BRUSHING UP OUR DRAFTING

CONTENTS

1. INTRODUCTORY.

2. SHODDY DRAFTING.

2.1.Procedure for Drafting.

2.2.The First Phase. The Mental Picture.

2.3.The Second Phase. Saying What You Mean.

2.4.The Broad Fighting Claim. Nicely-graded Subsidiary Claims.

2.5.The Preamble.

2.6.Accuracy.

2.7.Jargon and Wordiness.

2.8.Arrangement of description. Keeping the Reader in Blinkers.

2.9.Inspection and Checking.

3. POLICY IN DRAFTING CLAIMS.

3.1.Form of Claim to Suit Each Case.

3.2.How Broadly to Claim.

3.3.Mullard v. Philco.

3.4.Sufficiency of Claims.

3.5.Subsidiary Claims.

3.6.Permutations and Combinations of Claims.

3.7.The Omnibus Claim.

4. CONCLUDING REMARKS.

1. INTRODUCTORY

Drafting Patent specifications is a subject likely to be of interest to patent agents at any time as it occupies most of their time, but I think that the present time is particularly appropriate for discussing it as we are getting back into gear after the disturbance of the war. The profession to-day includes three classes each of which has some reason for brushing up its drafting.

First there are those who have never fully qualified as drafters of specifications and who have yet to pass the final examination. They will find food for thought in Mr. Leistikow's admirable paper on the final examinations,1 but although he dealt with his subject in general terms he was mainly concerned with interpretation and many candidates may welcome some further remarks on drafting.

Secondly there are those who have been in the Forces or in Government service for a number of years and have recently returned to patent work. They may well feel somewhat rusty after all this time and may accept some discussion of the subject as a kind of informal refresher course.

Finally there are those who have been at it all through the war, battling with shortage or complete absence of staff, absence of partners on Government service, shortage of office materials, delays in the mails, countless restrictions to be studied, permits to be obtained, and forms to be filled in, to say nothing of the nervous strain, danger and material damage and inconvenience caused by bursting bombs and rockets. Such conditions are not conducive to work of the highest standard, especially work needing great concentration; and the choice must often have been not between first-class work and second-class work, but between second-class work and nothing at all.

So it seems a good time for us all to re-examine our work and ask ourselves whether it is really up to the highest possible standard.

I propose to divide my remarks into two parts. I think most people will agree that the points dealt with in the first part under the heading "Shoddy Drafting," are faults which should be avoided if they can be detected. After eliminating all such faults there is still room for considerable difference of opinion on points of drafting, there are cases where drafting may be influenced by circumstances and cases where a compromise may have to be adopted. Such cases I discuss in the final part under the heading "Drafting Policy."

2. SHODDY DRAFTING

2.1. Procedure for Drafting. Two Phases.

Drafting a patent specification is a very specialised form of writing English and is an art which, like painting a picture or playing the piano, depends partly on natural aptitude and partly on acquired skill. In acquiring such skill there is room for some instruction and system as well as long practice aided by self-criticism and outside criticism.

In drafting claims no amount of system and no amount of practice will obviate the necessity for hard work and concentrated thinking, but it may be helpful to adopt certain methods of directing one's thought so that it may be used to the best advantage. As Mr. Tennant said in an excellent paper on claim drafting some years ago, it is no use gazing dreamily at a blank piece of paper and hoping for inspiration.

Although in detail everyone may have a different method of procedure I think that in all drafting there are certain broad fundamental principles to be borne in mind. At each stage, as in any engineering problem, one should have a clear idea what one is trying to do and should work out the most direct and efficient method of doing it, so as to achieve the optimum result with no unnecessary effort. In this connection it is generally useful to consider the problem from first principles.

In drafting a main claim I think the problem can usefully be tackled in two phases, although these phases overlap and may at times be almost indistinguishable.

The first phase consists of making up one's mind what the invention is, or forming a mental picture of what is to be claimed, while the second phase consists of putting that mental picture into words. In most cases the mental picture of what is to be claimed will probably undergo development and change as it is put into words, but none the less the conception may be useful, especially for two reasons; firstly as helping one to realise that at each phase faults may creep in and must be corrected; and secondly as helping one to adopt the most direct method of procedure at each phase.

With regard to avoiding or correcting faults I think it is fairly obvious that the mental picture one forms of the invention may not be the correct mental picture. It may be too narrow or it may be too broad or it may not embody essential features. The mental picture chosen will probably be no matter of scientific correctness but a matter of opinion depending on such arbitrary factors as the policy of the client and it may involve some sort of a compromise between conflicting interests. In general it is a question very much of the judgment of the individual draftsman. These aspects are discussed more fully in Part 3.

On the other hand the possibility of faults in the second phase, i.e., not saying what one means, is perhaps less obvious. We shall return to this later.

Excerpt from 2.2. The first Phase. The Mental Picture

Again, in criticising a claim one must consider the function it is to fulfil. It is useless to hold it up to the light, inhale its bouquet or munch it, like a connoisseur appraising a vintage. The test of a claim is not whether it produces a pleasant sensation, reminiscent of silk dresses rustling in the Mediterranean moonlight, or a symphony conducted by Toscanini, or whether it produces an unpleasant sensation, like a visit to the headmaster's study, or the putrefying corpse of a leprous polecat (although such sensational claims may occasionally be encountered). The test of a claim, as of anything else, is fitness for its purpose, and the direct way of scrutinising one's wording is to go to first principles and ask, "what is the purpose of this claim?" The answer is that it is to make it as difficult as possible for a potential infringer to get the advantages of the invention without infringing the claim.

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