Patent Drafting is probably the most critical aspect of the patent application. Intellectual Property right provides the applicant with the right of excluding others from using the same invention. It is also dependent on how well the claims are drafted in the patent, thereby making the drafting process the most critical part. 

Moreover, we need to understand that the nature of the patent document is techno-legal. The essential part of the patent is the technical aspect for which the protection is claimed. The application must make these protected elements, i.e. claims, very clear. Further, the claim drafting skill requires a culmination of art and science. The claims drafting should be done to ensure the scope of the protection and make the reader well aware of the boundary of the scientific knowledge that the patent has been claimed.

The difficulty of drafting 

There is no single justification for the question of why a patent application is so complicated. The innovative steps are still in their infancy in certain circumstances, making defining the patent’s scope challenging. This will create a more complex situation where the drafting must cover the most space possible from the basic innovative procedures. 

As more experiments with the invention are conducted, there is a risk that the patent’s scope will be modified simultaneously. The shift in the inventive step will result in a change in the boundaries of patent claim boundaries. Before reaching the entire specification, re-drafting may be required at several levels. 

When the available data is insufficient to support the claim’s breadth in the patent, adequate data can make drafting difficult. The claims’ breadth must be complemented adequately with valuable data to acquire adequate protection. 

In some situations, the applicant must provide thorough descriptions for any person versed in the field to understand the invention. It is difficult for the drafter to inject life into the statements when there is little data. 

The patent is not written with the average individual in mind. Because the persons working on the patent have the necessary technical knowledge and drafting skills, the drafting must adhere to the claim language. One phrase is enough to prevent the patent from being granted.

It is critical to construct the patent with the possibility of objections in mind. As a result, it becomes vital that more information be given in the specification to aid in the resolution of future misgivings.

The significance of patent drafting 

To attain benefit from patents, the patent owner must reveal his invention in a patent specification and establish the scope of his exclusivity. If the inventions are not sufficiently disclosed in the patent specification, the applicant’s patent rights are likely to be cancelled. As a result, a patent specification must be developed to ensure that the document satisfies all angles from both a technical and legal standpoint. The claim should not be drafted to be defined much broader or narrower. Competitors can quickly get around the patent in both circumstances. The process of obtaining a patent is time-consuming and costly. Before preparing a patent, it is highly recommended that you seek practical guidance and assistance from qualified professionals.

The importance of claim drafting and the obstacles it poses to patent applicants 

Patent claims should sufficiently and clearly define the invention and becomes an essential component. In other words, the patent claims establish a boundary between what the invention claims and what the patent claims. Further, the patent claims are supposed to indicate the extent of the protection provided by the patent grant by defining the limit of the innovation. The claim is written in a way that states the technical features of the patent and defines the clear scope. When a patent is awarded, the innovation is placed in the public domain, informing the public about the patent’s scope and what constitutes an infringement. This data is crucial since it is based on whether the right is exercised and claimed and what constitutes an infringement.

They are the foundation of the legal and moral protection provided by patents. One of the essential tasks of the patent claim is to define the invention’s goal. In specific ways, claims act as a boundary line. In case if someone crosses the boundary, they infringe on the patent owner’s rights. Because the claims are so important, they must be written correctly to ensure complete protection. It may pose complications in prosecution and litigation if it is not adequately expressed. As a result, it is recommended that inventors seek legal advice during the preparation of the claims, as it is a legal document. The patent is granted an exclusive licence to restrict anyone from selling, manufacturing, or offering for sale the subject matter indicated by the claims.

One must ensure that the claims are appropriately constructed for the Indian Patent Office (IPO) examination phase when the patentability criteria such as novelty, inventive step, industrial applicability, and patentable subject matter as defined in the Indian Patent Act are assessed. However, when a third party challenges the patent holder, the quality of the drafting might make all the difference. This can occur during opposition procedures before the IPO, when the patent holder seeks to defend her rights against the infringement in court, or when the patent’s validity is contested in court by a third party.

The patent applicants must be more aware that the easier it is to defend the invention against third parties, the better the comprehensive specification is written, and the claims are written clearly and accurately to describe the invention or the imagined “border.” Overly broad claims will be dismissed due to a lack of clarity. In infringement proceedings, however, excessively detailed claims might be difficult to enforce against third parties since they will argue that their actions/products do not infringe on the patent because the claims in the patent do not cover them. When it comes to patent drafting and claim interpretation, it’s always a good idea to verify the procedures of the respective national patent office to determine the scope of revisions when filing an application in another country like India.

Case Study:

ENCO’s US Patent No. 7,047,191 was invalid under 35 USC 101 because the patent was directed towards an abstract of an idea. Enco System Inc., the plaintiff, in this case, filed an infringement claim against DaVincia LLC. 

The current case concerns ENCO’s US Patent No. 7,047,191 for a technique of providing captioning in an audio-visual stream, which has limitations like:

  • Select the number of lines of the caption data to be displayed (I have an image below showing how my phone does this).
  • Determining the caption encoder system being used
  • Training the system to on new words;
  • Using AV cues to time the captioning to display at the appropriate time.

While investigating the case, the District Court discovered that the claim limitation was written in a generic form that used “broad form functional terminology“. In the Judgement, the court concludes that the claim restriction lacks any specific arrangement that may serve the abstract idea and that the claims are instead directed to the abstract idea of “computerised stenography“. 

Patents are granted because the inventor has significantly improved over the prior art with the innovation. The court examines the claims and specifications in order to find objective suggestions and finds that the patent claims are wrongly “directed to” an abstract idea. In Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016), the court stated that the patent document asserts as the “focus of the asserted advance above; the prior art.”

The court stated that the focus “is simply the abstract idea of automating the AV-captioning process” in examining the patent claims. Further, the claimed invention is not directed to “any specific improved computer approaches for fulfilling those functions-functions essential to the concept of AV captioning,” even if it does include computers. The court pointed out that the technology automates work previously done by people and thus added nothing new. 

“Because independent claim 1 fails to set out specific ways for processing the data, instead of reciting known computer techniques for automation of recognised processes,” the court argues, “the progress is solely at the abstract level of computerisation.” “The claims do not integrate anything more than typical computing gear and software that fails to transform the subject matter into an eligible patent application of the abstract notion,” the court continued.

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Author

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    Abhishek is an intellectual property Attorney. He specializes in the registration and maintenance of patents, designs, trademarks, and copyrights. He regularly assists companies in relation to crucial technology issues. He also helps organizations or individuals to develop patent portfolio management strategies for exciting new inventions and processes. Abhishek has past work experience with reputed firms like SaiKrishna and Associates Advocates, L.S. Davar and Co., Masilamani Law Partners, and Ripple IP Services (NCR).