The legal framework for patenting is complex and fraught with traps, so with an upward trend of around 30% of inventors1 filing their own provisional patent applications each year, this is a concerning statistic, particularly for SMEs.
Whilst many of these applicants may have an in-house attorney draft the patent specification, or arrange for a professionally drafted patent specification to be prepared which they file themselves, the SMEs or individual inventors who try to "go it alone" often run into considerable issues down the line.
We outline below some of the common issues - some relate to how the patent specification is drafted, but there are also key considerations regarding filing strategy.
Filing strategy
- Filing a series of "top up" provisional patent applications
A provisional patent application is often the first step in the long journey to obtaining a granted patent in a country of interest. The Paris Convention for the Protection of Industrial Property2 provides that a provisional patent application filed in one country (a "basic" application) can establish the priority date for a complete application filed in another country, provided the complete application is filed within 12 months of the provisional application.
Accordingly, filing a provisional application gives the applicant an opportunity to further consider the commercial potential of an invention before committing to one or more complete applications, and so delaying costs.
In the simplest case a single provisional application serves as the priority application (and provides a priority date) for a later-filed complete application. However, it is sometimes the case that supplemental provisional applications are filed within the 12-month period. These can be beneficial when inventors are actively engaged in research and are regularly discovering improvements in their invention. Filing a new provisional application each time there is a notable improvement can then provide the earliest possible priority date for that improvement in a complete application which claims priority benefit to each provisional application.
The usual course of events is for the complete application to be filed within 12 months of the first provisional application, and to claim priority from all preceding provisional applications. However, where a complete application is filed within 12 months of a second provisional application, but more than 12 months after the first provisional application (where that first provisional application is the first disclosure of the invention), an invalid priority claim will result.
This is because the Paris priority period starts on "the date of filing of the first application," unless at the time of filing the subsequent application the first application "has been withdrawn, abandoned, or refused."3 In other words, in this example the applicant would need to have to proactively withdrawn the first provisional patent application to have a valid priority claim to the second provisional application. Clearly the patent filing strategy needs to be carefully considered.
- Disclosures before the provisional is filed
Unfortunately, all too often self-filers are simply not aware of the issues that arise by disclosing the invention before filing a provisional patent application.
That "self-disclosure" creates prior art for the claimed invention and, in the worst-case scenario, can prevent patent rights from being obtained at all. Some may even think that if the disclosure was an obscure one it may not be "uncovered" by an examiner and that they are "safe".
This is quite a high-risk gamble and even if an examiner were to miss a public disclosure, any litigation involving the patent would almost certainly identify the prior disclosure. Moreover, certain countries will compel applicants to bring prior art to the attention of the patent office, if that prior art is material to the invention (a so called "duty of disclosure").
Finally, although it may be possible to rely on special "grace period" provisions in certain countries where a complete application is filed, this will definitely require guidance from a professional and the number of countries that offer such grace periods is limited. In every case, the advice of a professional should be sought before disclosing the invention.
- Disclosures after the provisional is filed
Another issue that can arise for those who choose to self-file is where they file the provisional patent application, and then publicly disclose the invention after filing.
If the invention disclosed after filing is not sufficiently described in the provisional patent application, then that public disclosure may be considered prior art against any subsequent complete application.
For example, the public disclosure could comprise additional inventive concepts, or a broader form of the invention, or even a completely different aspect of the invention. If this is the case, the public disclosure can create prior art for a complete (e.g., PCT) application that claims priority to the provisional application.
Again, the advice of a professional should be sought before disclosing the invention.
The importance of drafting the patent specification
The Courts have acknowledged how complex patent drafting can be, with the US Supreme Court stating that "[t]he specification and claims of a patent... constitute[s] one of the most difficult legal instruments to draw with accuracy."4
While a patent specification describes often complex technical subject matter, it is still a legal document which needs to satisfy various requirements to be enforceable.
These requirements partially centre around the patent specification being a public document which sets out the terms by which the patent owner and others will be bound. Indeed, the patent application will be reviewed over the course of its lifetime by public officials such as patent examiners and judges, as well as members of the public and competitors operating in the same field.
This further underscores that the patent specification needs to be drafted with different audiences in mind and with a view of satisfying the various requirements for patentability in jurisdictions around the world. In addition, investment in the applicant's business and commercial products can also depend on the quality of the patent specification.
- Insufficient disclosure
Under Australian law, the claimed invention must be described in a manner which is "clear enough and complete enough for the invention to be performed by a person skilled in the relevant art"5 (the "sufficiency" requirement).
This requires that the patent specification provide sufficient information to enable the skilled person to perform the invention across the full scope of the claims (not just one embodiment within the scope of each claim) without undue burden or the need for further invention.
This requirement relates to the technical data which is included in the specification and which needs to enable the claims. Generally speaking, demonstrating the diverse nature of the invention will enable correspondingly broad claim scope.
In an ideal world, the patent applicant would physically perform many examples of the invention to show that it can be implemented over the entire scope of the claims. However, it may also be possible to create prophetic (yet to be performed) examples or to thoroughly describe how the principles which underly the performed experiments will equally apply to untested variants of the invention. The specification may also describe a technical rationale explaining why the invention would work more broadly than the specific examples.
This process is often the most challenging aspect of drafting a patent and, if not thoroughly understood, can severely narrow the scope of claims in an application.
In the worst case, insufficient enablement can lead to a patent application being refused, or a patent being revoked. For example, if a patent specification is drafted based on a single experimental result, it may be difficult to obtain allowable claims to a broader principle which the applicant may otherwise have been entitled to.
In other words, if the enablement requirement is not fully understood, an applicant may unwittingly confine themselves to a severely reduced scope of protection. In this case, whilst the claims may cover the preferred embodiment, they will be narrow and easy to work around, reducing the value of the patent.
In contrast, if a patent attorney is engaged early in the process of not only preparing an intellectual property (IP) strategy but also developing an invention, they can help to guide the inventors with regard to where further data may be needed in order to prepare a robust patent specification and to enable broad claims.
- Overly limiting statements, insufficient fall-back positions, and narrow or unclear claims
It is important to remember that patents are not drafted with the lay person in mind.
They are usually aimed at either a technical person or a patent examiner - i.e., people who know the technical field, understand the technical terms, and often understand the writing style of a patent specification. The person drafting the specification must therefore put themselves into the position of that technical person and draft the specification accordingly.
In view of this, there is a great responsibility in the choice of words that are used when drafting a patent specification, as the difference between one word and another in a patent claim can mean the difference between a valuable patent, and a voidable patent.
By way of example, referring to features of the invention in the description as "very important", or that they are "critical", "essential" or "key" to the operation of the invention, or "must" be used, are likely to be interpreted by an examiner as features that are necessary in the broadest claims, which may not actually be the case. This would potentially result in having to overly limit the scope of protection thereby creating workaround opportunities for competitors. Another issue is the use of relatively innocuous statements such as "it was expected that ..." to which an examiner may then argue that the combination of features which resulted in the outcome is not inventive.
The person drafting the specification must also consider how the patent application may be prosecuted before a patent office and what objections may be raised during the examination phase.
This can then point to what additional information may need to be included in the specification to assist in addressing those objections. Claims, for example, may need to be amended for a number of reasons: to clarify terminology, to overcome relevant prior art, to overcome other rejections cited by the examiner, to better fit with the eventual marketed product, to better represent the invention as it matures, to encompass an infringing product, or to survive an opposition. These considerations may not be front of mind to a lay person attempting to draft a patent specification.
Also, because some jurisdictions have strict amendment laws, the specification should drafted to include as many fallback embodiments as possible (i.e., narrower embodiments of the invention) to avoid an 'added subject matter' objection, as one can never be certain what prior art will be raised during prosecution and therefore what (supportable) claim amendments may be required to navigate around that prior art.
Finally, in some cases, the invention may not be considered "patentable subject matter." For example, the substance of the invention may be a mere discovery, an idea, a scientific theory, or a scheme/plan (all of which have traditionally been regarded as non-patentable subject matter).
When developing an IP strategy, engaging a professional could save significant money, time and effort for an applicant.
Self-filed provisional patent applications - what could go wrong
At least some of the issues discussed above have caused issues during patent prosecution for self-filers, and sometimes applicants reach an impasse with an examiner and seek a hearing. In this section, we provide examples where one of more of these issues have arisen.
In Salim Abdul-Malik [2022] APO 54, the claims proposed by the Applicant were found not to be allowable as they were unclear and the invention (deemed to be a process of conversion of location information to an alphanumeric coding) was found to be a mere scheme (i.e., it did not relate to patentable subject matter).
In Grahame Smith [2020] APO 21, the Hearing Officer noted that the specification as filed did not include all features of the invention that was developed by Mr Smith. When objections were raised during examination, Mr Smith sought to insert new information about the invention by amendment. However, these amendments were found not to be allowable, and as a consequence that information could not be used to overcome the objections, causing the innovation patent to be ultimately revoked.
Relating to support and disclosure, in Guang-ming Weng [2018] APO 69, the Applicant prosecuted the application but was not able to place the case in order for acceptance by the deadline. In particular, the final examination report maintained objections relating to support, disclosure, and clarity (and reserved an opinion in respect to novelty and inventive step). Whilst the central issue of the decision related to a request for extension of time to place the case in order for acceptance, what was also relevant were the issues faced during prosecution, which arose due to the way the patent specification and claims were drafted. The Examiner found it "questionable" whether any invention had been described that could be proper subject matter for a patent and noted "theoretical discrepancies" with the concept of the invention.6 The principal obstacle, however, was that the claimed invention did not satisfy the requirement of being useful, in that the specification does not disclose a "specific, substantial and credible use for the purported invention ... such that the promised benefit of producing vast amounts of power, whilst operating at ultra-low rotational speed with minimal energy input, can be achieved."7
In Thanh Tri Lam [2024] APO 52, the Patent Office identified grounds for re-examining the application after it was accepted. Objections in relation to clarity, sufficiency of disclosure, support and utility were raised (and an opinion on the novelty and inventiveness of the claimed invention was reserved). Ultimately, it was decided that there was not enough information provided by the specification to allow the person skilled in the art to perform the invention across the full scope of the claims without undue burden (i.e., failure to meet the sufficiency requirement).
The assistance of a qualified patent attorney when drafting and prosecting these patent applications would have almost certainly led to a different result in each of the above cases.
Key takeaways
As outlined above, patent applications are complex documents that must satisfy specific requirements in order to adequately protect an applicant's products.
Seeking professional assistance when considering an IP strategy and drafting a new patent application can maximise the value of a patent application - and minimise time, long-term cost and delays - for the applicant.
Footnotes
1 Based on a review of the past five years of filing at IP Australia
2 https://www.wipo.int/treaties/en/ip/paris/
3 and has not been "laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority." Article 4(C)(2) & (4) of the Paris Convention.
4 Topliff v. Topliff, 145 US 156 (1892).
5 Patents Act 1990 (Cth) s 40(2)(a).
6 Guang-ming Weng [2018] APO 69 [25].
7 Ibid.
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.
