Lawyer Monthly Magazine August 2020 Edition

29 AUG 2020 | WWW.LAWYER-MONTHLY.COM patent owners in exchange for exclusive (or monopoly) rights to the invention over the term of the patent, which is typically a maximum of twenty years. From a legal perspective, a patent specification should set out in precise detail the boundary or scope of the invention over which the exclusive rights are granted to the patent owner. This enables third parties, particularly direct competitors and others operating in the same field of endeavour, to understand and determine the limits of the patent rights, and use this information to make informed decisions as to whether or not their planned commercial activities would infringe the rights of another. What is the normal structure of a patent application? The standard form of a patent specification commences with an overview of the technical field to which the invention relates to and moves towards an explanation of the background of the invention with a summary of the existing state of technology in that technical field. The explanation of the background may include details of one or more problems associated with existing technology, as identified by the inventor. A statement of invention then sets out the key or essential features of the invention and the interworking relationshipbetween those features. In essence, the statement of invention summarises the core or What is the function of a patent application? Patent applications are interesting documents both in terms of content and function. As stated in IP Australia’s website, a patent is an exclusive right that is granted for any device, substance, method or process that is new, inventive and useful. This right is legally enforceable and allows the patent owner to commercially exploit the invention for the life of the patent. A patent application sets out the details of the invention so that the public is aware of the details and nature of the invention for which the inventor is seeking, or has been granted, exclusive rights. What should a patent application detail? A patent specification, which is the detailed document that accompanies a patent application and describes the various features of an invention, serves two primary purposes – technical and legal. From a technical perspective, a patent specification should set out full details of an invention in a manner which enables the public to put the invention into practice, or work the invention after the patent has expired or is otherwise no longer in force. This represents the obligation imposed by governments on AN INTERVIEW WITH SHELSTON IP Greg Whitehead speaks to us on the process of filing for a patent for commercial gain, touching on the structure of the application, the importance of the statement of invention and how a patent attorney helps throughout. underlying concept of the invention and thus foreshadows the scope of protection that a patent applicant is seeking to obtain. The statement of invention may also describe a variety of subsidiary – optional or preferred - features of the invention. After the broad statement of invention, a detailed description of one or more non- limiting examples are usually provided to ensure that there is sufficient detail of the invention for a person of ordinary skill in that technical field to understand and make the invention. The detailed description is often made with reference to a set of drawings. A patent specification ends with a set of claims. Once a patent is granted, the claims define the boundary or scope of protection afforded to the patent owner. Patent applications pose a lot of importance for inventors; what ‘boxes’ must they tick in their application to ensure they have a strong chance of being granted a patent? The number one requirement when considering patent protection is to ensure that the details of the invention remain confidential and that there is no Drafting A Patent Application For Commercial Gain “ A patent specification, which is the detailed document that accompanies a patent application and describes the various features of an invention, serves two primary purposes – technical and legal. ”