Patent is a legal document that is intended to protect an invention in a technological field and its structure is set in the Israeli Patent Act of 1967. When drafting a patent, two purposes must be considered:
- How to draft the patent in a way that it will pass the patent examination procedure.
- How to draft the patent so it will create an effective monopoly and prevent the entry of competitors.
In this article we will present the structure of a patent, the role and importance of each section of the patent, principles and the recommended order for drafting a patent.
The structure of a patent in Israel
A patent application in Israel usually consists of the following sections (some sections may be missing depending on the drafter and the country in which the patent is filed): Title; Priority Claims; Filed of the Invention; Background of the Invention; Summery of the Invention; brief Description of the Drawings; Detailed Description; Claims; abstract; drawings.
Patent Title
Article 12A of the Israeli Patent Act:
“The Detailed Description will include a name that will identify the invention”.
The title of the patent is a brief of the abstract and its purpose is to summarize the patent in one sentence. Therefore, the title should be broader and more general than the abstract.
When drafting the title of a patent, we should choose a broad title that will define the general concept of the patent application and its upgrades. The title should be short and contain no more than 5 to 10 words.
The title should hint at the invention and not quote the invention so it will not limit the invention and the monopoly of the invention to what is written in the title.
Priority Claims
When a patent application (a patent of addition) claims priority of an earlier application – “parent patent”, the description of the Priority Claims must be placed between the Title and the Summery of the Invention.
Its important to use priority claims only when:
- The patent application (the patent of addition) was filed when the “parent application” is in the status of a patent application and not in the status of a granted patent.
- There is at least one co-inventor in the list of inventors in the patent application and the list of inventors in the parent application to which the priority claim relates.
- The application we are drafting (the second application) relates to the claims specified in the parent application (the first application). The subject-matter for which priority is claimed is presented in the “parent patent” in such terms that a person skilled in the art can carry out invention claimed in the “parent patent”.
The advantage of the priority claim is that the innovation of the patent application will be examined from the date the “parent patent” application was filed and not the date the application itself was filed. It may preclude publications as prior art.
Field of the Invention
The Field of the Invention explains the purpose of the invention and describes the state of art in the field of the invention.
When drafting the field of invention, we must pay attention to competing considerations. On one hand, the Field of the Invention should be drafted broadly enough to include all the applications that fulfill the invention and allow a wide monopoly as possible. On the other hand, in order to deal with claims of prior publications and inventive step one must draft the Field of the Invention as narrowly as possible.
When drafting the Field of the Invention, the focus should be on simple terms and clear wording in order to avoid ambiguous interpretation in relation to the patent.
Background of the Invention
Regulation 20 of the Patent Regulations:
“The description should include the following issues:(1) an introduction explaining the purpose of the invention and a brief description of the state of art in the field of invention, as the applicant was aware in light of the invention”
This section is intended to explain:
- The technical problem intended to be solved by the claimed invention.
- The existing solutions to the problem – a description of the prior art in the field of the invention at the date the application was filed.
- The disadvantages of these solutions.
This section has a great importance in order to make the examiner understand (when he reads the claims and the details of the invention) the inventive step that the invention has in relation to the existing problem in the field.
This section helps us to illustrate to the patent examiner the technologically advances that the invention brings in relation to the existing solutions to the problem that the patent seeks to solve, while emphasizing the problems that exist in the previous solutions. When drafting this section, we must identify the problem to be solved and we must show how difficult it is to solve the problem, so the patent examiner will understand that the inventive step of the solution presented in the patent was indeed needed.
Sometimes, the drafting of the background section may involve reference to other patents. however, some patent attorneys prefer not to describe other patents in this section.
When drafting this section, we should explain: the technical problem intended to be solved by the claimed invention> the existing solutions to the problem > the disadvantages of these solutions.
The background section ends with a summary of the needs in the field of the invention.
This section is not meant to explain our invention! – A common mistake in the drafting of the background section is to make a discussion about the invention. Do not do this.
Another common mistake is to interpret prion publications in a way that could constitute prior art in relation to the invention, that has the potential to reduce the patent monopoly.
General Description (Summary of the Invention)
The summary of the invention is drafted based on the independent claims. Its purpose is to explain the heart of the invention – to explain the Patent Independent Claim. The Summary of the Invention should be broader than the Independent Claim.
Article 12A of the Israeli Patent Act:
“The Detailed Description will include…the description of the invention… and a description of the ways of carrying out the invention according to which a person skilled in the art can carry out the invention”.
Regulation 20 of the Patent Regulations:
“The description should include the following issues:(2) a description of the invention based on the drawings on drawings or demonstrations to the extent necessary for its understanding;”
This section sometimes called “Detailed Description of the Drawing” or “Detailed Description of the Preferred Embodiment”.
The Detailed Description has two purposes:
1. A dictionary according to which the claims can be interpreted.
2. Allowing a person skilled in the art to understand the invention in order to carry it out.
The first part of the Summary of the Invention is a brief summary of the Independent Claim (or the Independent Claims). This section should be drafted by rewriting the Independent Claim from a broader perspective. If there are many independent claims, the patent attorney must incorporate them.
The second part of the Summary of the Invention should specify the various upgrades described in the Dependent Claims.
Brief Description of the Drawings
The Brief Description of the Drawings is a list of the drawings attached as part of the patent application and a brief explanation for each drawing. In this section we can also replace or complete the titles or captions that are in the drawings.
Detailed Description of the Drawings
This section is not a repetition of the Summary of the Invention (the section dealing with Independent Claims).
This section is intended to explain the Dependent Claims detailed in the drawings and to explain the preferred configurations of the invention as they are expressed in the drawings. Therefore, some patent attorneys refer to this section as the “Detailed Description of the Preferred Embodiment”.
The patent attorney drafting the patent should use this section to demonstrate the invention and its various configurations, and not to re-describe the heart of the invention, as the description of the heart of the invention is described in the Claims Chapter or the Summary of the Invention section.
This section usually concentrates on the various applications of the invention- the various products that result from the invention. The length of this section depends on the number of applications (upgrades) of the basis of the invention (the independent claim).
The structure of the Detailed Description section:
- The drafting of this section should begin with a detailed description of the drawings.
- Then you should give some examples and data in relation to each configuration. The configuration should be explained first by a broad overview of four or five main components in the configuration, and then focus on the other characteristics of each of the components in the configuration.
First, we recommend to a limited number of components or parts, and then in separate paragraphs discussing each of these components or parts in more detail.
We recommend listing all the relevant parameters for the described component, and then presenting all the described alternatives for each of these parameters. Once the parameters are described, a patent attorney can easily list the alternatives in relation to each of these parameters.
The detailed description should rely on and refer to each and every part of the drawings (by numbering) in a way that allows a person skilled in the art to carry out the invention and produce a product based on it. It is recommended to prepare the drawings on drawing sheets and not in the detail description. The detailed description should include a list of the drawings.
Claims – the patent monopoly
Article 30 of the Israeli Patent Act:
“(A) The detail description shall end with a claim or claims defining the invention, provided that any such claim shall arise in a reasonable manner from that described in the detail. (B) A foundation of an invention may be expressed in a claim as a means or step for the performance of a particular action and there is no need to specify the structure, material or actions necessary for the performance of that action; A claim expressed as aforesaid is considered to have specified the structure, material or actions concerned as described in detail.”
Regulation 20 of the Patent Regulations:
“The description should include the following issues:(3) a claim defines the invention in a concise and clear manner;”
This section of the patent is the most important section, because it defines the patent monopoly and the other parts of the patent can be seen as a dictionary (or lexicon) for this section.
This conclusion stems from the fact that a patent infringement is a product (or process) that includes at least all the components of an independent claim in a patent. If a competing product lacks one component in the independent claim, that product will not be considered an infringing product.
In the claims section we define the monopoly of the patent application and this section consists of Independent Claims – which constitute the heart of the patent and Dependent Claims – which are upgrades of the independent claims.
The patent attorney should focus on drafting the independent claims with the aim of blocking the market and creating as wide a monopoly as possible and not to describe the customer’s product.
Claims must be drafted in a concise and clear manner.
There are two conflicting rules regarding the drafting of the claims:
In one hand, an overly broad definition of the independent claim monopoly, which stems from the inclusion of a minimum of components in the independent claim, should be avoided. This situation may result in the revocation of the patent:
- Rejection of the patent application by the patent examiner in the patent examination process.
- Or to be cancelled, after granting the patent, in a lawsuit for a patent infringement, as part of a defendant claim that the patent should not have been registered and that the examiner erred in granting the patent.
- Or disqualified, as part of a patent revocation proceeding, in which the applicant claims before the patent registrar that the patent should not have been registered and that the examiner erred in in granting the patent.
There are a number of defects which may lead to the revocation of a patent due to an overly broad definition of the independent claim monopoly:
- The claim is general and unclear and it describes both the invention and the prior art in the field.
- The claim described in the patent is not new compared to a specific publication prior to the date of filing the application.
- The claim described in the patent lacks inventive step due to a trivial combination of several publications that preceded the filing date of the patent application.
Therefore, it is recommended to avoid an overly broad definition of the independent claim monopoly.
On the other hand, an overly narrow definition of the independent claim monopoly, resulting from the inclusion of maximum components in the independent claim, may not protect all configurations for the fulfillment of the invention and make an overly narrow monopoly.
That is, the drafting of a patent, which includes a multi-conditional independent claim, will not allow an effective protection of the patent, due to the multiple conditions included in the independent claim (usually in claim number 1 of the patent).
That is, a competitor can easily circumvent the patent monopoly by omitting or changing one of the elements in the independent claim in its product.
Therefore, it is recommended to avoid an overly narrow definition of the independent claim monopoly.
In conclusion, when drafting the claims: on the one hand, it is required to “think like a patent attorney” whose purpose is to pass the examination procedure and describe the independent claim as including sufficient components that will enable the success of the examination in relation to the prior art and requirement of claim clarity.
On the other hand, it is required to “think like a patent attorney” who is representing in court, in a patent infringement lawsuit, where the patent creates an effective blockade of products claimed to be infringing the patent.
Abstract
The Abstract is a 5 to 10 lines summary of the Summary of the Invention and its purpose is to summarize in a few sentences the claims of the patent.
The Abstract should be broader than the Summary of the Invention.
The abstract will not be used to interpret the scope of the patent claim.
Drawings
Article 12A of the Israeli Patent Act:
“The Detailed Description will include… Drawings”.
The drawings of the patent application are intended to be used for the purpose of interpreting the claims. Any claim of the patent that can be drawn says to be backed by a suitable drawing.
The drawings in the patent are intended to describe the various configurations of the invention and the various upgrades to the invention. Therefore, the drawings should be simple, and should include only those elements that show the differences with respect to prior art.
We recommend making use of perspective drawings which best illustrate the invention expressed in the drawing.
Recommended order for drafting a patent
Although the sections of the patent are shown above in the order in which they are to appear in the patent application, this is not the order in which we recommend working when we are drafting a patent.
The following is the recommended work order for drafting a patent application:
- We must begin with the drafting of the Independent Claim, which is at the heart of the patent. Beginning with the drafting of the Independent Claim before defining the Detailed Description of the invention and / or the background is intended to prevent the patent attorney from focusing on a specific application and forcing him to focus on the abstract invention.
- Next, we need to draft the Dependent Claims, which are unnecessary upgrades of the Independent Claim (upgrades that are not necessary to the heart of the invention).
- Then, we need to draft the Summary of The Invention.
- The title of the patent.
- Summary of The Invention is based on the Independent Claim.
- Background – we will write the background as a response to the heart of the invention. At this stage the patent attorney can draft the patent out of the conclusion that stems from the background: (a) there is a technological problem, (b) this problem has market solutions (c) but these solutions are not good and have drawbacks (drawbacks our invention is designed to address). In order to write a background, the drafter needs to know “the end of the story”, what is the heart of the invention, – something that was clarified in the previous sections written. Therefore, the background should exclusively discuss the issues that create the problem that the invention is intended to solve.
- The Brief Description of The Drawing and the Detailed Description are written together as they focus on specific configurations of the invention. The detailed description refers and explains each and every part in the drawings.
The logic in the order presented above stems from the paternity relationship between the various sections of the patent.
Last tips for drafting a patent application
- Short and clear wording – An important principle in drafting a patent application is the KISS principle (Keep It Simple, Stupid). Complicated patent applications make it difficult to understand the patent, both, when it is examined by the patent examiner and also when the court tries to interpret it. Therefore, as long as the patent attorney tries to “hide the truth” with an excess of wording and vague wording, it must be assumed that this will become clear later and may jeopardize the patent or give the infringer a way to “circumvent the patent”. A patent is strong when the patent attorney describes the patent in a clear and not complicated way. On the other hand, care must be taken in wording that is too short and too simplistic, in which we may omit critical information in relation to the invention and make the invention abstract so that a skilled person in the art cannot execute it.
- Many headlines – we highly recommend using subheadings. Such use will help in drafting the patent and will help the patent examiner and the judge when they try to understand and interpret the patent.
- Short sentences – long sentences are incomprehensible and usually involve a number of conflicting messages that the patent attorney is trying to convey. Splitting the sentences forces the patent attorney to focus on a single message and it helps the judge and patent examiner understand the patent attorney’s intent.
