Patent drafting and its importance for patent protection

Hana Onderkova

Head of IP - European Business & Technology Centre

Patents are a driver for innovation, means for commercialisation and technology transfer and a tool for keeping the competition in check. Patents do not only offer monopoly over one’s innovation for a given period of time but also provide an imaginary boundary protecting an invention. In that way, anyone who without prior permission of a patent holder, uses, sells, manufactures or imports a product or uses or executes a process which is protected by a patent, ‘trespasses’ said boundary and infringes on the patent rights. While most patent applicants are well informed about the filing process, there seems to be lack of awareness about how important patent drafting is: the patent will draw this imaginary boundary between what infringes on a patent what does not. Particularly SMEs, start-ups and independent innovators tend to face challenges in understanding how the protection defined in the techno-legal document called “complete specification” is enabled and how exactly the patent specification is used when it comes to enforcing their rights in India and elsewhere.

How exactly do patents protect the invention?

To provide an answer to a curious reader, we need to go back to basics: The so-called complete specification discloses the features of the invention, be it a product or a process, and consists of four parts: description, claims, abstract and drawings.  To understand how patent protection is enabled through complete specification, it is necessary to ask the following question: “Which part of the complete specification defines the scope of the invention?” The answer is very simple, it is the claims which determine the imaginary boundary around the invention, characterise novelty and inventive step of the invention and serve as a benchmark to evaluate the degree of “trespassing” in case of infringement. It is nevertheless worth mentioning that despite the fact the claims create the ‘boundary” around the invention, as per Indian Patent Office practice the subject matter of the claims also has to be disclosed in the description and drawings (if applicable).

Claim drafting, its importance and the challenges for the patent applicants

To ensure the claims are appropriately drafted is obviously important for the examination phase by the Indian Patent Office (IPO), where the patentability criteria such as novelty, inventive step, industrial applicability and patentable subject matter as outlined in the Indian Patent Act, are assessed. However, the quality of drafting can become a game changer and is very much apparent when the patent holder is challenged by a third party. This can happen in opposition proceedings before the IPO, when the patent holder tries to enforce her rights against the infringer at the court, or when the validity of the patent is challenged by the third party at the court.

The patent applicants have to be more aware that depending on how well the complete specification is drafted and how precisely and correctly the claims describe the invention or the imaginary ‘boundary” is set, the easier it will be to defend it against third parties. Claims which are too general will be struck down for lack of specificity. On the other hand, claims which are too specific can be hard to enforce against third parties in infringement proceedings, as they will argue their actions/products do not infringe on a patent since they are not covered by the claims in the patent.   On the matter of patent drafting and claims interpretation, it is always advisable to check practices of the respective national patent office to evaluate scope of amendments when filing the application in other jurisdiction such as India.   

“Are there any obstacles which prevent SMEs to obtain high quality patent drafts?”

Considering how much of positive difference high-quality patent drafting can make, are there any obstacles which prevent SMEs to obtain high-quality patent drafts? Yes, indeed there are; the first obstacle is a lack of awareness. Quite frequently, patent applicants are genuinely not aware of how important high-quality drafting is. Moreover, a patent is sometimes only perceived as a ”piece of paper” to show to the investors, or to demonstrate R&D activities which result in patent filings without any consideration on quality of the invention or drafting. The other obstacle is the cost.  As a matter of fact, high quality drafts are not cheap and SMEs, start-ups and small inventors might not have resources to commission a patent draft from a very experienced patent attorney or high-end law firm. Additionally, if the SMEs, start-ups or inventors engage a low-cost provider or a local provider/ attorney in their home country they sometimes are not able to judge quality of the patent drafts, their translation to English or any other language or standards of drafting and its impact on filing the patent application in other jurisdictions.   

Way forward

The significance of patent drafting and its impact on the patent protection should be conveyed to the SMEs, start-ups and inventors along with the information on importance of the patent protection in general. They should be informed that in case of any opposition or challenging the validity of their patent by a third party, a poorly drafted patent will be easily invalidated. Particularly in India, infringers use this strategy i.e. challenging the validity of patent at the court, quite frequently. The patent applicants should be also aware that in case of infringement such patents will not sufficiently protect their invention.

It is understandable that SMEs, start-ups and small inventors might not have internal expertise but they should be encouraged to learn the very basics of patent drafting to empower themselves and to be able to check the quality of the drafts provided by their patent attorneys or IP providers. Moreover, the patent applicants should be encouraged to always question why the specification is written in a particular manner, or how the novel features of the invention are conveyed and described in the claims. The applicants should always seek second opinion on the patent draft if they believe that they have got a ground-breaking innovation, or if they plan to file their patent application in several countries which means heavy investment in prosecution of their patent application and official fees.

This approach to patent drafting would be applicable not only for patent applications which are to be filed in India but as a general rule for any patent filings worldwide.