2018-01-11
If you thought that patenting an invention is limited to its fulfilling the requirements of novelty, non-obviousness, and functionality, then give it a second thought. Yes, to patent an invention, it must be unheard of and useful. But, that does not suffice to obtain patent protection. In our last article, we discussed some patent application drafting mistakes that lead to rejection. As patent agents, we come across several inventors who overlook the importance of drafting the application in the appropriate manner.
You need to draft your application in a manner that fulfills all the description requirements needed to obtain patents. This is where the sufficiency of disclosure requirement comes into play. Let’s discuss this in detail below:
Sufficiency of Disclosure
One of the fundamentals of the patent system is quid pro quo, which means that you are granted a favor in return for something. Here, the favor is the patent that is granted in return for disclosure. Disclosure is the price you pay for obtaining patents. And, if you do not adequately disclose the invention, then you fail to obtain patent protection.
The crux of the adequate disclosure requirement is that once your invention satisfies the patentability requirements, you must describe the invention in such a manner that those skilled in the art will be able to understand, make, and use the invention. Every patent application includes a specification, which, in turn, contains three parts – disclosure, claims, and abstract. Today, we are focusing on the disclosure requirement. Specific disclosure requirements are set out in s.27 of the Patent Act. This can be further broken down into these conditions –
Written Description Requirement
The written description requirement calls for a clear and precise description of the invention. It requires the applicant to fully and honestly describe the invention, its operation, and its use. This includes disclosure of the components used to make the invention, how the components and the invention as a whole operate, and their functionality. Terminology and language must be paid attention to ensure a cohesive description. A patent agent can help you prepare a legally compliant description of the invention.
Enablement Requirement
As the name suggests, this stipulation requires you to provide such a written description that enables anyone skilled in the art to which the invention pertains to make and use the invention with ease. You must disclose all such information in your written description that fulfills the enablement requirement. The Canadian Patent Act requires you to set out clearly the steps in the process or the method of constructing, making, compounding, or using a machine. This implies that you need to manufacture or compose the matter in such a way that anyone skilled in the field or closely related to it can make, construct, and use it.
Best-Mode Requirement
In addition to providing a sufficient disclosure that enables someone to make and use the invention, the disclosure must also disclose the best mode of practicing the invention. If your invention is a machine, you need to ‘explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle’. In the case of a process ‘explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions’. Furthermore, even if the best-mode is not claimed in the patent application, it must be described in the patent application.
If you’re thinking of patenting your invention, it is recommended to consult a patent agent to make sure your application is legally compliant.
