Patent Specification

A Patent Specification is a legal document. It must comply with legal rules, and usually it will follow a tried and tested format because that format helps the patent attorney to get it approved by a patent examiner in a national patent office, resulting in a granted patent.

Patent Publications

You will typically find two versions of a patent publication relating to a patent application:

• a published patent application in its as filed in its unexamined form; and
• a published grated patent after examination and grant.

There may also be further publications if the patent is amended voluntarily or by order of the court after the patent is granted.

Patent Application

Typically the published patent application will have a seven to nine digit number followed by the letter 'A'. If it is an 'A' document the patent claims will almost certainly be changed before they are published as a granted patent publication.

Granted Patent

Typically the published patent application will have a five to nine digit number followed by the letter 'B'. The claims in a 'B' document are the claims that have been accepted by the patent examiner.

Navigating the Patent Specification

Title

A patent specification begins with a title which can be quite vague, such as 'Improved Electrical Switch' because in Australia the title is published when the provisional patent is filed and companies prefer not to give too much away at this very early stage.

Background

The first paragraph puts the invention into context, saying a bit more about what the invention is, such as: 'An electrical switch for use in a domestic lighting circuit'. So if the reader is interested in a semiconductor switching circuit, the reader can stop reading and turn to the next document requiring review.

Prior Art

There is then often a paragraph or two referring to earlier patents or published papers with a brief comment as to why the invention is more effective or cheaper or otherwise better. This is preparing the ground for arguments with the patent office at later stage.

Summary of the Invention

A paragraph beginning 'According to the invention' or 'In a first aspect' follows. This is a precursor of the claims at the end of the specification and defines the invention. A list of drawings comes next, showing at least one 'embodiment', i.e. an example of the invention, sometimes several embodiments showing variations. This list is followed by a detailed description of each drawing, using the reference numerals on the drawings to link the text to the figures

Detailed Description

The description probably seems unnecessarily detailed to an engineer reading it, but it is part of the tried and tested format. The legal requirement is that the description discloses the invention in a manner which is sufficiently clear and complete for it to be carried out by 'a person skilled in the art'. This means a technician with a general knowledge of the field to which the invention relates. The general principles have to be given, but not a full technical specification. For example, for an inventive electrical switch, the general principle on which it works must be described, but it is not necessary to give material specifications or precise dimensions.

Dimensions are generally absent in patent specifications, unless they help to make the invention clear. It is the principles behind that count and not the exact sizes and dimensions of the embodiments of the invention.

Claims

Finally there are numbered paragraphs headed 'Claims'. These are the most important part of the patent document. Each claim is a single grammatical sentence, although this is sometimes hard to believe. Claim 1 sets out the broadest definition of the inventive concept. It must have all the essential features of the invention—if a feature is missed out, the invention would not work and the claim would be invalid. Claim 1 must have no inessential features—if it had, a competitor could simply build the invention without the inessential feature and would not infringe the patent

Claim 2 usually refers to claim 1, it 'depends' on claim 1 and thus it includes all the features of claim 1 and adds another detail. This is the first fall-back position. If the invention defined in claim 1 turns out to be not new after all, the invention as defined in claim 2 (with the additional material) may still be new, and a patent can be based on this narrower concept

A claim is broad in scope if it has only a few features, known in the trade as 'integers'. The claim then covers all variations of the defined invention, using only the combination of integers as set out. A claim is narrow if it has a large number of integers. Thus a claim with lots of words is a narrow claim.

There are several types of claim; one is an apparatus claim, i.e. a claim to a new type of physical object. Another type is a method claim which covers a method of making something that is itself known, such as a new way to make a known pharmaceutical. Method claims can also apply to a new electrical test performed on known apparatus.

Getting Help

Just as drafting patent claims requires expertise, so does interpretation of patent claims. Such interpretation is needed when a company is checking that its own product or process does not infringe a third party patent, or when a business thinks that one of its own patents is being used by others. Expert patent interpretation is then vital, as large sums of money, or even the company's future existence, could depend on the outcome. A patent attorney should be consulted for a full opinion on the situation.

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