Specific Checking Methods for Patent Specifications

Chapter 4: Concrete Patent Specification Checking Methods

1. Patent Attorney's Intent in Drafting Patent Specifications

When checking a patent specification, it is crucial to understand the patent attorney's thought process behind its creation. If you drafted the specification yourself, the intent is clear, making the check easier. Even if someone else drafted it, if it's a simple textual rendition based on the invention proposal, understanding the intent is also straightforward. However, in reality, patent attorneys draft specifications considering many factors, such as the scope of rights and the possibility of obtaining a patent. As a result, patent specifications are often not mere textual renditions of invention proposals; rather, expressions are changed, and content is added or modified. Knowing the intent behind the patent specification drafting helps to understand the meaning of the described content and facilitates checking. It is necessary to understand the patent attorney's thought process. The general considerations are outlined below.

1-1. Overview of Patent Attorney's Approach

• The invention proposed by the client is merely one embodiment.

• Efforts are made to give the invention sufficient breadth and depth.

• Patent specifications are drafted with anticipated office actions (reasons for refusal) during examination in mind.

• Patent specifications are drafted anticipating scenarios for exercising the rights.

• Efforts are made to optimize the described content according to the purpose of the application.

1-2. Explanation of Specific Approaches

• Method for Extracting the Essence of the Invention

  • The essential content is extracted from the proposed material and described in a way that allows for patent acquisition ($(\text{①})$ ).

• Method for Providing Breadth and Depth

  • Other embodiments and variations included in the essence of the invention are identified to specify a broad concept ($(\text{②})$).

  • The claims are drafted using superordinate conceptual expressions, and diverse specific examples are described.

• Management of Reasons for Refusal

  • The entire patent specification is described to facilitate smooth examination passage ($(\text{③})$).

• Importance of Rights Utilization

  • It is important that the patent is granted, and its content must be usable ($(\text{④})$).

• Optimization of Patent Specification Based on Application Purpose

  • Even for the same invention, the content should be modified according to the purpose of patent utilization ($(\text{⑤})$).

1-3. Collaboration with IP Staff

During the invention explanation hearing, the patent attorney and IP staff confirm the details. There may be instances where the patent attorney notices specific points, and understanding their intent facilitates the checking process. Cooperation from the IP staff is crucial. They are required to provide information and check the patent specification, especially information based on the company's business strategy.

1-4. Proposal for Quality Improvement

Cooperation to improve patent quality is necessary, keeping the four types of information mentioned above in mind.

2. Patent Specification Check Contents Required from Inventors

Inventors must understand that their role includes checking the patent specification, not just submitting the invention proposal. The content of the patent specification is crucial for maintaining the value of the invention once patented. While the primary responsibility for checking the appropriateness of the patent specification lies with the IP staff, inventors are also required to cooperate in this check. The main checking points for inventors include: technical aspects, the validity of the technical content described in the patent specification, and the accuracy of the invention description. It is particularly important for inventors to focus their checks on the detailed description of the invention section of the patent specification.