All About Complete Specification Patent
We will be looking at various aspects of the complete specification. But it is required that you know the basics and difference between Provisional and Complete Specification. Click here to know about the provisional specification and know about various forms.
What is the Complete Specification of Patent?
The Complete Specification is a techno-legal document containing full scientific details of the invention and claims to the patent rights. To obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a complete specification.
One can directly file complete specification or after provisional. After filing a Provisional specification, it is necessary to file a Complete specification within 12 months.
Most of the things are the same for complete specification as that of provisional.
The contents of a complete specification would include the following:
- Title of the invention
- Field to which the invention belongs.
- Background of the invention including prior art giving drawbacks of the known invention practices.
- A complete description of the invention along with experimental results.
- Drawings are essential for understanding the invention.
- Abstract
- Claims, which are statements, related to the invention on which legal proprietorship is being sought. Thus, the claims need to be drafted carefully.
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Things to Note for those who have Filed Provisional Specification:
1. You can change the title in Complete Specification.
2. You may need to submit a cover letter briefing about your provisional and complete title and dates of filing.
3. As you have paid the fees during provisional fees you don’t have to pay fees for filing, but only for examination and extra pages. Refer here.
4. Edit your forms carefully.
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FORM 2 details
The first page of Form 2 shall contain:
1. Title of the invention;
2. Name, address, and nationality of each of the applicants for the Patent
3. The preamble to the description.
4. Description
5. Claims
6. Date and Signature
7. Abstract of the invention
Most of the things regarding FORM 2 are explained in the blog on provisional specification.
Other Changes and important things are described below:
1. PREAMBLE TO THE DESCRIPTION
The complete specification should start with,
“The following specification particularly describes the invention and how it is to be performed…”
2. ABSTRACT
Every complete specification shall be accompanied by an abstract to provide technical information on the invention.
So how to write Abstract?
The abstract of your patent application is a summary (150 words or fewer) that communicates the essence of your invention. Abstracts are useful mainly for searching the patent database. You should write your abstract so that those with a background in the field can easily understand it. The person searching should quickly be able to get a sense of what your invention is so that they can decide whether they need to read the rest of the document.
To get the abstract right, you need to have an idea that is worth shareable and then clearly describe
1. The problem statement,
2. Why it’s important to be explored?
3. What was done to understand it?
4. How the previous problem has been solved?
3. CLAIMS
Claims are the most important part of a patent that defines the boundaries of patent protection. Patent claims are the legal basis for your patent protection. They form a protective boundary line around your patent that lets others know when they are infringing on your rights. The limits of this line are defined by the words and phrasing of your claims. When writing this section, you should consider the scope, characteristics, and structure of the claims.
How to write Claims?
Scope
Each claim should have only one meaning which can be either broad or narrow, but not both at the same time. In general, a narrow claim specifies more details than a broader claim. Having many claims, where each one is a different scope allows you to have legal title to several aspects of your invention. In another way, claims can be classified as dependent and independent. The first claim is always Independent claim and others are dependent. Though there can be independent claims too.
Here is an example of a broad claim (claim 1) found in a patent for a collapsible tent frame.
Claim 8 of the same patent is narrower in scope and focuses on a specific aspect of one element of the invention. Try reading through the claims for this patent and notice how the section begins with broad claims and develops towards claims that are narrower in scope.
Important Characteristics
Three criteria to take note of when drafting you to claim that they should clear, complete, and supported. Every claim must be one sentence, as long or as short a sentence as required to be complete.
Be Clear
Your claim must be clear so that you do not cause the reader to speculate about the claim. If you find yourself using words such as "thin", "strong", "a major part", "such as", "when required", then you are probably not being clear enough. These words force the reader to make a subjective judgment, not an objective observation.
Be Complete
Each claim should be complete so that it covers the inventive feature and enough elements around it to put the invention in the proper context.
Be Supported
All the characteristics of your invention that form part of the claims must be fully explained in the description. Also, any terms you use in the claims must be either found in the description or inferred from the description.
Structure
A claim is a single sentence composed of three parts: the introductory phrase, the body of the claim, and the link that joins the two.
The introductory phrase identifies the category of the invention and sometimes the purpose, for example, the machine for waxing paper, or composition for fertilizing the soil. The body of the claim is the specific legal description of the exact invention that is being protected.
The linking consists of words and phrases such as:
● which comprises
● including
● consisting of
● consisting essentially of
Note that the linking word or phrase describes how the body of the claim relates to the introductory phrase. The linking words are also important in assessing the scope of the claim as they can be restrictive or permissive in nature. In the following example, "A data input device" is the introductory phrase, "comprising" is the linking word and the rest of the claim is the body.
Example of a Patent Claim
"A data input device comprising: an input surface adapted to be locally exposed to a pressure or pressure force, a sensor means disposed below the input surface for detecting the position of the pressure or pressure force on the input surface and for outputting an output signal representing said position and, an evaluating means for evaluating the output signal of the sensor means."
Keep in Mind
Just because one of your claims is objected to does not mean that the rest of your claims are invalid. Each claim is evaluated on its merit. This is why it is important to make claims on all aspects of your invention to ensure that you receive the most protection possible. Here are some tips on writing your claims.
● Decide which are the essential elements of your invention that you want to claim exclusive rights to. These elements should be the ones that distinguish your invention from known technology.
● Begin with your broadest claims and then progress to narrower claims.
● Start claims on a new page (separate from the description) and number each claim using Arabic numbers starting with 1.
● Precede your claims with a short statement such as "I claim:". In some patents, this reads as "The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:"
● Check to see that each claim consists of an introduction, linking word, and body.
One way of ensuring that specific inventive features are included in several or all claims is to write an initial claim and refer to it in claims of narrower scope. This means that all the features in the first claim are also included in the subsequent claims. As more features are added the claims become narrower in scope.
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ABOUT FORM 4: Extension Form
After filing a provisional specification, you will get 12 months to complete it. Suppose if you need more time, then fill and submit the Extension Form which grants the permission of 3 months extension i.e., you will get 15 months after the date of filing (provisional specification) to complete it.
Let us understand the extension form-
FORM 4: REQUEST FOR EXTENSION OF TIME
1. Name of the applicant and declaration, the reason for an extension.
2. Signature
3. Name of Signee
To download this form, click here
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AFTER FILING COMPLETE SPECIFICATION:
For Grant of the patent, you need to submit Examination Form. Many submit examination form along with Complete Specification. But it is not necessary. If you want time for model making or more study you can file Examination form later.
Details of Examination Form-
FORM 18 Request/Express Request for Examination of Application for Patent
1. Applicant Details
2. Declaration
4. Address for Service
5. Signature
…………………………………………………………………………………………………
For Patents Rules click here.
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WE are grateful for your time. The main purpose of this article was to provide simple information by collecting data from various sources in one place and combining it with our personal experience. We have linked all the sources there and then when the text appears.
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Contact Details:
Omkar Nanaware - o[email protected]
Lakhan Meghani - [email protected]