sp-invention – disclosure meeting

Invention – Disclosure InterviewA formal approach

Prepared by P. Sathiyan

Oms Patent Services Pvt Ltd

Contents

• Purpose of interview

• Minimum Requirements to draft a specification

• Importance of Embodiments

• Efficacy

• Role of Figures


Purpose of interview

• To understand the invention such that Good Specification is drafted.

• Ultimately, the drafted specification should be granted as Patent.


Minimum Requirements to DraftMinimum requirement to draft a specification resides in,


The difference between the prior art and new technology.

The actions that inventors/ manufacturers has to make use of the invention.

The targetproduct / targetindustry inwhichdisclosure isapplicable

Industrial Applicability

Inventive Step

Novelty

Importance of Embodiments

Embodiment is a multiple way of implementing a present disclosure.

• The scope of the invention resides in number of embodiments stated in the specification

• More variants (alternatives or embodiments) enlarges more scope to the invention.

Enablement of claim depends on the embodiments of the invention.

In general, an independent claim may be drafted, covering 6 or moreembodiments.


Efficacy

• Bring out the Usefulness/advantages/ utility of the invention.


Role of Figures• Discussion on Sequence of figures (drawings).

(Through which the embodiment/environmentof invention shall be analyzed and industrialapplicability of the invention shall be identified)

• Finalizing of figures during disclosure interview(To fix the flow of specification)

Specification (Importance of Words)For example, a disclosure relating to a word “communication network”in the invention.

Following questions may be asked to understand, what is acommunication network as disclosed in the invention, (even thoughyou know the definition of the term “communication network”, askinventor to ensure, “how it may be defined “)

i) Q : What is a communication network in the disclosure?A : To connect one or more devices through internet, Bluetooth, WIFI , LAN etc. And, out of which WIFI is used in our invention.

ii) Q : Why WIFI is used why not other networks ? A : WIFI is advantageous over others in providing a wider area than Bluetooth and LAN.


We are trying to expand the scope of the

invention

Specification (Importance of Words)

iii) Q : How WIFI (which is implemented in the invention) provides wider network ?

A : Describing how WIFI achieves the requirement of the invention

iv) Q : If not whether, if there is any possibility to implement your invention in any other networks like WMAN, WIMAX etc other than WIFI ?

A : Yes. The invention can also be implemented using WMAN.


Scope of the invention is extended by inserting this

embodiment in specification

This illustrates the inventive

steps of invention

Specification (Importance of Words)

In this example, we confirmed the definitions of word“Communication network” and widened theestablishment/scope of the word “communicationnetwork” with respect to invention disclosure.

Similarly, Each and every word of the specification mayenlarge the scope of invention.

To accomplish - Quickly Understand/Identify (Match yourunderstandings with the answers of inventors) and askquestion (why, when, which, what and How) to expandthe scope.


Do’s - In Disclosure interview (To bring out minimum requirements)

Ask simple questionsFor Example, • What is the prior art/background of the technology• What are the key components/aspects/ advantages of your inventioni) cheaper, faster, smaller ?ii) Saves time ? More Efficient ? iii) Reduces Manufacturing costs ?• What is your target marketi) Who may be the ultimate consumer ?ii) If it is a technology, who has to incorporate ?iii) Current competitors ?

Ask any question (why, when, which, what and How) that bring out the scope of the invention.


Don’ts - In Disclosure interview

• Don’t think a word (told by the inventor) isknown to you with respect to the disclosure(even though you know the definition of theword), unless it is defined by the inventorhimself.

• Don’t assume words/disclosure, make surethat every unknown word is defined by theinventor.


A good specification

• A good specification is the document having“Whatever you discuss during the interview(for example, as voice recorded) should bedirectly converted into a specification”.

• To achieve this, the flow of the invention (interms of drawings/ figure specification) shouldbe brought out, in step by step manner fromthe inventor.



Thank you

sp-invention – disclosure meeting

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