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Saturday, 04 February 2012

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Structure

Brief guide to the Structure of a Patent Application

A pending patent application (and indeed a granted patent) consists of a number of separate sections, each of which has to comply with a large number of specific legal requirements. The purpose of this note is to set out in a straightforward way what the purpose of each section is, without delving too far into the complexities of Patent Law. For the sake of simplicity, each individual section is given a heading in the text that follows, although you should understand that the individual sections of most patent applications typically run on, one after the other, without any intermediate headings whatsoever. Although headings are conventional in some countries of the world - notably the USA - where they are used the wordings will often not be identical with the headings given below.

Title

Every patent application starts with a title, the purpose of which is to set out the general field of the invention. The title is normally broad and non-specific. It is not considered good drafting practice to "give away" the essential features of the claimed invention within the title, so you should not be surprised if the title used is much broader and more generic than you had expected.

Field of the Invention

The patent specification proper always begins with a statement setting out the general field of technology within which the invention may be used. This is typically only a single paragraph (often only a single sentence) and again is normally extremely broad.

Prior Art

There next follows a discussion of the "prior art", in other words of the most relevant things which are already known in this particular field of technology. The exact legal definition of "prior art" differs from country to country but normally any public disclosure of anything similar to the invention, whether by written or oral description, by use or in any other way, counts as prior art. The purpose of this section of the patent specification is to set the scene and to explain what the problems are with known devices, methods or systems.

Objects of the Invention

Some but by no means all patent applications include a section which starts "It is an object of the present invention...". If present, this section sets out the technical aims that the present invention seeks to achieve.

Consistory Clauses

This section typically starts with the words "According to a first aspect of the present invention...". In European and UK cases, there will be a statement which corresponds with the wording of the main claims, followed by some explanations of the advantages and preferable features of the overall inventive concept in its broadest form. The wording in a US patent application is similar, but there may not be such a close one-to-one correspondence between what is set out here and what is defined in the patent claims. The technical advantages provided by the invention may also be set out here.

Description of the Drawings

Next follows a brief summary of the various drawings (if any) included within the patent application.

Specific Description

This section of the patent application focuses on the technical rather than on the legal aspects of the invention. It sets out in detail, typically with reference to some drawings, the preferred way of actually putting the invention into practice. There may be several possibilities, in which case a number of separate "specific embodiments" will be described. Particularly in chemical or biotechnology cases, worked examples and/or experimental results may also be included.

It is important for the specific description to describe the preferred way of putting the invention into effect in enough detail for the invention to be carried out by a skilled person. That means in practice that anything which is not common general knowledge to a skilled person in the field needs to be described in detail, or at least cross-referenced to another published document which includes such a description. To avoid anybody alleging at a later stage that the description is not complete, it is usual practice to spell out in detail all industry acronyms and jargon, and to provide explicit references to published standards or other background documents that may be relevant.

It is an absolute requirement of the patent system that sufficient detail be provided to enable a skilled person to put the invention into practice without the use of further inventive effort, failing which the entire application and any resultant patent will be invalid. In the USA, there is a further requirement that the so-called "best mode" is described: in other words that the description sets out the best and most effective way known to the inventors of putting the invention into practice. It is not permitted to describe a sub-optimal example or embodiment, with a view to keeping the best one secret: if the best mode is not fully disclosed, the application and any resultant US patent will be invalid. Although this particular requirement is not part of UK and European law, it is usual to comply with it in any event to avoid possible problems if an application currently being drafted is later used as the basis for a US filing.

The specific description is normally the longest part of a patent application, and is typically quite detailed. Anything described here is purely illustrative of one way of putting the invention into practice, and does not normally have the effect of limiting the overall scope of the monopoly protection.

Claims

This is the part of the patent application which formally defines, in legal terms, the precise scope of the monopoly protection which is being sought. Similarly, for a granted patent, the claims define the precise scope of the monopoly protection which is provided by that patent.

The claims consist of a series of numbered paragraphs, the first of which (claim 1) delineates precisely the overall scope of the monopoly which is being sought. Thus, it defines effectively what the overall invention is believed to be, in terms which are deliberately as general as possible. The claim may be thought of as a "ring fence", in words, within which nobody is allowed to go without the consent of the patent owner. In the case of a newly-drafted patent application, your attorney will have drawn up this claim with significant care, the aim being to define as large an area within the "ring fence" as possible, but not so large an area that the claim covers something which is already known (or which is simply a trivial extension from something already known).

In order to infringe claim 1, a competitor will have to take each and every one of the specific features which are set out in the claim. As a result, it is most important that the claim does not include any feature (not even a single word) which could be omitted or changed by a competitor while at the same time still maintaining the technical benefits of the invention.

You may often find that one or more of the features that you think characterises your idea, in its preferred form, has been omitted from claim 1. While you should certainly raise that with your attorney (to make sure nothing fundamental has been overlooked), such an omission is normally deliberate. The more features that are included in the claim, and the more specific each of those features are, then the narrower the overall scope of the monopoly will be. Subject to your commercial and technical requirements, it is good drafting practice to omit from claim 1 as many features as possible, and to set out only those features that are absolutely indispensible to the operation of the invention in its broadest possible sense.

In addition to claim 1, there may be a number of other so-called "independent claims", which likewise define the overall scope of the monopoly protection that is being sought but from a different angle. In a computer case, for example, there might be one independent claim that protects the hardware, another that protects the method or algorithm, another that protects a computer system, and another that covers a computer program stored on a data-carrier such as a CD. Independent claims can be identified quite easily, since they are the only claims that do not refer back to previous claims.

Claims that do refer back to earlier claims are known as "dependent" or "subsidiary". These set out a variety of features which are preferred but which are not essential to the invention in its broadest form. The purpose of these claims is to provide flexibility for possible amendments to the text at a later stage. For example, during prosecution of the application before the Patent Office, the Examiner will do a search which may locate additional prior art, not previously known to you. In such a case, it may be necessary to reduce the scope of claim 1 slightly to ensure that we are not attempting to claim protection for something which is already known; the subsidiary claims provide an allowable basis for doing that. Likewise, once the patent has been granted, the subsidiary claims can in some circumstances be used to provide a fall-back position in the event that a third party or a competitor proves that the granted version of claim 1 was too broad.

Sometimes you may find that the claims mention features that you are not yourself interested in using, and you may also find that they mention a variety of options which may not all be usable at once. That is normal. The purpose of the claims is not to define what it is you wish to do yourself, but to define a ring fence to keep others out. Typically, you will want monopoly protection covering a variety of different options, even if you already know that some of those options may not be ideal.

Abstract

The abstract does not itself form part of the patent application. It is provided solely as an aid to searchers in identifying the field and basic nature of the invention. It has no effect on the overall scope of the patent.

Drawings

The drawings do form part of the patent application. They are illustrative of one or more of the preferred ways in which the invention can be put into practice, but they are not limiting. The fact that detailed features may be shown in the drawings does not in any way limit the overall scope of monopoly protection, as defined in the claims.

Michael N Maggs
© Kilburn & Strode 2003

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