Saturday, June 20, 2009

Patent Application Drafting is an Art

Drafting of a patent application is an art. It requires both legal and technical expertise. In addition, it may have a lot of bearing on the future enforcement of the patent itself.

In general, Patent applications are drafted with the help of patent attorney or patent agent who has the technical background as well as legal background or patent law expertise. In order to obtain a patent for an invention, the invention must have the patentability criteria such as novelty, inventive step, industrial application and also disclosure of technical information to satisfy to practice the invention by a person skilled in the art. The patent applications are drafted and submitted to the patent office, mainly to disclose the technical information to the public and, to get the exclusive right for a defined period which is being claimed by the patentee in the application.

A patent application has the following major parts such as Title, Background, Technical disclosure, Abstract and Claim. The person who writes patent application must have the capability of understanding the area of invention, so that he would be able to draft the application to meet the patent application requirement. To understand the area/strength of the invention, the technical person can only able to differentiate with existing technology, and can able to bring the novel feature and inventive step of the invention in the technical disclosure and background of the invention.

The main part of the patent application is Claim, which defines the scope of the protection of invention and prohibits others from making, using, selling or offering for sale the subject matter defined by the claims, without the permission from the patentee. Hence, the claim construction is considered to be the heart of the patent, and it is imperative to protect the invention as well as enforcing the patent. The word in the claim has to be written very clear and succinct. The meaning and interpretation of each claim is referred with the technical disclosure in the application. While drafting the claim, the patentee needs to be very careful for selecting the words in the claim to avoid any ambiguity.

In order to construct the claims, the person needs to now the law in the jurisdiction, so that he would be able to craft the claims to meet the patent law of the jurisdiction. Therefore, it is essential to have legal expertise for crafting the claims. For example, two part claim [Jepson claim] is essential in EPO to differentiate the novel feature, where as is US, it is taken as known in the art before the separation phrase in the two part claim. Another example, Omnibus claim is allowed in India; however it is not allowed in US. Without the knowing the patent law in the jurisdiction, it would not be possible to draft the claims properly.

In a patent application, it is essential to have to comprehensive technical disclosure before filing the patent application as the new matter can not be added after filing the patent application, but at the same time, claims can be amended during the prosecution of application. The patent is granted based on the technical disclosure and patentability of inventions and, the claim is sought to protect the invention. Therefore, drafting of patent application is an art and it requires both technical and legal expertise to obtain a patent.

Patent applications are filed to protect the invention and to obtain the patent, and also to enforce the patent. The future enforcement of any patent application is mainly depends upon the scope of the protection of invention, particularly the scope of the protection is determined by the claim crafting. Hence clearly drafted patent application with proper claim will help the patentee to find the potential infringer. While drafting the patent application, the subject matter has to be distinguished from the prior art to avoid from the litigation, and also the claim has to be written with well support of technical disclosure to avoid the invalidation of patent. Therefore, enforcement of patent is determined by the quality of patent application drafting.

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