Basics of Specification Drafting- A Presentation by Somshekhar Ramkrishana Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. By
Somashekar
BananaIP

2.  The object of Patent Law is to encourage scientific research,
new technology and industrial progress. The price of the grant
of the monopoly is the disclosure of the invention at the Patent
Office, which after the expiry of the fixed period of the
monopoly, passes into the public domain. Biswanath Prasad
Radhey Shyam vs Hindustan Metal Industries on 13 December, 1978
SPECIFICATION

3.  Patent Application
 Form of Application
 Provisional Application (Provisional Specification + Filing
documents)
 Non Provisional/Complete Application (Complete
specification + Filing documents)
 Priority Date- filing date of the first application in a
chain of applications

4.  Section 7(4)- Every such application….shall be accompanied by
a provisional or complete specification
 Section 10(1) Every application…shall describe the invention
and…begin with a title…
 Section 10 (4)- every complete specification shall
 Fully and particularly describe the invention
 Disclose the best method
 End with a claim
 Be accompanied by an abstract
 And so on….

5.  Title
 Preamble of the invention
 Technical field
 Background
 Objects
 Statement of the invention
 Brief description of the drawings
 Detailed description
 Claims
 Abstract
 Drawings

6.  Coffee dispensing machine in which a
crusher/grinder for grinding coffee beans is
included as a novel and inventive concept

7. 1. Should be provided in the first page of Form-2
2. Should indicate the subject matter
3. Should not be more than 15 words
4. Should be free from fancy expression or
ambiguity
5. Inventor’ s name, the word “patent”, words in
other languages and so on should not be used

8. 6. Should correspond to the broadest claim
7. Should embrace all variants of the invention
(apparatus and method)
Title for our Invention?
“Apparatus and method for dispensing coffee”
“Coffee dispensing Machine and method of
dispensing coffee”

9.  Should be provided in the first page of Form-2
 Provisional Specification
 The following specification describes the invention
 Complete Specification
 The following specification particularly describes
the invention and the manner in which it is to be
performed

10.  Provided in page 2 of Form-2
 Should indicate general art to which the
invention belongs
 Areas of application may be mentioned
Technical field for our invention?
“The embodiments herein generally relate to
dispensing machines and more particularly to an
apparatus and method for dispensing coffee”

11.  Distinguish the invention from what is already
existing in the field
 Should not describe the claimed Invention
 Should use drawings to explain any prior art
 If the latest art in the field (prior to the
invention at hand) is Applicants own work ,
then such work should not be described here
 Do not exaggerate the disadvantages of prior
art

12.  Do not criticize the prior art
 Example
Mesh layer
Guard
panel
• Specification:
– Composite guard includes guard
panel and mesh layer attached
by continuous fusing or
heat/ultrasonic welding
– criticized attachment means
in prior art
• Background:“[t]he attachment
means used in other prior art gutter
guards is generally less effective,
and more costly, time consuming,
and labor intensive”

13.  Claim:
 Heat weld...connecting said mesh layer to said guard panel
 Accused product: Mesh screen attached to guard panel by
adhesive/hot glue
 Held: No literal infringement and no infringement under DOE

14.  Background for our invention?
“…At present, coffee beans are crushed/ground
separately to obtain coffee powder. Thereafter, the
coffee powder is packaged and brought to be fed into
the coffee dispensing machine. The aforementioned
process is tedious and time consuming and hence
having a crusher/ grinder integral to the coffee
dispensing machine is desirable…”

15. “…In the existing coffee dispensing machine as shown in
Fig. _, powdered coffee is provided manually through
an inlet i of the machine…”

16.  Should set forth broad objectives
 Acts as a pointer while drafting detailed
description
Objects for our invention?
“An object of this invention is to provide an apparatus for
crushing coffee beans and dispensing coffee.”
“Another object of this invention is to provide a method for
crushing coffee beans and dispensing coffee.”

17.  Usually drafted when omnibus claims are
intended to be introduced.
 According to new manual of patent office
practice and procedure (MPPP), Omnibus claim
should be avoided.

18.  Should clearly indicate that that the drawings
are showing embodiments of the invention
and not the invention itself
 Should start with “…The invention is illustrated in
the accompanying drawings, throughout which like
reference letters indicate corresponding parts in the
various figures. The embodiments herein will be better
understood from the following description with
reference to the drawings, in which:…”

19. Brief description of the drawings for our
invention?
“Fig 1 shows a coffee dispensing machine according
to an embodiment of the present invention; and
Fig. 2 is a flow chart showing the process of
dispensing coffee.”

20.  Should start with the following, or similar paragraph:
 The embodiments herein and the various features and
advantageous details thereof are explained more fully with
reference to the non-limiting embodiments that are illustrated
in the accompanying drawings and detailed in the following
description. Descriptions of well-known components and
processing techniques are omitted so as to not unnecessarily
obscure the embodiments herein. The examples used herein
are intended merely to facilitate an understanding of ways in
which the embodiments herein may be practiced and to further
enable those of skill in the art to practice the embodiments
herein. Accordingly, the examples should not be construed as
limiting the scope of the embodiments herein.

21.  Should provide sufficient details of the
invention
 The making and using of the invention should
be explained in depth so as to enable a person
having ordinary skill in the art to practice the
invention
 Details of the invention should be explained
with reference to drawings
 Should disclose best mode

22.  The terminology should be consistent
 Should be well organized and easily
understandable
 Start with a general overview and proceed with
increasing levels of detail
 Should set forth several, if not all, alternative
working examples even if only one embodiment
is illustrated in the drawings

23.  Detailed description for our invention?
“… the apparatus 100 as shown in Fig 1 includes a
housing 10. The housing 10 is provided with a first
hopper 12a and a second hopper 12b on a top
portion thereof. The housing 10 is adapted to receive
a first container 14a, a second container 14b and a
collector 16 and a dispenser 18. The dispenser 18
includes a plurality of outlets 18o. ……..”

24.  Should start in a different page
 Should start with Preamble I/We Claim
 Define the scope of protection
 Every claim has a date associated with it
 Every claim is an invention
 What is not claimed in the “claims” stands
disclaimed

25.  Parts of a claim
 Preamble
 Transitional phrase
 Body
Example Preamble Transitional Phrase
A system for……., said system comprising:
element A;
element B; and Body
element C.

26.  Independent claim
 Stand alone
 usually broad
Example
1. A system for….., said system comprising:
element A;
element B; and
element C.

27.  Dependent claim
 Dependent on independent claim or another
dependent claim
 Narrow scope
Example
1. The system as claimed in claim 1, wherein
element A comprises element D.

28.  Multiple dependent claim
 Refers back to more than one claim in alternative
 Narrow scope
Example
3. The system as claimed in claim 1 or 2, wherein
element A further comprises element E.

29.  Draft a broadest independent claim with at
least one novel point and then proceed with
drafting dependent claims
 Do not include unnecessary limitation in the
independent claim
 Claim an apparatus in non-operational state
 Do not include multiple dependent claims

30. Example:
Provisional specification was filed disclosing elements A B and C on
February 26, 2011. Complete specification will be filed on
February 27, 2012 disclosing elements D and E along with
elements A,B and C.
1. Can the complete specification claim priority from provisional
specification?
2. What is the priority date of a claim claiming elements A B and C?
3. What is the priority date of a claim claiming elements D and E?
4. What is the priority date of a claim claiming elements A, B, C, D
and E?

31.  Example
1. A chair comprising a seat and a back rest. Said
chair further having four legs.
1. A chair comprising:
a seat;
a backrest; and
at least one leg.

32.  Example:
1. A fan comprising:
a rotating hub; and
three wings attached to said hub.
1. A fan comprising:
a hub configured to rotate; and
at least one wing attached to said hub.

33. Claims for our invention?

34.  Should be in a separate sheet
 Start with the title of the invention
 Should not exceed 150 words
 Should indicate the figure which needs to be
published with it

35.  Should be accurately referenced and described
 Should show every feature of the invention

36.  Title
 Sequence of drawings
 First draft of Claims
 Technical field
 Background
 Object
 Brief description of drawings
 Detailed description
 Final claims
 Abstract

37. THANK YOU
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