Systematic documentation of invention
Got a new idea?
Planning for a patent?
What is the first step?
Once you made up your mind to file for a patent and the first meeting with attorney/agent is fixed, it is extremely important for you document the invention systematically. What all shall be documented and how much details are enough, has to be made clear before you proceed further with drafting specification.
Though one feels lazy writing the disclosure of the invention, honestly speaking, there is no substitute to documentation. Sooner or later, you have to document the invention sothat interaction with your agent is comfortable and you waste less time in clarification/redoing work. It is always advisable to execute Non-Disclosure Agreement with the attorney to whom you will be disclosing the invention.
What is to be claimed?
Patent is a techno-legal document and you get protection over the items you claim in the specification. Hence, identification of novel elements, which may relate to a product or process or utility, shall be done at first level itself. Once you are clear about what to claim, the detailed description of the invention in patent specification revolves around such novel elements and helps you to fine tune the invention as well as highlight novelty of the invention. The best way to separate out novelty of the invention is to perform a thorough global patent search and then remove the elements that are in public domain.
In the cases, where a patent application results from a research work, often inventor loves to include most of the experiments that are part of his/her research, which results in redundant and repeated data resulting in increased number of pages as well as extra fee. The data to be included in a patent application shall
a patent application shall only restrict to supporting novel elements of the invention and shall be explained to the level that a person skilled in the art understands it.
Existing technical problem
In order to be patentable, your invention shall have an inventive step. One of the ways to assess inventive step is identification of the technical problem and the solution you provide.
“Though one feels lazy writing the disclosure of the invention, honestly speaking, there is no substitute to documentation. Sooner or later, you have to document the invention.”
The Indian Patents (Amendment) Act 2005 in Section 2(1)(j) and 2(1)(ja) respectively states invention means a new product or process involving an inventive step and capable of industrial application and inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
Hence, you shall always be clear about the prior art or existing knowledge or evolution of technology in order to know technical problem precisely and such technical problem shall be explained properly while documenting the invention. For easy reference, it is critical to document bibliographic details of the patent/non-patent documents known to you or even the work done by other inventors. Clear mention of existence of the technical problem makes it easy to establish the need to have a solution for the existing problem.
As you know that best mode disclosure in the specification is an essential part of a patent application, specifically a complete application that starts with specification is an essential part of a patent application, specifically a complete application that starts with preamble, “The following specification particularly describes the invention and the manner in which it is to be performed”. This clearly indicates that disclosure has to state the best mode of working the invention and at the same time, the disclosure has to be complete, without any gaps in the process.
Section 10 (4) of Patents Act, 1970, clearly states that every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject- matter to which the invention relates to. Every complete specification shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed; disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and end with a claim or claims defining the scope of the inventions for which protection is claimed.
The disclosure of the invention shall be sufficient enough that a person skilled in the art shall be able to achieve the results without further experimentation. Incomplete documentation of the invention by inventor resulting in incomplete disclosure of the same in patent specification may be one of the grounds for patent revocation or invalidation. Hence it is important to disclose complete process that is executable.
Specifications often consist of background, description, claims, abstracts and drawings etc. Step wise documentation of the invention assists your agent to draft specification in a better manner. You may always prepare flow charts or drawings for easy understanding even though the drawings submitted by you often would undergo complete re-doing of the work to match standards of the respective patent office.
Documentation/Disclosure of the invention is integral part of the process of patenting. There is no substitute to it. The quality of the patent specification primarily depends upon the precise and clear information you provide to your patent agent. Even though it takes one or two days extra, it makes lots of sense to spend some time and write the invention description patiently.