the boundaries of infringement of the claimed subject matter. A person with ordinary skill in the art must be able to perceive the boundary from the construction of the claim. Claims that fail to satisfy this requirement may attract rejections for not complying with 35 U.S.C 112 (b).

In DATAMIZE, LLC v. PLUMTREE SOFTWARE, INC. concerning indefiniteness of a claim, the United States Court of Appeals for the Federal Circuit affirmed the district Court’s judgment that Datamize’s (plaintiff) claims were indefinite and invalid under 35 U.S.C. § 112.

Plaintiff sued PLUMTREE SOFTWARE, INC (the defendant) for infringement of its patent (US 6014137).  The defendant moved for summary judgment arguing the plaintiff’s patent claims were invalid for indefiniteness. The district court granted the defendant summary judgment concluding that the patent’s only independent claim is indefinite due to use of a phrase “aesthetically pleasing”.

The plaintiffs pointed out that the phrase “aesthetically pleasing” should be considered in the context of its claim. In the context of the claim, “aesthetically pleasing” relates to the look and feel of custom interface screens on kiosks, and the aggregate layout of elements on an interface screen. From this context, one may identify that the components of the claimed invention are “aesthetically pleasing,” but a clear and meaningful definition for the phrase “aesthetically pleasing” itself cannot be derived.

The written description also fails to set forth an objective way to determine whether an interface screen is “aesthetically pleasing.” Some statements indicate particular aspects of the screen that might affect whether the screen is “aesthetically pleasing”, such as button styles, sizes, placements, window borders, color combinations, and type fonts. There was, however, no indication as to how to determine what button styles, sizes, and placements, might be considered “aesthetically pleasing.” Thus, the written description does not provide any reasonable, definite construction of the term “aesthetically pleasing.”

Plaintiffs argued that one of ordinary skill in the art would understand the phrase “aesthetically pleasing” to distinguish aesthetic constraints from purely functional constraints. The Federal Circuit stated that one cannot rely on an understanding of the phrase “aesthetically pleasing” derived from design patent law. The Circuit also pointed out that the plaintiff’s patent does not indicate that “aesthetically pleasing” means “aesthetic rather than functional”.

The Circuit stated that, the claim in question would not have been indefinite if an “aesthetically pleasing” look and feel for an interface screen was objectively verifiable. The patent, however, fails to provide any objective way to determine whether the look and feel of an interface screen is “aesthetically pleasing” and hence was not sufficiently definite in determining infringement. Hence the Court of Appeals for the Federal Circuit affirmed the judgment passed by the district Court.

Limiting Preamble

A preamble of a claim defines the field of the invention and/or its intended use. Whether a preamble is limits the scope of the claim is not something that can be determined by a standard set of rules that are applicable in all cases. In some cases, the preamble may not appear limiting and may have negligible importance in analyzing infringement, however, in certain cases preambles may be considered as claim limitation.

If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction (MPEP § 2111.02).

Hence, the preamble should be crafted with care such that the body of the claim is sufficiently self contained to be comprehensible without the preamble, also keeping in mind that it does not make the claim more vulnerable to being anticipated by prior art. The preamble and the body of the claim, however, should be consistent one with the other, the two parts making up a whole.

Non enabling disclosure

Often, inventors feel that to get a broader protection one should describe their invention broadly and include fewer details in the disclosure. This, however, is not advisable. A patent claim is invalid if it is not supported by an enabling disclosure (MPEP § 2164). Describing the invention without any specificity does not comply with the enablement requirement of patentability. The enablement requirement requires a specification to enable one with ordinary skill in the art to perform the invention. It is on the drafter to apply his/her skills in describing the invention as explicitly and precisely as possible.

Non inclusion of multiple embodiments

The rest of the specification is as important as the claims in a patent. Claims define the scope of protection and description supports and enables the claims, with the help of embodiments/examples. One good way of preventing competitors from working around the patent is by providing multiple versions of the invention in the description. The full invention and the manner it has to be carried out including the best method, is what an ideal specification covers. With multiple embodiments one can describe all possible scopes and limitations that the invention may have because it is important that one describes not only the best mode that works, but also cover everything within scope that is supposed to work. Inclusion of multiple embodiments is one way of (a) describing the invention in varying versions and (b) ensuring that nothing has been left for the competitors to work around.

Other areas of importance

The above points point out areas where mistakes are more likely to occur while drafting a patent specification. There are other areas that are to be taken care of as part of intelligently drafting a patent specification. One who drafts a specification can avoid welcoming unnecessary rejections, by carefully-

Constructing claims of varying scope to protect the invention:

Claims of varying scope can be used to vary the scope of infringement coverage. Such claims may prove effective while proving infringement. This step should be practiced and employed whenever necessary.

Constructing claims of varying types to protect the invention:

Claims of varying types may include claiming the same invention, if possible, both as a method and as an apparatus. One should not restrict the invention by claiming it in only one form. It is advisable to claim an invention in multiple forms in order to ensure the broadest possible protection for the invention.

Maintaining consistency in usage of terminologies throughout the specification:

This is the most frequently violated step, which has to be avoided in a patent specification. Components, once referred to by a certain term, should ideally be referred to by the same term throughout the description. Interchangeably using synonyms for the same word, such as, referring to the same component as “device” and also as “member” etc, may be instances of inconsistent usage of terminology in a specification. One may not have to pay for this violation but it is, however, not encouraged in a refined specification.

Reviewing the specification from the points of views of the prosecutor, infringer and litigator:

One who drafts a specification may consider reviewing the final drafted specification from a prosecutor’s point of view, infringer’s point of view and as well as a litigator’s point of view so that mistakes are not overlooked and the final draft is perfectly toned.

Conclusion

It is the disclosure in the specification based on which patent rights are decided. Drafting the specification in layman’s language can lead to, no or very limited protection for the invention. Effective protection may be ensured if all requirements of patentability are satisfied in the specification and the mistakes listed above are taken care of. Writing a specification is one thing but to be able to refine a specification to perfection is a job that requires extensive expertise and experience.

I hope you found the article interesting. You may also find interest in our related articles:

Should an inventor take professional help to draft and file patent applications?     

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

Should an inventor take professional help to draft and file patent applications?

Why would inventors want to tackle the patenting process themselves, without taking professional help?

We have asked ourselves this question, and concluded that, some of below mentioned points might be some of the reasons, which might influence the inventors to proceed with the patenting process on their own, without availing professional help.
  • Financial constraints
  • The inventor might feel that, since he is the inventor, he is the best person to describe the invention, and hence professional help is not required
  • An inventor who has prior experience in preparing public disclosures, might feel that, preparing a patent specification is a similar task
  • The inventor might be under the impression that, filing for a patent is just an administrative process and can be done by filling up and submitting the forms

We then analyzed these points in detail, so that, through our analysis, inventors can take an informed decision.

Financial constraints 
Most inventors opt to tackle the patenting process themselves, without seeking professional help, due to financial constraints.
When inventors feel that, they have invented something unique, they wish to protect their invention through patents. However, financial constraints often stop them from availing the services of patent professionals. They begin to think of ways to tackle the patenting process themselves and start to search the internet for information. There is a lot of data on the internet, which guides the inventors as to how to tackle the patenting process.
The information on the internet may relate to the below listed subjects
  • Strategies to filing patents when on a very tight budget
  • Drafting patent applications
  • Filing patent applications
Regarding advice on the internet about strategies on filing and drafting of patent applications
 
To save money, usually the advice provided on the internet is to file a provisional patent application on your own, and thereafter file a non-provisional (complete) application, within the prescribed time period, using the services of a patent professional.
This advice is given to inventors, because, there is no prescribed format to draft provisional patent applications. An inventor can just write down how his invention works and thereafter file a provisional patent application. Following this strategy, undoubtedly saves money and helps in obtaining a priority date, but it has many cons as well, which is discussed below.
Most people fail to advice inventors that, a non-provisional (complete) application which is filed after filing a provisional application, is based on the provisional application and has to be within the scope of the provisional application. It is therefore advisable to draft a provisional application with the same vigour as a non-provisional application. If the provisional specification is not drafted well, there will be serious limitations as to drafting a complete application based on the provisional specification. The provisional specification has to go into minute details of the invention. Drafting a provisional specification by a person who is not well versed with drafting patent specifications, will certainly affect the level of protection sought by the inventor.
There are number of books and resources on the internet, to teach an inventor to draft patent specifications. An inventor may read through these books for academic interest, however, it is not advisable to try to draft your own patent specifications after reading such material.
The inventor must understand that, the patent specification is the only document which is protecting his invention, hence utmost care and professional knowledge should be employed in drafting the patent specification.
Patent professionals have to spend years together to learn how to draft patent specifications, which provides the utmost protection to the inventor for his inventions. Patent professionals are highly trained in the patenting process and have to appear and pass in certain examinations to become patent attorneys and patent agents.
Certain formal requirements of the patent office have to be met in drafting the patent specification. Inventors usually do not comply with such formal requirements, since they do not have knowledge regarding those requirements. Such applications get rejected and the inventor has to comply with the formal requirements and file the application within a stipulated time period. Such situations often lead to anxiety and also additional costs.
Considering all this, the inventor must understand that, just by reading a few books and materials on the internet, he will not be able to draft a good quality patent specification, which complies with the requirements of the patent office among other requirements.
If the inventor is keen to protect his invention, he must allocate some funds to get professional help in the patenting process. If his invention goes on to become something big, it will always reap rich dividends.
Though employing the services of patent professionals may feel expensive at the beginning, inventors must always consider the fact that, a badly drafted specification will in most cases affects the enforcibility of a patent. A badly drafted specification is very easy to be worked around. This will lead to loss of revenue due to inability to enforce the patent.
Patenting is an expensive process, be it patent office fees or professional fees of a patent practitioner. The inventor must only pursue patents, if he feels that, his invention will go on to become something big and will earn a lot of money. If the inventor does not have enough funds to pursue patents, he should however, go for public disclosure of his invention. This will however not give him any rights, but will stop others from patenting the same.
 
About filing of patent applications
 
Unlike drafting of patent specifications, filing of patent applications is an administrative step and can be achieved on their own by the inventor, if they spend a lot of time in learning the process.
However, it is always advisable to employ the services of patent professionals for drafting of the patent specification. Most patent professionals, whose services are being availed by the inventor for drafting the specification, will offer the inventor with filing services in their jurisdiction at a discounted fee.
Hence, instead of filing the patent application on their own and making any mistakes, which might prove expensive, it is best left to be done by professionals, who do it day in and day out.
 
Regarding inventors who feel that, patent specification is just like any other scientific disclosure document.
 
Some inventors who have experience in preparing scientific disclosures, might feel that, a patent specification is just a technical document, similar to the scientific disclosures, they have experience in preparing, and hence they can draft a patent specification on their own.
Other inventors might feel that, the patent specification is just a document describing their invention in detail and since they are the inventors, they are the best person to describe it.
However, these reasons are unfounded, since, a patent specifications is not just a technical document or just a description of the invention, but a techno legal document, which determines the scope of protection for the invention.
Only a person, who has both technical knowledge in the domain of the invention, as well as good knowledge of patent law, will be able to draft a good patent specification, which provides the maximum protection to the inventor for his invention.
The person drafting a patent specification must have good understanding about the prosecution of patent applications. The patent specification has to be drafted in light of the prosecution of the application.
Unlike scientific disclosures, drafting of patent specifications is tricky, since, one has to possess knowledge about use of certain words and their interpretation according to patent law. This will be of utmost importance during the enforcement stage of the patent.
A patent specification is not just the description of the invention, as disclosed by the inventor. The patent professional usually comes up with many embodiments of the invention, wherein the desired result can be achieved by various methods. This is usually done to insulate the invention against any work-around which the inventor’s competitors may come up with.
Unlike scientific disclosures, patent specifications contains, ‘claims’, which basically defines the boundaries of protection that is sought for the invention. Drafting of claims and the usage of words in the claims is of utmost importance. Drafting of claims is very difficult and highly skilled job, and patent professionals develop this skill only after studying patent law and working for a few years.
Considering all this, though the inventor might have skills in preparing scientific disclosures, drafting of patent specifications is best done by patent professionals, since they posses both technical and patent expertise.
 
Regarding filing of patent applications on your own
 
We have written an article on our blog, wherein, we list out various forms that have to be filled to file a patent application. Many inventors after going through our article, feel that, filing a patent application is just an administrative process, and all they have to do is fill those forms and send it to the patent office, and their patent gets filed.
However, what they fail to understand is that, the most important aspect in filing a patent application is, preparing a patent specification, which is both time consuming as well as a highly skilled job, which has to be done by professionals.
As mentioned before in this article, patent specification drafting is best done by professionals, if the inventor is serious about protecting his invention.
After drafting the specification, the patent professionals will themselves file the patent application, and advice the inventor about any future actions which may have to be taken.
Choosing patent service providers for your patenting needs  
In light of this discussion, we feel that, the inventor by now might have realized that, availing the services of patent professionals for his patenting needs is in his best interest.
 
Now comes the part, wherein, the search for the right person for the job begins.
 
A few pointers to choosing the right patent services provider for the job.
  •  Do not always go for the lowest bidder. This is not a product you are buying, but availing a service, wherein, different service providers may provide varied quality of service for a varied fee.
  • The most expensive service provider may not always be the best. Speak to the concerned service provider to gauge the level of knowledge, willingness to work on your invention and quality of advice they provide.
  • Choose a service provider, who has domain expertise in the field of your invention, and will be able to understand your invention easily.
  • Search on the internet to gauge the reputation of the patent services provider.
  • Do not choose freelancers especially for your patenting needs, since you need someone who is liable to you and provides you complete support till the end of the patenting process.
  • Have a non-disclosure agreement is place, before disclosing your invention.
Closing statement 
We hope that, our article has helped you in understanding that, a patent specification is the only document that protects your invention, and hence, has to be drafted by the best person for the job. We hope that, inventors do not try to save some money initially and regret it later. We have seen this happen to so many inventors and hope that, we sharing this information with you, will help you take the right decision.
 
We hope that, this article will help you in taking the right decision in tackling the patenting
process. You can download the article here.
 
If you have any queries, you can reach us at contact@invntree.com
Regards,
Team InvnTree
www.invntree.com | contact@invntree.com | +91-80-65700262