Don’t Waste your Patent Applications

Patent applications are generally drafted to protect an invention, but still many times it happens that due to the unnecessary inclusion of contents, the patent application will be wasted and will remain a Paper Patent. Which means that the patent document will no longer be used effectively for preventing competition to your product.

These are the 10 things that the inventor can do to prevent deterioration of the patent document before filing:

  1. Do not ever try to draft patent application on your own, unless you have previous experience of drafting patent applications.
  2. A patent draft is not a technical document, but a techno-legal document. Which means, pure a technocrat or a lawyer without technical knowledge will not be a right person to writing patent drafts.
  3. Generally, inventors focus on advantages achieved by the invention rather than construction/method/process.  Objectives achieved by the inventions cannot be protected but only the construction/method/process can be. Therefore, advantages should not be the part of your claims but can be written separately at the end of the description and in the Objects of the inventions.
  4. Claims should be as short as possible. More you write in the claims, narrower is the scope of your patent. Most of the inventors try to include all elements in the claims, which is not a good. This may give competitors to do some small tweaking with your invention and get away from the scope of your claims, which you don’t want. If the claims are short and broad enough it will be difficult for your competitors to get away with small modifications and it’s true either way when the claims are lengthy and narrow. Getting a grant for a narrow claim is very easy, which is not useful. Writing the claims broad enough while filing and narrowing it down a bit at the time of examination is the best strategy.
  5. Enablement- This is one of the most important criteria for granting patent application. Enablement means, the claims should be enabled in the description by explaining best mode of working the invention, which can be construction or method or process which can be read by a normal person skilled in the art to reproduce the invention.
  6. Figures should be legible and according to the prescribed format by the respective patent office. The format is same across the globe but page setting is different in different offices. Improper figures may confuse the examiner and also the court in case there is an infringement suit filed by you in future. This may keep the opposite part and the decision making authority in dilemma.
  7. If you hire a patent consultant, you should trust him and let him do his part, your duty is to only explain what is your invention and wait for his version of patent specification with claims. You can check the documents with reference to the points mentioned above.
  8. Writing longer patent specification will add value to the patent is a wrong understanding. Shorter the patent application better it is during litigation. Many attorneys also have practices of writing a long patent application to please their clients, which is not advisable.
  9. Hire a Patent consultant/agent/attorney having experience of drafting patent applications from the same field as that of your invention. Generally, patent consultants may have experience of drafting from diversified fields of technology, which is common, just ask for few references before you hand over the work.
  10. Selecting a patent consultant/agent/attorney in itself is a big challenge. Many people have a mirage of expertise and some have real expertise. How to identify. Just check few patents published or ask him/her to work on a sample project in a short deadline of 15-20days, which will give you a fair idea of his/her expertise.

These are few things (not limited to) you can do to prevent wastage of your patent specification.

What is a Patent, a Document or a Technology?

Just to start with, patent drafting can cost you from INR 40,000/- to INR 1,50,000/- in India, USD 4,000/- to USD 10,000/- in Europe, USA, Canada, and most of the developed countries outside. Drafting and prosecution cost is much high than the government fees, WHY?

Can a non-patent professional draft a patent, YES. Then why to spend so much.

This question brings us back to the basics:

What is patent?

As a layman I can say, my technology is protected by a patent, correct.

So what is protected?

Technology or the document containing the technology?

Basically it starts with the technology, the patent document is drafted to protect the technology in such a way that:

1. No one copies your technology,
2. No one can get around your technology by doing minor modifications, and
3. To create an infringement trap for other, border the claims border the trap.

Yes, the patents are drafted for protecting the invented technology, but the patent documents submitted in black and with the patent office cover border area, protecting things beyond your technology.

Now its no more a technology, its a document defining what is protected and what is not. Therefore, drafting of a patent is totally different from drafting a technology description. Some practitioners falsely refer to the patent drafting as an art of writing technology in complex way. Rather I would say, the patent document should be written in such a way that any person with ordinary skills in the domain should understand it just by reading. This is also one of the requirement of the patent act’s globally, which is referred as “Enablement” Read more

Understanding Patent-ability (Inventive Step)

We have discussed “NOVELTY” in detail in the earlier post. Now we will understand inventive step, which is second most important criteria for getting your patent application granted. Always, patent applications are validate for novelty first. If the examiner cites citation(s), which can destroy novelty, then no further search and analysis is conducted. If there is no relevant citation for destroying novelty, further search is conducted to validate the patent application for inventive-step/non-obviousness.

What is inventive step:

According to Indian Law:
Section 2(Ja)
“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”
Meaning: Even if the invention is new(novel), it should have technical advancement or have economical significance or both which is not obvious to a person skilled in the art.

According to EP Law
Article 56 – Inventive step
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.
Meaning: the invention should be not obvious to a person skilled in the art. Article 54 states requirement for novelty.
Applied Test: Problem Solution Test or Problem-solution approach
The problem-solution approach essentially consists in three steps:
1. identifying the closest prior art, i.e. the most relevant piece of prior art, and determining the difference(s) between the invention and the closest prior art;
2. determining the technical effect brought about by the difference(s), and that defines the objective technical problem (namely, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves); and
3. examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.[4]

According to US Law
What is referred by India and Europe as “inventive step”, is referred as “”non-obviousness” by US Patent Law.
35 U.S.C. 103 authorizes a rejection where, to meet the claim, it is necessary to modify a single reference or to combine it with one or more other references. After indicating that the rejection is under 35 U.S.C. 103, the examiner should set forth in the Office action:
• (A) the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate,
• (B) the difference or differences in the claim over the applied reference(s),
• (C) the proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter, and
• (D) an explanation as to why the claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made.

Applied Test: Teaching-Suggestion-Motivation

In India, as on date we don’t have any test, but some guideline not so explicit enough.

What kind of citation can prevent patent application for getting granted for Inventive step?
For this, the patent examiner needs to cite patents/non-patent literature that are describing few of the proposed in the patent document. The citation can be patent or non-patent literature. He may try to combine these two or more citations together to envisage the technology described in the patent application under examination. Combining these cited documents to gather should be obvious to a person skilled in the art. Also, such combining these two documents should not be obvious to a person skilled in the art. Eg: nut and bolt replaced by rivets, glue stick and butter stick and the like.

For example: Mr. Adam has applied for a patent in 2010 for his invention of an electric drier with a detachable handle. The examiner will search to identify an electric drier with adjustable handle. If the examiner is able to identify both an electric drier and adjustable handle, the patent applicant may be rejected for lacking novelty. If he fails to identify, both in a single patents, the examiner will try to cite documents with a electric drier separately and adjustable handle separately. Additionally, the examiner needs to identify a document which suggests use of adjustable handle in the air drier. Even non-patent literature are cited. Documents published before the date of filing of the patent application are only considered relevant for negating patent application for inventive step.

Therefore, for negating patent application based on inventive step, the examiner need to combine explanation of the two or more documents and try to envisage the proposed invention in the patent application. Further, such combination should be obvious to a person skilled in the art.

Understanding Patent-ability (Novelty)

There are three main criteria for getting a patent application granted, 1. Novelty, 2. Inventive step (non-obvious) and 3. Industrial use (utility). In this article i would emphasis on novelty.

There is no restriction by any patent office across the globe on filing a patent application for any technology (exception nuclear and defense technology in India). Depending upon nationality and domicile of a person a patent application can be filed with the respective patent office with permissions if required. For example, an Indian national cannot file direct patent application in other countries, unless the technology has been conceived on the soil of that particular country. Either an Indian national can first file a patent application with Indian patent office and then file it internationally after defined period and within stipulated time. Similarly, a legal entity (Company or Institutes) can choose an appropriate office for filing patent application.

Once the patent application is filed with the patent office, the patent application gets published and then goes for examination. At the stage of examination, the patent document is verified by the examiners for any typographic or formatting errors. Thereafter, based on the claims submitted with the patent application, search is conducted to cite relevant documents.

What kind of citation can prevent patent application for getting granted?

Many a times it is mistaken that only patents are cited during search for checking novelty. This is not the case, any document that is public-ally available, such as patent applications, patents, journals, blogs and other literature can be cited for finding similarity. Even general knowledge available with the public may be considered relevant. Section 2(l) of Indian Patent Act 1970 states that “new invention means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art”. In this section, “anticipated by publication in any document” refers to the documents that are mentioned before (patent applications, patents, journals, blogs and other literature), which may be considered relevant for negating novelty of the technology.

Another mistake inventors or applicants make is presuming that only patent or other documents published or technology used in a specific jurisdiction are considered testing novelty. For example, suppose a technology is new in India and same needs to patented in India. Even if the technology has never been implemented, used or available in India it cannot be patented. As per section 2(l), the technology should “not been used in the country or elsewhere in the world”. Which means, any technology that is used or implement or published as a patent or literature or know how, cannot be protected under patent in other countries. Therefore, the patent examiner can cite any document/publication from across the globe as a relevant citation for negating novelty of the technology.
Generally the patent applications are examined after approximately 2-3 year after filing. This does not mean that what every examiner finds on that day, will be considered relevant. Specifically, the examiner will cite the documents that are public-ally available before the date on which patent application was filed. Therefore, it is important to file patent application as early as possible by conducting a search for checking novelty of the technology.

Therefore, for destroying novelty of a technology, any documents published before the date of filing is relevant.