Introduction and Background
A patent specification begins with a title. When drafted, the title should ideally be as broad and uninventive as possible; it should simply indicate the type of product or process to which the invention relates. For example, if the invention is a new type of engine that runs on apple juice, then “Engine” would be a good title for the application. The title is the only part of the application that is published immediately, so the idea is to not give anything away and accurately describe what the product is about. “Apple Juice Powered Engine” is a more verbose title, which risks revealing the invention sooner than necessary.
Immediately after the title, the technical field is defined. The purpose of this is to allow the Patent Office Examiner to understand what technical area the invention is in and therefore where to focus the official search. The technical field must be something that existed before the invention was made; if apple juice powered engines have not been made before, then there is no point in saying “This invention is in the field of apple juice powered engines”. Instead, the general technical area in this case may be, for example, “engines and, in particular, but not exclusively, engines for automobiles and other road vehicles”.
The specification below goes on to describe the technical background of the invention. Once again, this section should not reveal the invention. The purpose is to describe problems with the prior art that the invention seeks to solve. The idea is to put the invention in context, helping the reader to understand what has actually been contributed to art and why it is such a good idea. Reference is sometimes made to earlier patent applications or other publications.
Invention statements
The specification goes on to state in clear terms what the invention is. These statements must correspond to the claims (see below). Sometimes the invention statement will simply be words to the effect that “The invention is an apple juice powered engine as claimed in claim 1”. However, we generally prefer to rephrase the statement in its entirety, because it makes the specification easier to read and understand without constantly having to refer to other pages.
Suppose we have discovered that coating the cylinders of our engines with a particular substance allows the engine to burn the sugars in apple juice. Without the liner, the engine can’t run on apple juice, so the liner is essential to our invention: it’s what makes it work. We could say something like “According to the invention, there is provided an internal combustion engine for a road vehicle having a frobyl tetraplasm coated combustion chamber.”
The specification must then explain the advantages of the invention, relating it to the problems of the state of the art that were discussed above. A good way to think of this part of the application is that it is a “sales pitch” for the invention, but it must be a sales pitch with a strong technical foundation. Optional features are described, again explaining the benefits of each.
Detailed description
This part of the specification must describe at least one functional embodiment of the invention. in detail. Usually this is done with reference to the drawings. The purpose of this section is to satisfy the legal requirement that a “permitting disclosure” must be provided to enable a competent person to make the invention. For example, if frobyl tetraplasm is not a known substance, then we need to tell the trained person how to make it or where to find it. We need to tell them how to coat the inside of the combustion chamber with the substance, giving them enough detail so that they can achieve the desired result without resorting to undue trial and error.
It is not necessary to detail each of the possible ways of putting the invention into practice; it is the task of the claims and declarations to define the essential and optional features. However, the detailed description must support the claims to their full extent. Therefore, if we have claimed “an engine for a road vehicle…”, then we must ensure that the enabling disclosure is provided for both truck and car engines. If the motor requires particular features when it is above a certain size, then we must tell the trained person about those features.
The addressee of a patent application is a person skilled in the art. The skilled person does not need to be told what is already within his general knowledge and what he can easily look up. However, a patent application is written for something that is believed to be new, and the skilled person cannot be expected to have to make the invention all over again by himself! Anything in the claim that would surprise the skilled person (for example, the fact that an engine can be made to run on apple juice) must be described in great detail, to enable him to make the thing work. Less surprising features (for example, that an engine may have a cylinder-shaped combustion chamber and a piston that slides inside the cylinder) may need only a brief treatment, since we can reasonably expect the skilled person to know how to do it. an internal combustion engine, and that design involves a cylinder and a piston.
Claim (is
Claims are the legal definitions of the protection sought. They are the most important part of the application document. Although they come at the end of the specification, most attorneys prefer to draft the claims first.
Statements of invention (see above) will mirror the claims and expand on them, perhaps clarifying certain terms and putting them into context. Ultimately, the claims must be interpreted in light of the full description, but that does not provide an “out” for sloppy wording. Claims should be clear in their own right to the extent possible and define something new, inventive and fully supported by the disclosure. On the other hand, the claims must be broad enough to provide commercially useful protection: there is no point in having a patent that can be circumvented by changing an immaterial detail.
Typically, claim 1 will define the essential features of the invention. Subsequent claims will include all the features of claim 1 by reference, and each ‘dependent’ claim will define one or more additional optional features. Claim 1 is the most important, but subsequent claims should also be carefully worded as they provide important supporting positions as well as help the examiner provide a useful search report. Each claimed feature, including optional features, must have at least one debatable advantage, which must be explained in the body of the specification.
In the UK, and many other countries, it is not necessary to provide claims at the time of submission; they can be added up to twelve months later. However, we never recommend this approach, as it involves filing without fully thinking about how the invention is defined. In this case, there is a serious risk that a sufficient basis has not been provided to support a good claim.
Summary
A patent application ends with an abstract. This is really the least important part of the document for the applicant, as it has no impact on the legal scope of the eventual patent.
The purpose of the abstract is to provide technical information and to ensure that the request, once published, can be found when searching for a relevant topic.
The abstract begins with a title. This may be different from the specification title as a whole, and is often more limited. In our example, “Apple Juice Powered Engine” was a poor title for the specification, but it is actually a very good title for the abstract, as it succinctly describes the disclosed invention. The abstract then goes on to describe the invention concisely, with reference to a selected drawing. It must include a description of how the invention is used.
The most important thing when it comes to the summary is to verify that nothing is disclosed in the summary that is not found in the rest of the application. The reason for this is that the abstract material cannot be used as a basis for a later modification in the procedure.
Summary
The text of a patent application has two legal functions:
ยท define the protection sought; Y
provide disclosure enabling the invention.
It is not strictly necessary to go further. However, a good specification should tell a story: when the examiner at the patent office has finished reading, he should be in no doubt that what is claimed is the most inventive thing of this century. In addition, the filed specification must provide sufficient flexibility to take into account prior art that may not be known at the time of writing, but is found during the search at the official patent office. An amendment to a patent application can never add a technical issue, so what is present at the time of filing is absolutely critical to the success of the application.