Before drafting the patent, the invention must be understood technically. Our firm has technical consultants who receive information from the inventor or the company and process it into drawings and illustrations that are filed with the patent application. The attorneys and patent attorneys, after understanding the technical aspect, draft the legal aspect.
The Patents Law refers to the draft by its legal name, the specification. Section 12 of the Patents Law states: “(a) The specification shall include a title that identifies the invention, its description, with drawings as necessary, and a description of the manner of carrying out the invention, according to which a person skilled in the art will be able to carry it out.”
Therefore, our team has technical consultants who help the attorneys and patent attorneys on the technical side and add further technical details in order to broaden the scope of protection, and also attach drawings as needed to technically explain the invention filed in the patent registration application.
Claims in Drafting the Specification of a Patent Application
The claims are the last section of a patent application, which defines the scope of protection. The Patents Law states in Section 13: “The specification shall end with a claim or claims defining the invention, provided that each such claim reasonably derives from what is described in the specification.”
In other words, once we have obtained a registered patent and wish to sue a patent infringer, the court will examine in the infringement action whether that part is found in the claims of the patent specification, since the claims define the scope of protection and the scope of the legal right granted in the registered patent.
Drafting the Patent Application or Another Application
Drafting can be carried out for several types of proceedings, for example drafting of limited scope for a provisional application, sometimes mistakenly called a provisional patent, i.e. a temporary application filed with the US Patent Office that makes it possible to file a regular patent application within one year. However, the drafting of a provisional application should also be carried out by an attorney and patent attorney, since missing details in it may affect the scope of protection obtained in the permanent application, as well as additional matters related to the information included or not included in the drafting of the provisional application, and its advantages, and in most cases the disadvantages, of this type of application.
It is also possible to draft, for example, utility model applications, a proceeding that cannot be applied for in Israel, but which exists in many countries, such as Europe, Australia, China, Japan and many others.
This type of drafting focuses more on novelty, and sometimes there is no need to state the inventive step, but this certainly depends on the country concerned and on its domestic law, which varies from country to country.
The above information is partial and incomplete. An attorney and patent attorney should be consulted in each case individually. For more details, call +972-3-9711013.