rus
The algorithm based on the principles which provide optimum options of drawing up demands for difficult inventions from the point of view of their completeness, clarities of disclosure and minimization of time is considered.
The procedure for receipt of applications for invention, consideration and examination of applications, and granting the Russian Federation patents for inventions is determined by an administrative provision (hereinafter the "Rules"), which was approved by order of the Ministry of Education of the Russian Federation No 327 dated 29 October 2008. The Rules offer the following sequence of sections presenting applications for inventions:
1. Technical field of the invention;
2. The prior art;
3. Disclosure of the invention;
4. A brief description of the drawings;
5. The implementation of the invention;
6. Abstract.
Usually it is not a problem for inventors to work out the first section. The second, fourth and sixth sections of applications often contain redundant information. Inventors often spend a lot of time on drafting the third section unnecessarily, and the fifth section almost always lacks some of the required information.
Features of the Section
"Summary of the Invention"
First of all, let us consider the third section "Summary of the Invention". According to the Rules, it includes details that reveal the essence of the invention and contains the following subsections:
1.The essence of the invention expressed through a group of essential features sufficient to provide a technical result;
2.The problem to be solved by the invention;
3.The features which distinguish the invention from the closest analogue;
4.The combination of features that ensure obtaining a technical result in all cases the patent will be subject to;
5.The features that characterise the invention only in particular cases, specific forms of implementation and under specific conditions of use.
All of these subsections are necessary to disclose without relying on drawings.
After examining the rules in which more than four pages of text are devoted to "Disclosure of Invention", inventors usually try to present in this section all their knowledge on the subject of the invention often acquired over many years of working experience. It is almost always impossible to understand anything in that text because modern inventions especially in the field of complex processes and high-tech processes and units often contain tens of dependent characteristics. Without presenting the drawings and a detailed description, it is practically impossible to disclose all the features and essence of the invention.
It should be mentioned that the section "Disclosure of Invention" was introduced in the early twentieth century during the creation of the national patent practices based on the German experience. At that time, inventions were rather simple; thus it was logical to immediately grasp the essence of the invention during the study of a patent (in the German rational way) without reading the claim of an invention, without studying the design features and operating modes. Today, inventions are a lot more complicated because something, which was sound 100 years ago, has no meaning now. It is very often that inventors, after having spent a few months working on the third section, fail to understand what they are supposed to write under "Implementation of the Invention" and prepare it without properly detailing it, and it leads to refusal of a patent. It will be shown below how to spend 2-3 minutes on the third section.
Features of the Section "Implementation
of the Invention"
It is advisable to start drafting the description of an invention with the fifth section "Implementation of the Invention". Let us consider its structure primarily through the examples of applications for devices as the most frequently occurring subject of patenting. As correctly stated in the rules, you should first describe the device in a static state, and then its operation. It is also worth giving the information to support the possibility of obtaining the technical result specified in the section "Disclosure of the Invention". In fact, these are all the rules" recommendations set forth in the same paragraph. Thus, the fifth column can be divided into three independent sub-sections:
1.Static description of the design;
2.Description of operating capabilities of the device;
3.Description of the technical results.
The essence of the algorithm compiling
OF applications for high-tech inventions
Let us consider the essence of the proposed algorithm compiling applications for complex and high-tech inventions based on the final version of the claim of invention as already noted in [2,3]. Modern umbrella claims for high-tech devices often contain more than 20 dependent claims. For more clarity, the positions of features on the drawings may be indicated in the claim by enclosing them in parentheses.
Of course, it is impossible just to guess all the numbers of positions at once because the attributes in the claim are provided in a generalised manner to the maximum extent (according to the rules, they are expressed "with a general concept, in particular represented at the functional generalisation level"), and the description should offer its full disclosure. Therefore, it is expedient to skip positions in the claim of invention. For example, if the XY table attribute has position 5in the claim; and the description will need to mention two carriages, two guides and two drivers and base, the following position of the claim will have at least number 12. To be safe, it should be possible to reserve a couple of other positions; this will reduce the amount of subsequent corrections.
For the first time, the claim of an invention is copied in sub-section 5.1 "Static Description of the Design", then removed are all the parentheses of positions, numbers of items of the claim and typical expressions like the "device according to p.n characterised in that". Thus, each item of the claim is presented as a separate proposal.
Let us assume that the first and second items of the claim are as follows:
"1. A relocator comprising a base (1), characterised in that a XY table (5) fixed to the base is introduced (1).
2. The unit according to p. 1 characterised in that the XY table (5) comprises the first linear displacement sensor (12) and the second linear displacement sensor (15)".
Then these two items in the sub-section "Static Description of the Design" can have the following wording, "Relocator comprises a base 1 and a XY table 5 fixed on the base 1. The XY table 5 includes the first linear displacement sensor 12 and the second linear displacement sensor 15".
Then, the text is copied to the section "Technical Results" and abstract.
Now we should go back to the "Disclosure of the Invention" and detail to reveal all the features of the claim. For example, "Relocator comprises a base 1 including the first grip 2, the second grip 3 and the third grip 4 through which the XY table 5 is fixed on the base 1. The XY table 5 comprises the first carriage 6 with the first guides 7, on which through the second guides 8 the second carriage 9 is fixed. In this context, the first guides 7 are fixed to the base 1. On the base 1 fixed is the first drive 10 coupled with the first carriage 6, on which fixed is the second drive 11 coupled with the second carriage 9. The XY table 5 includes the first linear displacement sensor 12 mounted on the first carriage 6 with the fourth grip 13 and fifth grip 14, as well as the second linear displacement sensor 15 mounted on the second carriage 9". Typically, there are 3 lines of a description on one line of the claim as can be seen from the example.
Then, the sub-section 5.3 "Description of the Technical Results" is summarised by providing to each distinctive feature its technical results. In this context, you can use the following wording, "the fact that the relocator contains the XY table 5 fixed on the base 1 reduces the positioning error for the relocator. The fact that XY table 5 includes the first linear displacement sensor 12 and the second linear displacement sensor 15 also reduces the positioning error for the relocator".
It should be noted that in recent years the description sub-section has gained in importance. The fact that by contrasting the attributes of the proposed claim and known solutions, the expert should provide the same technical result, which is specified in the application for a new solution. If the expert has not indicated the technical result of the attribute contrasted by him/her (and that is often the case), then it is much easier for the inventor to defend a new feature, when the technical result from its use specified. We should also note that experts are increasingly questioning the technical result "enhanced functionality" by referring to clause 10.7.4.3 of the Rules, in which it is not included. However, such an effect can occur quite often in the case of equipment. For example, when combining two technologies, each of which allows the measurement by one parameter, the possibility of measuring the two parameters in the new solution, and will extend the functionality thereof.
In individual cases, in which the description of a device should be performed in great detail, the claim or its part can also be copied in sub-section 5.2 "Functional Description of the Device". This once again reminds of each attribute of the claim to justify its necessity as sometimes even formal examinations may indicate the absence of a functional description of the device of an attribute and question its necessity in the claim.
It should be noted that if the claim is presented in the umbrella form and its each item (a group of attributes) has a specific use, then after the disclosure of each characteristic in sub-section 5.1, it is expedient to describe its functionality as well. Otherwise, if it takes too long to disclose the big umbrella claim in great detail in sub-section 5.1, and then separately in sub-section 5.2 provide the use of each attribute, then the scope of application files will increase without simplifying its perception. In addition, if the claim has the umbrella form and contains a large number of dependent items, the technical results can be duplicated in sub-section "Static Description of the Design".
Drafting a abstract
Now you can proceed with the abstract and the copied version of the claim converted using standard expressions like "there is an option" and "an option is possible". For example, "The invention consists in that the relocator comprising base 1 the XY table 5 is introduced and mounted on the base 1. There is an option in which the XY table 5 includes the first linear displacement sensor 12 and the second linear displacement sensor 15. Alternatively, it is possible that ..." and so on with regard to all the items of the claim.
In the abstract simplifications are allowed. For example, if the claim had two dependent claims, the "XY table (5) on the elastic guides (20)" and the "coordinate table (5) on the flat guides (25)", then in the abstract you can write, the "coordinate table 5 on the elastic guides 20 or the flat guides 25".
Then, the edited fragment of the abstract is copied in the section "Disclosure of the Invention", in which all the numbers of positions are removed from it, because according to the structure of the description, drawings are disclosed after this section. Thus, the third section is generated "automatically".
Section "Background"
The part corresponding to the limiting part of claim is copied from "Disclosure of Invention" in the second section "Background" namely in the description of the prototype. In addition to the prototype attributes used in a new solution it is necessary to add those features which are present in the prototype but not used (in the new solution).
It should be noted that the practice of a very detailed description of Section "Background", despite the provisions of the Rules, is gradually becoming a thing of the past. Often inventors, especially the older generation, with a great knowledge on the history of technical solutions close to the invention, as in the third section, provide all the information available to them thus unnecessarily overloading the text of the application. Moreover, by a strange pattern, the greater is this section, the less information is contained in the section "Implementation of the Invention", which given a detailed disclosure, can enforce the patentability criterion "Industrial Applicability" and at the same time enhance its umbrella component during the adjustment of claim at the stage of examination.
Novice inventors often go wrong when they disclose the section "Background" in too much detail. Immersed in the "depths" of patent databases they cannot get out of them and keep looking for more and more close countertypes for their solution, the author is aware of cases when takes many months of work for inventors to search prototypes. I can reveal a "secret", the experts just about to skip this section because it is almost impossible to find a reason in it for the refusal to grant a patent although that is one of the examination"s top priorities. The same practice was created in the case of foreign patenting as well. As far back as 5-10 years ago the section "Background" in foreign patents was described in great detail; these days it is quite common that a description of only one prototype without even mentioning analogues is used (see e.g. [4]).
Section "Brief Description of Drawings"
In some cases, when it is possible to create the ideal consistency of claims and drawings, and when the first item of the claim corresponds to the first drawing, and each dependent item has a graphic image on a separate drawing, the version of the claim from Section "Disclosure of the Invention" can be copied in Section "Brief Description of the Drawings" by cutting each sentence. For example, "Fig. 2 shows the XY table including Linear replacement sensors".
Practical use of the algorithm
of drawing up proposals
Thus, the proposed sequence of the text of an application will be as follows: the claim – 5.1 – 5.2 – 5.3 – 6 – 3 – 2 – 4.
When a claim is prepared, in fact it can be used in the description seven times. For examples of the preparation of such texts please refer to patents RU2515731 and RU2497134. The first patent describes a system for the study of pipes in the oil and nuclear industries. The claim, which consists of seven items, was copied and adjusted five times allowing to immediately prepare the text of a description of the application virtually without corrections. In this case, the primary technical results, such as an increase in the measurement accuracy and service life are in line with the common result, the enhanced functionality, which is the primary outcome in terms of the ability to measure the surfaces of a complex shape.
In the Patent RU2497134 on the method of approaching a probe to the sample for scanning probe microscope, the claim consisting of ten items was copied four times thus making it possible to prepare the text of the application almost without adjustments.
Of course, every rule has exceptions. For example, in the patent RU2309140 a specific thickness nitrogen tetra-oxide N2О4 on aluminium particles providing for their complete combustion is provided for the method of producing a gel-like propellant. Facilitating the text preparation was based on the extensive experience of the developers in that field, and a sufficient number of references to the fundamental sources. However, excessive instantiation of one of the parameters makes it easy to get around the patent. This drawback was accounted for, and in the following patent RU2340656 to the method for producing nanodispersed water-fuel emulsions and the device for its implementation the numerical values presented in the description were characterised by a range of values. The rapidity of preparation of this application was based on five-fold copying claims and references to the fundamental studies dedicated to the subject of the invention.
In some cases, when after making claims there is no confidence in the availability of any of the expected technical results, copying the claim for the first time can be performed in sub-section 5.3 followed by following the main sequence. In the preparation of sub-section 5.3 a claim can be readjusted; it concerns both a sequence of presentation its items and the contents of the items. For example, it is necessary for the achievement of various technical results of the distinguishing attributes of an independent item of the claim, which could disrupt the integrity of invention. By adjusting the claim at the beginning of work, you can reduce the overall time spent to draw up applications.
Of course, the proposed operating procedure is not a dogma but a "guide to action". Each inventor can adapt it to suit a particular invention according to their experience. From the experience, when such operating procedures are used, the preparation of applications for inventions in reduced by times and sometimes dozens of times. However, it should be borne in mind that they should be used when the experience in using the techniques of drawing up applications outlined in [1,2,3,5,6] is already gained.
1. Technical field of the invention;
2. The prior art;
3. Disclosure of the invention;
4. A brief description of the drawings;
5. The implementation of the invention;
6. Abstract.
Usually it is not a problem for inventors to work out the first section. The second, fourth and sixth sections of applications often contain redundant information. Inventors often spend a lot of time on drafting the third section unnecessarily, and the fifth section almost always lacks some of the required information.
Features of the Section
"Summary of the Invention"
First of all, let us consider the third section "Summary of the Invention". According to the Rules, it includes details that reveal the essence of the invention and contains the following subsections:
1.The essence of the invention expressed through a group of essential features sufficient to provide a technical result;
2.The problem to be solved by the invention;
3.The features which distinguish the invention from the closest analogue;
4.The combination of features that ensure obtaining a technical result in all cases the patent will be subject to;
5.The features that characterise the invention only in particular cases, specific forms of implementation and under specific conditions of use.
All of these subsections are necessary to disclose without relying on drawings.
After examining the rules in which more than four pages of text are devoted to "Disclosure of Invention", inventors usually try to present in this section all their knowledge on the subject of the invention often acquired over many years of working experience. It is almost always impossible to understand anything in that text because modern inventions especially in the field of complex processes and high-tech processes and units often contain tens of dependent characteristics. Without presenting the drawings and a detailed description, it is practically impossible to disclose all the features and essence of the invention.
It should be mentioned that the section "Disclosure of Invention" was introduced in the early twentieth century during the creation of the national patent practices based on the German experience. At that time, inventions were rather simple; thus it was logical to immediately grasp the essence of the invention during the study of a patent (in the German rational way) without reading the claim of an invention, without studying the design features and operating modes. Today, inventions are a lot more complicated because something, which was sound 100 years ago, has no meaning now. It is very often that inventors, after having spent a few months working on the third section, fail to understand what they are supposed to write under "Implementation of the Invention" and prepare it without properly detailing it, and it leads to refusal of a patent. It will be shown below how to spend 2-3 minutes on the third section.
Features of the Section "Implementation
of the Invention"
It is advisable to start drafting the description of an invention with the fifth section "Implementation of the Invention". Let us consider its structure primarily through the examples of applications for devices as the most frequently occurring subject of patenting. As correctly stated in the rules, you should first describe the device in a static state, and then its operation. It is also worth giving the information to support the possibility of obtaining the technical result specified in the section "Disclosure of the Invention". In fact, these are all the rules" recommendations set forth in the same paragraph. Thus, the fifth column can be divided into three independent sub-sections:
1.Static description of the design;
2.Description of operating capabilities of the device;
3.Description of the technical results.
The essence of the algorithm compiling
OF applications for high-tech inventions
Let us consider the essence of the proposed algorithm compiling applications for complex and high-tech inventions based on the final version of the claim of invention as already noted in [2,3]. Modern umbrella claims for high-tech devices often contain more than 20 dependent claims. For more clarity, the positions of features on the drawings may be indicated in the claim by enclosing them in parentheses.
Of course, it is impossible just to guess all the numbers of positions at once because the attributes in the claim are provided in a generalised manner to the maximum extent (according to the rules, they are expressed "with a general concept, in particular represented at the functional generalisation level"), and the description should offer its full disclosure. Therefore, it is expedient to skip positions in the claim of invention. For example, if the XY table attribute has position 5in the claim; and the description will need to mention two carriages, two guides and two drivers and base, the following position of the claim will have at least number 12. To be safe, it should be possible to reserve a couple of other positions; this will reduce the amount of subsequent corrections.
For the first time, the claim of an invention is copied in sub-section 5.1 "Static Description of the Design", then removed are all the parentheses of positions, numbers of items of the claim and typical expressions like the "device according to p.n characterised in that". Thus, each item of the claim is presented as a separate proposal.
Let us assume that the first and second items of the claim are as follows:
"1. A relocator comprising a base (1), characterised in that a XY table (5) fixed to the base is introduced (1).
2. The unit according to p. 1 characterised in that the XY table (5) comprises the first linear displacement sensor (12) and the second linear displacement sensor (15)".
Then these two items in the sub-section "Static Description of the Design" can have the following wording, "Relocator comprises a base 1 and a XY table 5 fixed on the base 1. The XY table 5 includes the first linear displacement sensor 12 and the second linear displacement sensor 15".
Then, the text is copied to the section "Technical Results" and abstract.
Now we should go back to the "Disclosure of the Invention" and detail to reveal all the features of the claim. For example, "Relocator comprises a base 1 including the first grip 2, the second grip 3 and the third grip 4 through which the XY table 5 is fixed on the base 1. The XY table 5 comprises the first carriage 6 with the first guides 7, on which through the second guides 8 the second carriage 9 is fixed. In this context, the first guides 7 are fixed to the base 1. On the base 1 fixed is the first drive 10 coupled with the first carriage 6, on which fixed is the second drive 11 coupled with the second carriage 9. The XY table 5 includes the first linear displacement sensor 12 mounted on the first carriage 6 with the fourth grip 13 and fifth grip 14, as well as the second linear displacement sensor 15 mounted on the second carriage 9". Typically, there are 3 lines of a description on one line of the claim as can be seen from the example.
Then, the sub-section 5.3 "Description of the Technical Results" is summarised by providing to each distinctive feature its technical results. In this context, you can use the following wording, "the fact that the relocator contains the XY table 5 fixed on the base 1 reduces the positioning error for the relocator. The fact that XY table 5 includes the first linear displacement sensor 12 and the second linear displacement sensor 15 also reduces the positioning error for the relocator".
It should be noted that in recent years the description sub-section has gained in importance. The fact that by contrasting the attributes of the proposed claim and known solutions, the expert should provide the same technical result, which is specified in the application for a new solution. If the expert has not indicated the technical result of the attribute contrasted by him/her (and that is often the case), then it is much easier for the inventor to defend a new feature, when the technical result from its use specified. We should also note that experts are increasingly questioning the technical result "enhanced functionality" by referring to clause 10.7.4.3 of the Rules, in which it is not included. However, such an effect can occur quite often in the case of equipment. For example, when combining two technologies, each of which allows the measurement by one parameter, the possibility of measuring the two parameters in the new solution, and will extend the functionality thereof.
In individual cases, in which the description of a device should be performed in great detail, the claim or its part can also be copied in sub-section 5.2 "Functional Description of the Device". This once again reminds of each attribute of the claim to justify its necessity as sometimes even formal examinations may indicate the absence of a functional description of the device of an attribute and question its necessity in the claim.
It should be noted that if the claim is presented in the umbrella form and its each item (a group of attributes) has a specific use, then after the disclosure of each characteristic in sub-section 5.1, it is expedient to describe its functionality as well. Otherwise, if it takes too long to disclose the big umbrella claim in great detail in sub-section 5.1, and then separately in sub-section 5.2 provide the use of each attribute, then the scope of application files will increase without simplifying its perception. In addition, if the claim has the umbrella form and contains a large number of dependent items, the technical results can be duplicated in sub-section "Static Description of the Design".
Drafting a abstract
Now you can proceed with the abstract and the copied version of the claim converted using standard expressions like "there is an option" and "an option is possible". For example, "The invention consists in that the relocator comprising base 1 the XY table 5 is introduced and mounted on the base 1. There is an option in which the XY table 5 includes the first linear displacement sensor 12 and the second linear displacement sensor 15. Alternatively, it is possible that ..." and so on with regard to all the items of the claim.
In the abstract simplifications are allowed. For example, if the claim had two dependent claims, the "XY table (5) on the elastic guides (20)" and the "coordinate table (5) on the flat guides (25)", then in the abstract you can write, the "coordinate table 5 on the elastic guides 20 or the flat guides 25".
Then, the edited fragment of the abstract is copied in the section "Disclosure of the Invention", in which all the numbers of positions are removed from it, because according to the structure of the description, drawings are disclosed after this section. Thus, the third section is generated "automatically".
Section "Background"
The part corresponding to the limiting part of claim is copied from "Disclosure of Invention" in the second section "Background" namely in the description of the prototype. In addition to the prototype attributes used in a new solution it is necessary to add those features which are present in the prototype but not used (in the new solution).
It should be noted that the practice of a very detailed description of Section "Background", despite the provisions of the Rules, is gradually becoming a thing of the past. Often inventors, especially the older generation, with a great knowledge on the history of technical solutions close to the invention, as in the third section, provide all the information available to them thus unnecessarily overloading the text of the application. Moreover, by a strange pattern, the greater is this section, the less information is contained in the section "Implementation of the Invention", which given a detailed disclosure, can enforce the patentability criterion "Industrial Applicability" and at the same time enhance its umbrella component during the adjustment of claim at the stage of examination.
Novice inventors often go wrong when they disclose the section "Background" in too much detail. Immersed in the "depths" of patent databases they cannot get out of them and keep looking for more and more close countertypes for their solution, the author is aware of cases when takes many months of work for inventors to search prototypes. I can reveal a "secret", the experts just about to skip this section because it is almost impossible to find a reason in it for the refusal to grant a patent although that is one of the examination"s top priorities. The same practice was created in the case of foreign patenting as well. As far back as 5-10 years ago the section "Background" in foreign patents was described in great detail; these days it is quite common that a description of only one prototype without even mentioning analogues is used (see e.g. [4]).
Section "Brief Description of Drawings"
In some cases, when it is possible to create the ideal consistency of claims and drawings, and when the first item of the claim corresponds to the first drawing, and each dependent item has a graphic image on a separate drawing, the version of the claim from Section "Disclosure of the Invention" can be copied in Section "Brief Description of the Drawings" by cutting each sentence. For example, "Fig. 2 shows the XY table including Linear replacement sensors".
Practical use of the algorithm
of drawing up proposals
Thus, the proposed sequence of the text of an application will be as follows: the claim – 5.1 – 5.2 – 5.3 – 6 – 3 – 2 – 4.
When a claim is prepared, in fact it can be used in the description seven times. For examples of the preparation of such texts please refer to patents RU2515731 and RU2497134. The first patent describes a system for the study of pipes in the oil and nuclear industries. The claim, which consists of seven items, was copied and adjusted five times allowing to immediately prepare the text of a description of the application virtually without corrections. In this case, the primary technical results, such as an increase in the measurement accuracy and service life are in line with the common result, the enhanced functionality, which is the primary outcome in terms of the ability to measure the surfaces of a complex shape.
In the Patent RU2497134 on the method of approaching a probe to the sample for scanning probe microscope, the claim consisting of ten items was copied four times thus making it possible to prepare the text of the application almost without adjustments.
Of course, every rule has exceptions. For example, in the patent RU2309140 a specific thickness nitrogen tetra-oxide N2О4 on aluminium particles providing for their complete combustion is provided for the method of producing a gel-like propellant. Facilitating the text preparation was based on the extensive experience of the developers in that field, and a sufficient number of references to the fundamental sources. However, excessive instantiation of one of the parameters makes it easy to get around the patent. This drawback was accounted for, and in the following patent RU2340656 to the method for producing nanodispersed water-fuel emulsions and the device for its implementation the numerical values presented in the description were characterised by a range of values. The rapidity of preparation of this application was based on five-fold copying claims and references to the fundamental studies dedicated to the subject of the invention.
In some cases, when after making claims there is no confidence in the availability of any of the expected technical results, copying the claim for the first time can be performed in sub-section 5.3 followed by following the main sequence. In the preparation of sub-section 5.3 a claim can be readjusted; it concerns both a sequence of presentation its items and the contents of the items. For example, it is necessary for the achievement of various technical results of the distinguishing attributes of an independent item of the claim, which could disrupt the integrity of invention. By adjusting the claim at the beginning of work, you can reduce the overall time spent to draw up applications.
Of course, the proposed operating procedure is not a dogma but a "guide to action". Each inventor can adapt it to suit a particular invention according to their experience. From the experience, when such operating procedures are used, the preparation of applications for inventions in reduced by times and sometimes dozens of times. However, it should be borne in mind that they should be used when the experience in using the techniques of drawing up applications outlined in [1,2,3,5,6] is already gained.
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