A patent is an instrument of commerce. The value of the patent depends upon its specification and therefore, it is extremely important that the specification should be drafted with accuracy and clarity. Writing a good specification involves a great deal of time, effort and money, but if the specification is poorly drafted, even more time, effort and money may be spent in defending the claims. Carefully drafted claims can secure a company's financial future or spell a company's ruin.
The job of drafting and filing a patent specification is generally done by boutique IP firms, attorneys or by in-house patent attorneys. In either case, it is crucial that sufficient precautions for quality control are undertaken. A badly drafted patent specification is always at risk of either being discarded outright during opposition/litigation proceedings or of not providing sufficient protection to the applicant, defeating the very purpose for which it is drafted and filed. In such cases, the applicant might end up spending even more money in amending the specification or in protecting its vulnerable patent rights. Therefore, the role of quality control in drafting patent specifications becomes highly significant.
Quality Control Checklist
Some aspects of quality control that should be taken into consideration while drafting a specification are as follows:
1.1 Legal inputs
The first and foremost step towards drafting high quality specifications includes providing the drafter continuous feedback of the findings from various court decisions on the use of patent terminology. For example, the commonly used phrase "an effective amount" in a specification may be interpreted as indefinite. This may potentially cause problems during infringement proceedings unless the current legal trends are known to the drafter. The courts have stated in various decisions that the proper test is whether or not "one skilled in the art" could determine the specific values for the amountbased on the disclosure. In one case, the phrase "an effective amount . . . for growth stimulation" was held to be definite since the amount was not critical as those "skilled in the art" would be able to determine the effective amount from the written disclosure andthe examples provided in the specification. However, in another case,the phrase "an effective amount" was held to be indefinite as the claim failed to state the function to be achieved and more than one effect could be implied from the specification andthe prior art. However, recent case decisions tend to accept "an effective amount" as being definite if its scope is supported in the disclosure.
Training must be provided to specification drafters so that they can write the specification in accordance with alternative templates for different jurisdictions. A specification must have a specific format, and must include all the key elements in a particular order and manner.
1.2 Language and grammatical review
Once the first draft of the specification is ready, it must be reviewed independently for correctness in language and grammar. This greatly helps to identify and minimize "preventable" errors. Clarity in language and consistency in the use of terminology goes a long way in enhancing the quality of the patent document and in reducing ambiguity. The flow should be such that it can be understood even by a non-technical reader. Even the accuracy and consistency of the figures and reference numerals in the accompanying drawings must be checked at this stage.
1.3 Technical review
The next stage is to review the specification independently for technical accuracy and incorporation of all the key elements. It also involves locating the claim elements that lack support in the disclosure and/or drawings and identifying the terms or phrases that are exclusive to the claims or description;finding broader, narrower or related alternative terms that are more suitable in the specification. For example, in a patent infringement case, the patentee was unable to establish infringement by the defendant only because the claims lacked support in the disclosure. In this case, the terms "control means" and "programmable control means" were considered indefinite because the specification did not disclose a corresponding structure.
The abstract should be checked for succinct and clear statements of the disclosed invention. The length of the abstract should be limited to 150 words. The title should be as short and as specific as possible with a word limit of 15 words.
1.4 Supervisory check
Once a preliminary review for grammar and technical aspects is complete, an overall supervisory check (preferably by a different reviewer) should be done for both the language as well the technical aspects. This will help to eliminate the flaws overlooked in the first review and in checking whether the scope is not unnecessarily broad or narrow. Words implying that a certain element or step of an invention is an essential part of the invention, may be interpreted as limiting the scope of the invention. For example, words such as "critical", "essential", "key", "preferably", "significant" and "necessarily" or "necessary" have been held to limit the scope of the claim. These terms, however, may be used if the object is to deliberately and explicitly narrow the scope of the invention and circumvent prior art. Consistency in the use of various terms must also be checked; otherwise it may lead to confusion and may narrow the scope of the claims.
1.5 Critical examination
The next step in quality control involves critical examination of the specification from the competitor's point of view - as if being litigated by an adversary. A client's ultimate aim of filing a patent is to exclude its competitors from practicing the invention. This requires a thorough critical examination, foresight and imagination, but pays dividends. Critical examination should cover at least the following aspects:
The language of all the claims must be enabled by, and find adequate descriptive support in the application disclosure. Any neglect in giving due attention to this matter may lead to confusion as to the scope of the patent. Pertinent examples in the disclosure also help to provide adequate support to the claims. Also, the descriptive matter should be restricted to and be in agreement with the claims, and not be entirely outside its scope or limits.
The closest prior art relevant to determining patentability, clarity and scope of claims must be identified and properly evaluated to prevent invalidation by a competitor.
There might be certain claims which may be easy to circumvent by the competitor. These need to be identified and strengthened in order to prevent the competitor from making the specification ineffectual.
1.6 Check on claims
Since claims are the most important part of any specification and define the scope of the patent rights, it is extremely necessary to thoroughly check the claims, especially for the following aspects:
- All the features of the invention are included in the claims
- The claims have proper dependencies
- All the terms used in the claims have proper precedents
Since claim construction becomes the deciding factor in litigation, there should be clear support or antecedent basis in the specification for the terminology used in the claims, which "is the single best guide to the meaning of a disputed term". Generally, the claims in the original draft are in agreement with the specification, but sometimes when the claims are amended or new claims are added, the drafter employs terms that do not appear in the specification. This may result in uncertainty as to the interpretation of such terms and the courts may ultimately give them a narrower interpretation than that intended by the drafter.
1.7 Second check for language
Once the technical aspects of the specification have been finalized, it should be checked again for the correctness of language, grammarand punctuation. A secondary check by a proofreader with experience in patent drafting ensures the highest quality specifications. The extra time spent to review and clarify the patent language can save a client thousands of dollars in potential litigation. In one classic case of contracts in 2006, a Canadian company lost $ 2.13 million due to a misplaced comma in their contract. The company learnt that the devil is in the details or rather in the second comma, which entirely changed the validity and term of the contract.
In light of the above, the importance of a well-written specification cannot be overemphasized. A professionally drafted patent specification with quality controls at various stages will result in a strong, enforceable patent in which all or most of the claims will stand the rigor of an attack of invalidity and at the same time will cover all possible scenarios in which the invention can be implemented.The quality of a patent specification has a direct bearing on the quality and value of a patent, which in turn has a significant effect on the applicant's business. During litigation, well-drafted patents without any ambiguity are more likely to succeed than the poorly drafted patents. Also,well-drafted patents are less likely to be litigated in the first place.