India: Why Should Patent Specifications Be Drafted By Patent Professionals?

Patent Specification; the most important document

A patent specification is a techno-legal document based on which patent rights are decided. The specification is what appears in public domain once it is published. Competitors, person with ordinary skill in the art and general public may be among those who read the specification, apart from the patent Examiner. Hence, it is important to bestow extreme care while drafting patent specification, most importantly with respect to the language and structure.

Using/Picking the right language is important

A specification is a tool, which may be used in favour of the patentees or against the patentees. Since it is a tool of such importance, it should not be left to a layman to design it.

Often, inventors are seen drafting their own patent specifications, without taking help of professionals, due to various reasons. But, some inventors may not even be aware of the patenting process and its requirements and hence may not necessarily be able describe the invention to satisfy the requirements in legal terms. As such, inventors, who are novice to the process of patenting, may easily make mistakes in the specification and such applications may face rejections for failing to comply with the requirements set forth by the Patents law. As such, all the effort put into the patenting process may go in vain.

It is extremely important to use carefully selected language to describe an invention to satisfy requirements both in legal terms as well as in technical terms. Selection of the right words/language may prove tricky when the draft-person is a novice. Words have to be chosen extremely carefully because even the slightest mistake, which may not seem harmful, may be often used against the patentees during prosecution or opposition proceedings. Unclear and indefinite languages used in the specification are always likely to attract competitors, or any person interested to invalidate or oppose the patent/patent application.

A specification is valuable and it should be refined to perfection by choosing the language carefully and intelligently. To apply such intelligence in drafting, it is recommended that a skilled professional drafts the specification.

Probable mistakes in a specification

There are certain critical areas where mistakes might occur when one does not understand the importance of language and the structure of the specification and the nuance involved in using the appropriate language. Not only is the language important, satisfying the requirements of patentability is equally important.

Critical terms not defined:

MPEP § 2111.01 states, any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention."

In a patent application, the claims may use critical terminologies. Such terminologies may have to be defined well enough in the specification; as such terms may not always interpret a dictionary meaning. In a patent specification one can define the terms one wants to use in the claims to give them the meaning one intends. Unless certain critical terminologies are not well defined, the terminologies are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art (MPEP § 2111.01).

While discussion about the mistakes that may occur with respect to language used in a specification, reference can be made to the case of  Chef America v. Lamb-Weston.

Chef America (the plaintiff) sued Lamb-Weston (the defendant) in the United States District Court for the District of Colorado on charges of infringement on their patent US Patent No. 4,761,290. The plaintiffs appealed from the United States District Court for the District of Colorado. The United States Court of Appeals for the Federal Circuit affirmed the judgment passed by the District Court.

Claim 1 of the above patent reads as follows,

" A process for producing a dough product which is convertible upon finish cooking by baking or exposure to microwaves in the presence of a microwave susceptor into a cooked dough product having a light, flaky, crispy texture, which comprises the steps of: providing a dough; applying a layer of shortening flakes to at least one side of said dough; coating a light batter to a thickness in the range of about 0.001 inch to 0.125 inch over said at least one side of said dough to which said shortening flakes have been applied; heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F. for a period of time ranging from about 10 seconds to 5 minutes to first set said batter and then subsequently melt said shortening flakes, whereby air cells are formed in said batter and the surface of said dough; and cooling the resulting dough product."

With respect to the step of "heating", because the specification did not define the some of the critical terms in the claim, the district court looked at the ordinary meaning of the terms and concluded that the claims clearly refer to the "temperature of the dough" and not the "temperature at which the oven should be set". It was noted that the defendant's process did not involve heating its dough products to the temperature range specified in the plaintiff's patent and, therefore, has not infringed on the plaintiff's patent. According to the court, when the patentees (now plaintiffs) say, dough is to be heated to the specified temperature, nothing indicates that these words are to be interpreted differently from their literal meaning. The Court of Appeals for the Federal Circuit's statement, "These are ordinary, simple English words whose meaning is clear and unquestionable" is worth mentioning. The plaintiff's patent does not even remotely suggest that it is the air inside the oven that is to be heated and not the dough products.

The plaintiffs urged that the claim should be read as heating the . . . dough "at" a temperature in the range of," to interpret that it is the air inside the "oven" that is being heated and not the "dough". The Court of Appeals for the Federal Circuit discerned nothing in the claims, the specification, or the prosecution history that indicates that the patentees here defined "to" to mean "at." The prosecution history, in contrary, suggested that the patentees intentionally used "to" rather than "at" in drafting the temperature requirements of the claim.

The plaintiffs criticized the district court for failing to construe the claims as one of ordinary skill in the art would do. The district court, however, rejected this contention and so did the United States Court of Appeals for the Federal Circuit.

Indefiniteness in claim language

Claims are considered indefinite when they are ambiguous and do not distinctly point out the subject matter. One who drafts the specification needs to understand the subject matter and accordingly strategize the claims. Claims should provide information to the public/person with ordinary skill in the art of the boundaries of infringement of the claimed subject matter. A person with ordinary skill in the art must be able to perceive the boundary from the construction of the claim. Claims that fail to satisfy this requirement may attract rejections for not complying with 35 U.S.C 112 (b).

In DATAMIZE, LLC v. PLUMTREE SOFTWARE, INC. concerning indefiniteness of a claim, the United States Court of Appeals for the Federal Circuit affirmed the district Court's judgment that Datamize's (plaintiff) claims were indefinite and invalid under 35 U.S.C. § 112.

Plaintiff sued PLUMTREE SOFTWARE, INC (the defendant) for infringement of its patent (US 6014137).  The defendant moved for summary judgment arguing the plaintiff's patent claims were invalid for indefiniteness. The district court granted the defendant summary judgment concluding that the patent's only independent claim is indefinite due to use of a phrase "aesthetically pleasing".

The plaintiffs pointed out that the phrase "aesthetically pleasing" should be considered in the context of its claim. In the context of the claim, "aesthetically pleasing" relates to the look and feel of custom interface screens on kiosks, and the aggregate layout of elements on an interface screen. From this context, one may identify that the components of the claimed invention are "aesthetically pleasing," but a clear and meaningful definition for the phrase "aesthetically pleasing" itself cannot be derived.

The written description also fails to set forth an objective way to determine whether an interface screen is "aesthetically pleasing." Some statements indicate particular aspects of the screen that might affect whether the screen is "aesthetically pleasing", such as button styles, sizes, placements, window borders, color combinations, and type fonts. There was, however, no indication as to how to determine what button styles, sizes, and placements, might be considered "aesthetically pleasing." Thus, the written description does not provide any reasonable, definite construction of the term "aesthetically pleasing."

Plaintiffs argued that one of ordinary skill in the art would understand the phrase "aesthetically pleasing" to distinguish aesthetic constraints from purely functional constraints. The Federal Circuit stated that one cannot rely on an understanding of the phrase "aesthetically pleasing" derived from design patent law. The Circuit also pointed out that the plaintiff's patent does not indicate that "aesthetically pleasing" means "aesthetic rather than functional".

The Circuit stated that, the claim in question would not have been indefinite if an "aesthetically pleasing" look and feel for an interface screen was objectively verifiable. The patent, however, fails to provide any objective way to determine whether the look and feel of an interface screen is "aesthetically pleasing" and hence was not sufficiently definite in determining infringement. Hence the Court of Appeals for the Federal Circuit affirmed the judgment passed by the district Court.

Limiting Preamble

A preamble of a claim defines the field of the invention and/or its intended use. Whether a preamble is limits the scope of the claim is not something that can be determined by a standard set of rules that are applicable in all cases. In some cases, the preamble may not appear limiting and may have negligible importance in analyzing infringement, however, in certain cases preambles may be considered as claim limitation.

If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction (MPEP § 2111.02).

Hence, the preamble should be crafted with care such that the body of the claim is sufficiently self contained to be comprehensible without the preamble, also keeping in mind that it does not make the claim more vulnerable to being anticipated by prior art. The preamble and the body of the claim, however, should be consistent one with the other, the two parts making up a whole.

Non enabling disclosure

Often, inventors feel that to get a broader protection one should describe their invention broadly and include fewer details in the disclosure. This, however, is not advisable. A patent claim is invalid if it is not supported by an enabling disclosure (MPEP § 2164). Describing the invention without any specificity does not comply with the enablement requirement of patentability. The enablement requirement requires a specification to enable one with ordinary skill in the art to perform the invention. It is on the drafter to apply his/her skills in describing the invention as explicitly and precisely as possible.

Non inclusion of multiple embodiments

The rest of the specification is as important as the claims in a patent.Claims define the scope of protection and description supports and enables the claims, with the help of embodiments/examples. One good way of preventing competitors from working around the patent is by providing multiple versions of the invention in the description. The full invention and the manner it has to be carried out including the best method, is what an ideal specification covers. With multiple embodiments one can describe all possible scopes and limitations that the invention may have because it is important that one describes not only the best mode that works, but also cover everything within scope that is supposed to work. Inclusion of multiple embodiments is one way of (a) describing the invention in varying versions and (b) ensuring that nothing has been left for the competitors to work around.

Other areas of importance

The above points point out areas where mistakes are more likely to occur while drafting a patent specification. There are other areas that are to be taken care of as part of intelligently drafting a patent specification. One who drafts a specification can avoid welcoming unnecessary rejections, by carefully-

Constructing claims of varying scope to protect the invention:

Claims of varying scope can be used to vary the scope of infringement coverage. Such claims may prove effective while proving infringement. This step should be practiced and employed whenever necessary.

Constructing claims of varying types to protect the invention:

Claims of varying types may include claiming the same invention, if possible, both as a method and as an apparatus. One should not restrict the invention by claiming it in only one form. It is advisable to claim an invention in multiple forms in order to ensure the broadest possible protection for the invention.

Maintaining consistency in usage of terminologies throughout the specification:

This is the most frequently violated step, which has to be avoided in a patent specification. Components, once referred to by a certain term, should ideally be referred to by the same term throughout the description. Interchangeably using synonyms for the same word, such as, referring to the same component as "device" and also as "member" etc, may be instances of inconsistent usage of terminology in a specification. One may not have to pay for this violation but it is, however, not encouraged in a refined specification.

Reviewing the specification from the points of views of the prosecutor, infringer and litigator:

One who drafts a specification may consider reviewing the final drafted specification from a prosecutor's point of view, infringer's point of view and as well as a litigator's point of view so that mistakes are not overlooked and the final draft is perfectly toned.

Conclusion

It is the disclosure in the specification based on which patent rights are decided. Drafting the specification in layman's language can lead to, no or very limited protection for the invention. Effective protection may be ensured if all requirements of patentability are satisfied in the specification and the mistakes listed above are taken care of. Writing a specification is one thing but to be able to refine a specification to perfection is a job that requires extensive expertise and experience.

About the author: Subhasmita manages projects related to Electronics and Telecommunication domains. Her core expertise includes patent specification drafting, prosecution and patent analytics. Prior to starting her career in IP, she was working in the field of VLSI front end design and verification. She has various publications to her credit, which include: " "Simulation of buffer trapping effects in AlGaN/GaN HEMTs", ICNANO, Delhi, India. " "Simulation of AlGaN/GaN HEMTs epitaxial layers for bio-sensing applications", WOCSDICE, Porquerolles, France. " "Investigation on doping configurations in Gallium Nitride HEMTs epitaxial design for bio-sensing", EXMATEC, Porquerolles, France. Subhasmita holds Masters Degree in Electronics Design and Technology from Tezpur Central University, and Bachelor of Engineering Degree in Electronics and Communication Engineering from Anna University, Chennai.

Links: www.invntree.com http://www.invntree.com/blogs/why-should-patent-specifications-be-drafted-by-patent-professionals

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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