Drafting patent specifications

Our patent attorneys generally have industry or postdoctoral experience in their respective fields of expertise and an interest in continuing education in these fields, which means that they are well placed to understand innovative technical concepts and to translate them into patent specifications in a timely and cost-effective manner.

Patent specification

A patent specification is a highly technical legal document, the purpose of which is twofold: first to disclose an invention to the public in language that will enable the public to work the invention when relevant patent rights have expired; and second, to identify the subject matter that the patent applicant or patent owner intends to claim exclusively for themselves.

The patent drafting process

Patent drafting usually commences when the patent attorney receives information on the invention from an inventor or potential patent applicant. Having reviewed that information against the state of the art, the attorney foreshadows the extent of the monopoly that a patent is likely to provide. With this information the inventor or potential applicant can make an informed view on whether patent protection for the invention would be worthwhile. 

Provisional specifications

Where a decision is made to proceed with patent protection, generally a first patent specification in the form of a provisional specification is filed as a provisional patent application. The purpose of the provisional application is to provide a right of priority to the invention by establishing a priority date.

Complete patent specifications

Where the patent applicant intends to apply for patent rights, a complete patent specification must then be finalised and filed within 12 months of the filing date of the provisional.

Level of disclosure required

Critically, a patent specification must meet the legal requirements of all countries in which a patent is to be obtained, not just the requirements of the country in which the invention is conceived or developed.

This generally means that the patent specification – whether a provisional or complete - must present the subject matter of the invention in a manner that is clear and complete enough to enable the relevantly skilled worker to make and use the invention without undue experimentation. 

Further, the level of detail must credibly demonstrate that the inventor or patent applicant had “possession of an invention” in the form of the best example of the invention and other implementations of it that may not, at the time of drafting, have been reduced to practice.

Importantly, a highly technical discussion of the invention is not the only important factor. What is equally important is an awareness of, and experience in handling the legal issues that may later arise (particularly those peculiar to specific invention subject matter). This insight enables a more informed specification to be developed, providing for flexibility in patent strategy so that legal issues which may arise many years after patent drafting can be dealt with.

The role of the patent attorney

As the key person responsible for drafting a patent specification, the patent attorney must be adept at quickly distilling the inventive concept and translating it into a specification that will ultimately protect the invention. A solid grounding in the relevant technology and patent drafting skills are essential for a timely and cost-effective preparation of a patent specification, and we hand-pick our attorneys for our clients matters on this basis. 

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