CIPA STUDY GUIDE TO FD2 Drafting of Specifications
Iain Russell
2023
CIPA STUDY GUIDE TO FD2 Drafting of Specifications
Iain Russell
2023
The moral rights of the author have been asserted. All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. © 2010-2023 Iain Russell and Russell Innovations Limited. Fourth edition 2023. INTEGER TREE and CLAIM SANDWICH are UK registered trade marks (UK00003778148 and UK00003778147) owned by Russell Innovations Limited. Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20–23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk
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Author’s Prelude… I would sincerely like to thank Tim Roberts, who is sadly no longer with us, without whom I would never have had the opportunity to write this guide. I would also like to thank Doug Ealey for taking the initiative to prepare his study guide for the FD1 (P2) exam, without which this guide would never have existed. Finally, I would like to thank Tibor Gold who kindly reviewed and edited the 2010 edition of this guide, Iain Ross who has worked wonders with his publication and formatting skills, and to the Patent Examination Board, and the Joint Examination Board as it was in 2010, for taking the time to review this guide and make suggestions for improvements. Iain Russell, Russell IP
About the author Iain Russell is a Chartered and European Patent Attorney, who founded Russell IP to provide high-quality, cost-effective patent attorney services to patent-savvy businesses of any size. Iain specialises in high-tech (especially telecoms) and music tech patent work. Iain has tutored candidates taking the UK drafting examination for over a decade and set up the How To Pass FD2 Training Programme against this backdrop. He also tutors candidates taking the European drafting and amendment papers. He was previously a member of the Joint Examination Board (now the Patent Examination Board) and was responsible for overseeing one of the UK amendment papers.
CIPA STUDY GUIDE TO FD2 Contents
Overview................................................................................................... 1 1. Spotting the invention..................................................................... 3 2. Claiming the invention................................................................... 9 3. Dependent claims...........................................................................21 4. Everything else............................................................................... 27 5. Abstract........................................................................................... 47 6. General............................................................................................. 53 7. Worked example – 2007 “FD2” (P3) paper............................... 57 8. Brushing up our drafting, by E.W.E. Micklethwait..................95 9. Claim drafting – the British tradition, by M.J. Daley.............. 113 Past paper – “FD2” (P3) 2007.......................................................... 121 Examiner’s Report Summary.......................................................... 129
Overview
P
reparing patent specifications is the essence of our profession. It is where our profession started, and it is a skill which sets us apart from others in the IP field. Without patent specifications, there is no patent infringement, there are no validity issues, no concerns over amendments and none of the complications concerning when a fee is due or whether a time limit is extendible. The purpose of FD2 (formerly known as P3) is to test whether you can prepare a UK patent specification to a high standard. So, how do you pass FD2? The following advice from a (now-)former FD2 examiner is retained from the first edition of this guide: ‘Students want complete focus on passing the paper rather than doing the job, though if they can do the job they can easily pass the paper!’ FD2, as with the other Final Diploma papers, is about picking up at least 50 marks in the allotted time. Knowing where you can score (and drop) marks and how to score (and drop) those marks is the subject of this guide. The most important part of the FD2 paper is actually spotting and claiming the invention. Once you’ve done that, the rest of the paper is, in theory, straightforward. One point to emphasise at the outset is that you should make sure you know recent Examiner’s Reports (ERs), which were previously known as Examiners’ Comments, and the Mark Schemes like the back of your hand. Both are available on the CIPA website. They tell you how you gain marks and how you lose them. You should be completely familiar with the ERs for at least the last five years in each exam you take. Equally, you should make sure you have read and digested the FD2 syllabus, with its description of the aims of the paper and the competencies it requires; see the relevant pages of the CIPA website. Recent Candidate Answers, available on the CIPA website, show the overall marks awarded to an answer, as well as a breakdown of component marks for different parts of the answer on the answer script itself. They’re well worth reviewing. FD2 candidates, in particular those with limited practical experience in patent drafting, may benefit from reading Gwilym Roberts’ A Practical Guide to Drafting Patents (available from CIPA). Although this book is not intended to be an exam-passing tool, it is designed to accelerate the patent drafting training and learning process for would-be attorneys. I also recommend reading Paul Cole’s Fundamentals of Patent Drafting book (available from CIPA), which includes the excellent ‘Brushing Up On Our Drafting’ papers by Micklethwait and ‘Claim Drafting’ by Daley, annexed to the end of this work [see pages 89 and 107]. I’ve intentionally not duplicated some of the material covered in Paul’s book in this guide. This guide has been reviewed by the FD2 examiners and is considered to be a good summary of what the examiners are looking for in FD2.
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1. Spotting the invention This is the most important part of FD2. If you get this wrong, it won’t be easy to pass. If you get this right, then you stand a good chance of passing.
1.1 Claiming the product or problem vs. claiming the invention • The problem – usually some drawback of the prior art that’s motivated the client to come up with an invention. • The product – the particular article by means of which the client’s solved the problem. • The advantage – usually a positive expression of the problem; why the client’s product’s an improvement over the prior art. • The invention – none of the above and what you need to protect! So, you’re neither trying to claim the actual product (very narrow) the client’s made nor the problem (too broad) that’s been solved, but something in between; the invention. The examiners comment on this issue sufficiently frequently that it should be taken very seriously. ER extracts from the first edition of this guide are retained below, as they’re still highly pertinent: 2007: At the very least, the independent claim should be novel over the prior art and should also cover the embodiment(s). Somewhere between these extremes is the claim which provides the widest practicable protection. 2004: In most cases, candidates who failed did so because their main claim was too narrow by at least two integers. 2003: However, far too many candidates unnecessarily limited themselves claiming still what they saw, rather than the arguable invention. 2002: Very few candidates demonstrated that they had stood back from the apparatus to consider, in the light of the given prior art and what must be accepted as common general knowledge, what the invention might be. A lot of candidates claimed what they saw, in the drawings. On the one hand, you’d know that if your client came up with the idea of a wireless Bluetooth® headset for a mobile phone, you’d try to use broad claim language such as ‘wireless connection’ – or something along those lines – rather than limit the claim to ‘Bluetooth’, if the claim would still define novel and inventive subject-matter. However, it can get quite tricky in the FD2
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2. Claiming the invention
O
nce you’ve spotted the invention, you’ve got to claim it. You probably have between one and two hours in the exam to get your independent claim(s) right. While there isn’t a major need to rush getting the independent claim(s) correct, there may be insufficient time to change your mind completely later in the exam. However, do bear in mind that the remainder of the paper is normally at least 40% of the marks in FD2, so don’t run out of time! The following extract from the 2017 ER is pertinent in this regard: ‘Candidates should be focussing on preparing a full and complete specification rather than fretting about which section requires the most marks and so is the best to tackle properly to pass, not least because the mark scheme is balanced so candidates need to achieve sufficient marks in all areas to be able to pass.’ The marks awarded for independent claims had decreased in 2018 (20 marks), 2019 (18 marks) and 2020 (22 marks) compared to previous years, e.g. 2015 (30 marks), 2016 (34 marks), 2017 (32 marks). However, in 2021, the marks awarded for the independent claims were significantly higher, namely 40 marks, as explained in the 2021 ER: ‘In contrast to recent years, the mark distribution was weighted towards the claims to provide a more focussed examination of the skill being tested in this paper, namely claim drafting. In particular, 40 out of 100 marks were assigned to independent claims, for which candidates were expected to identify and draft independent claims [to various elements].’ In 2022, there were 24 marks available for the independent claim(s). There isn’t specific claim wording required to pass FD2 and there’s no one exact claim you need to hit on the head to pass. The FD2 examiners offer merely a suggested answer in the Mark Schemes. Claims that include relevant features, their arrangement and their interaction should score well if they get the message across without undue additions, limitations or unhelpful language. This point was emphasised in the 2018 ER: ‘Candidates are also reminded that the claims provided in the mark scheme are a suggestion. Marks are awarded for claims that are suitably drafted to meet the requirements of patentability in the UK and meet the client’s needs, as required by the syllabus for this exam. Although all the wording considered by the Examiners to be required for the claims is included in the information provided, each candidate interprets information differently and the Examiners do not expect to see a main claim that is identical to the one suggested in the mark scheme.’
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2. Claiming the invention Regardless of whether or not you’d include a method claim in real life, really think about whether a method claim’s necessary for the exam. Who’s going to infringe it? If it’s just a member of the public in their own private domain, would you really launch infringement proceedings against them, especially if they could rely on the private and non-commercial acts defence? Likewise, if the method claim would only be infringed by your client’s customers, you need to think whether it’s still worth including it. As there’s no negative marking in the sense of losing marks already gained by including unnecessary material, you won’t formally lose a mark for including a method claim when it’s not needed, but you want to keep the person marking your script on your side as much as possible; and you can’t afford to waste precious time writing redundant or impractical stuff.
2.6 Claim terminology Historically, creativity around claim terminology was expected, or at least could be beneficial. However, more recent ERs emphasise that the expected claim terminology should be in the paper itself. They also explain that, if such terminology is indeed offered in the paper, the expectation is that it’ll be used. From recent ERs: 2022: Candidates were told expressly: ‘A [term] is a term known to people who work with [field],’ and the vast majority used that term. 2020: The Examiners try to provide the language that candidates need to draft the claims within the text to assist those for whom mechanical subject matter is not their field. There is a specific lexicon for mechanical drafting which pharma and bio trainees do not necessarily have at their fingertips, and if terms are offered to candidates for use in claims, they are present to avoid them having to work out what may be appropriate. 2016: For the avoidance of doubt, the text that is provided includes all the language and terminology that the Examiners expect to see in the claims and candidates are advised to use this rather than trying to make up their own terms to describe the invention. 2014: Suitable wording for Claim 1 was provided in the question paper, though candidates continue to create their own lexicons without providing definitions. This can make understanding a paper both difficult and time-consuming.
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2. Claiming the invention
2.7 Checking the claim This is one of the easiest steps to skip in the exam when the clock’s running down and you want to start collecting marks for the description, etc, but it’s so important to do this step. Do use a three-point test for the claim at this stage: • Check 1 – have I got enough structure: Look at the claim in isolation; does it suitably define the invention in terms of function and/or structure so that it can achieve the advantage? Have I claimed the underlying problem or a result to be achieved rather than the invention? Am I ‘floating’? • Check 2 – novelty: Try to make the prior art infringe (or anticipate) the claim. If the claim clearly reads onto the prior art, you stand a good chance of failing. •
Check 3 – is it too narrow: Have I covered all of the client’s embodiments? Have I claimed the product rather than the invention? Can any of the features or terms in the claim be generalised more or even completely omitted?
As an extra check, review the overall style and drafting of your independent claim(s). Additional marks might be available for well-drafted independent claims(s), according to the 2021 and 2020 ER: 2020: As in previous years, additional marks were available for the clarity of [a particular] claim: such marks are used by Examiners to reward a well drafted claim. 2020: Additional marks were available for the clarity of Claim 1: such marks are used by examiners to reward a well drafted claim.
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3. Dependent claims and omnibus claims ‘A surprising number of candidates limited themselves to 15 claims, possibly in view of the EPO’s excess claim fees structure, rather than the 25 that can be included in the UK without additional charge, as may be important if a client has noted costs. This resulted in the inability to acquire dependent claims which could have been important, as well those available for corresponding statements of invention.’ Features that have some sort of advantage associated with them are the best for dependent claims. If the feature doesn’t have an advantage, then it’s unlikely that you’d limit claim 1 to include that feature in real life and so it doesn’t provide a very useful fallback position should claim 1 turn out to be invalid. As well as the dependent claims being logically ordered as whole, it’s advisable to put the strongest fallback dependent claims as early as possible in the claim set, i.e. claims 2 and 3. The following extracts from recent ERs must not be interpreted as indicating that it’s OK to draft independent claims that lack novelty; these extracts are solely included to emphasise the importance of the higher-ranking dependent claims: 2022: Where [an independent] claim not including [a potentially essential feature] was rewarded, the Examiners expected to see [the potentially essential feature] referred to in a high order claim (meaning the candidate likely recognised [the potentially essential feature] as an important feature, and thus considered [the potentially essential feature] a good fallback position to include). 2019: If Claim 1 was deemed to lack novelty, appropriate marks were awarded to candidates who provided high ranking dependent claims which could be used in examination to overcome a novelty objection. If features required for Claim 1 novelty are provided towards the end of a (long) list of dependent claims, the specification needs to show very clearly that the candidate has understood the invention and is not merely throwing in everything in the hope of accruing sufficient marks to pass. 2018: Candidates whose Claim 1 lacked novelty over… the prior art were given the benefit of the doubt if all other features were present in Claim 1 and [the novel feature] appeared in an early dependent claim. Additional pertinent comments on dependent claims from recent ERs follow: 2022: The majority of the dependent device claims followed a format the candidates should recognise from past papers. In general, candidates can expect to find features, often with alternatives, and supersets thereof, set out. They may not always be in convenient clusters in the disclosure, which is why reading the client letter several times is sensible, reducing the risk simple marks from recognition of the patterns are missed.
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3. Dependent claims and omnibus claims 2022: This year the mark scheme grouped dependent claims together in themes, hopefully allowing candidates to see how and where such marks were both expected to be set out, and how dependencies might work. 2021: There were a number of features suitable for inclusion in dependent claims this year, and most candidates identified them and achieved good marks. As in previous years, candidates who provided a considered and well-constructed set of dependent claims scored highly. 2021: Candidates are reminded that the purpose of dependent claims is to add features that might be used to impart novelty and inventive step to a non-patentable independent claim. 2020: As in previous years, the client letter provided all the subject matter suitable for dependent claim features, which simply needed to be picked out and ordered sensibly. Candidates who provided a considered and well-constructed set of dependent claims scored highly. Indeed, candidates are advised to spend time working out how the features fit together as it was possible to score half of the marks with ease… Achieving all of those marks required the candidate to separate the information, and think about how [the dependent claims] should be ordered. 2020: There was some tendency to draft dependent apparatus claims with solely method features, for which no marks could be awarded. The nature of an apparatus claim is that it claims apparatus unless the apparatus can only be described functionally. 2020: Quite a number of candidates chose to include [dependent] claims directed to features of the prior art… Candidates should question whether the such feature(s) add patentability to a main claim in the event that the main claim is found to be unpatentable – this is the purpose of dependent claim features. 2019: The client’s letter provided ample and clear subject matter for dependent claims and the client was explicit that claims fees were to be avoided, giving candidates the space to draft a suitable number of dependent claims. Indeed, because of the amount of detail provided, the mark scheme was weighted towards the dependent claims to encourage thoughtful claiming and ordering of features. In general, an improvement was seen from previous years and dependent claims were usually sensibly constructed and ordered. 2019: However, many candidates seemed to think that claims fees start from 16 onwards, as per Europe, rather than 25 allowed by the UK IPO. As a result, features that would have been useful to the client, and thus marks, were missed.
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4. Everything else not be possible to pluck that feature on its own from the specific description when seeking to amend claim 1. ‘Candidates are reminded that a purpose of the description is to satisfy section 14(3) and to ensure that the application does not fall foul of section 72(1)I. It would be advisable, therefore, that all the claimed features are clearly disclosed and that the terminology of the claims can be followed through to the specific description. For simple mechanical cases, at least, one test of a specific description is whether it can be understood without the drawings. Some candidates did little other than refer to the drawings. Perhaps less-practised candidates opening their specific description with the words “Figure 1 shows…” lead themselves into the trap of a description which relies too heavily on looking at the drawings.’ The 2008 marking scheme explains what’s required for the specific description as: ‘Sufficient in detail to provide enabling disclosure of claims, provide back-up positions for all features, especially if not claimed.’
4.6.1 Purpose of the specific description The specific description should describe what is in an embodiment, for example with reference to the drawings; not what might or could be a feature of that embodiment. The following advice from the first edition of this guide is echoed: ‘Specific description: Do not say ‘preferably’. Describe what is there, then add in any variations mentioned by the client as modifications/other embodiments. It should be possible to read and understand the specific description without looking at the drawings, which means that candidates must do more than simply copy out what the client has said. Taking 2008… some candidates did little more than say the device is as shown in the drawings.’ If you look through some of the ERs, especially older ones, they promote using the tried-andtested drafting method of: apparatus, use, alternatives: 2006, 2005: In the specific description, the time-honoured strict setting out of the structure of the apparatus in some detail, followed by its mode of operation, was looked for, with all alternative embodiments described separately and subsequently and also in detail. This is repeated in the 2022 ER: ‘Generally speaking the Examiners are looking for the function, structure, operation and alternatives to be made clear’.
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4. Everything else See also the 2021 ER: ‘Candidates are reminded that marks are awarded for a specific description that specifically describes the embodiments and methods’. This means that you start by describing what the thing is in terms of its physical and/ or functional features. You wouldn’t say the following in the specific (clue in the name!) description: The tin opener preferably has a battery, although it might have X, Y, or Z instead and, of course, could instead of opening tins be used to open…
Describe the particular embodiment shown in the figure to which you’re referring. I think this is good practice in real life too. Sometimes you read specifications that have so many alternatives in the first few pages, you forget what the overall apparatus is as you’re trying to remember that the upper surface may be flat, ribbed, convex or concave and there might not even be an upper surface, and that the bottom surface may or may not be…
4.6.2 Describing the figures From the 2006 ER: ‘It would be advisable that all the claimed features are clearly disclosed. It is good sign if the specific description can be understood without looking at the drawings. Consistent reference numerals should to be used in the description and different drawings when referring to the same feature.’ See also the 2021 ER: ‘Relational information to provide a visual image of a device is required, not a simple list of features, so that interpretation may be derived from the specific description rather than the drawings’. Please do remember, however, that although the reader shouldn’t need to look at the drawings to understand the specific description, it’s very likely that you’ll need to describe features that aren’t shown in the drawings. I reproduce an extract from the 2009 ER on the required level of detail: ‘Some candidates did little other than refer to the drawings. Perhaps less practised candidates opening their specific description with the words “Figure 1 shows…” lead themselves into the trap of a description which relies too heavily on looking at the drawings.’
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5. Abstract
5.1 Abstract (2009: 5 Marks, 2021: 5 Marks) ‘The abstract commences with the title (Rule 15(1)), and then indicates the technical field (Rule 15(3)(a)), the technical explanation of the invention (Rule 15(3)(b)) and the principal use of the invention (Rule 15(3)(c)). The abstract should indicate the figure which should accompany the abstract when published (Rule 15(4)). Where a feature of the invention included in the abstract is illustrated in a drawing, the feature must be followed by the reference for that feature used in that drawing (Rule 15(6)).’ From the 2009 marking scheme, you could get five marks for: ‘Title, tech field, tech explanation, principal use, figure, reference numerals.’ These have to be some of the easiest marks to get in FD2, but the score is sometimes very low; perhaps because candidates aren’t familiar with the requirements for an abstract. Indeed, the low quality or omission of an abstract altogether has historically been a problem, as can be seen from the 2009 ER: ‘Some candidates omitted an Abstract. They cannot gain any points allocated to an Abstract that isn’t there. Too many candidates included the unnecessary phrases “The invention comprises…” or “According to the invention” in their Abstract.’ It appears that the inclusion, and quality, of abstracts has improved in recent years, as suggested by the 2021 ER: ‘As in previous years, abstracts were seen in the majority of scripts and were generally adequately written.’ To repeat, easy marks for the abstract are often missed. Please don’t put yourself into a position where you’re scoring 46 marks for your answer and not including an abstract at all, where four or five marks would have been available for the abstract. Summing up the above, you need the following six components to get full marks, so it’s worth learning them off by heart:
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5. Abstract An example of a reasonable abstract which would get most of the available five marks could be something like: Electric Tin Opener
An electric tin opener 1 has an internal battery 4 which is used to drive a small motor 2, which in turn causes a cutter 3 automatically to open the lid 7 of a tin 6. The fact that the tin opener 1 is electric obviates the need to expend significant amounts of
physical energy opening the tin 6, which can make opening tins 6 easier for the elderly or infirm.
[Figure 3]
An example of a not-so-good abstract which might only get a mark or two (or possibly none; I’m not certain!) would be something like: Apparatus and Method for Removing the Lid of a Tin-like Object Containing a Food-like Substance
The present invention relates to, but is not limited to, an apparatus (1) for removing the lid (7) of a tin-like object (6) which contains food, a beverage or the like, the
apparatus (1) comprising: motor means (2) driveable by an associated power supply
means (4) and lid-removal means (3) driveable by said motor means (2), whereby the lid-removal means (3) can remove the lid (7) of the tin-like object (6). The apparatus (1) of the present invention is an improvement over the well-known mechanical tin
opener because it is almost impossible to get lids off tins using the latter. The present invention also extends to a method of opening a tin-like object (6) using the abovementioned apparatus (1).
Pertinent extracts from recent ERs relating to the abstract are now provided: 2022: The vast majority of scripts had an Abstract, which remains a positive trend. Where there is no guarantee an abstract will feature in future papers, Candidates are advised to look at previous mark schemes, as there is a pattern to what is being sought, and thus what is rewarded. Easy marks can be gained from ensuring the title is not just the word “Abstract”, and stipulating which of the Figures should be used. In general candidates will be expected to set out the field and/ or main use, and explain the main features in independent claims. This year there was a tendency to stay quiet about any [independent claims in other categories]. Those that did make a reasonable reference to one were duly rewarded. Consistent use of reference numerals is also expected. 2022: The Examiners appreciate this is often the last task done at the end of the exam, but it makes sense for Candidates to just check they have got the basics covered, to ensure they add, for example, the title if they’ve missed it, or add in reference numerals against terms from the Figures, in order to ensure they can achieve as many marks as possible.
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5. Abstract 2021: More marks are awarded for an abstract that provides a broad description of the invention in the context of the technical field, rather than simple regurgitation of Claim 1. 2020: Like last year, abstracts were generally well written and seen in the majority of scripts. The 4 marks available are relatively static from year to year, so it is disappointing when candidates miss the simple things like use of reference numerals which are easilygained marks. However, one point that is generally lacking from many abstracts is an adequate description of the field. Simple recitation of Claim 1 is not sufficient to garner maximum marks. 2019: Abstracts were generally well written and seen in almost all scripts. The four marks available are relatively static from year to year, so it is disappointing when candidates miss the simple things like use of reference numerals which would give easy marks. 2018: On the whole, candidates draft a suitable abstract and most of the marks available for this section are typically awarded. Candidates are reminded to include a statement of the technical field or main use of the invention. 2017: This section was generally well done with candidates providing a title that matched the one given at the top of the specification. Marks were generally lost for failure to include a statement of the field. 2016: This section was generally well done with candidates providing a title that matches the one given at the top of the specification. Marks were generally lost for failure to include a statement of the field and/or reference numerals. The Examiners were pleased to note most candidates did include an abstract this year, which meant there was a chance of getting the marks available. 2014: The abstract is usually well answered by candidates, although rather too often they include the wording ‘according to the present invention....’. 2014: Candidates are reminded that the abstract is for searching purposes and so a little more than simple recitation of Claim 1 is expected. However, a number of candidates included critical features in the abstract that were missing from Claim 1. 2014: Candidates are also reminded that the title should ideally be the same as the title at the beginning of the specification and certainly no narrower.
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7. Worked example [Describe the firebox and its internal components]
The smoker 10 includes a cylindrical smoker firebox 12 which is open at its upper end. The firebox 12 has a hook 14 by means of which it can be hung from the wall of a
beehive so that it is readily to hand during smoking. The firebox 12 also includes a liner
16 in the form of a ventilated protective inner sleeve which can be replaced if it should become severely heat-damaged. Smouldering fuel (not shown) can be placed inside the
firebox on a grate 18. The grate 18 is spaced from the floor 20 of the firebox by means of support legs 22 which are fixed to the underside 24 of the grate. [Describe the lid]
The firebox 12 includes a hinged lid 26 which forms a narrowing chimney 28 that
is offset, i.e. inclined to the central axis of the firebox 12. The narrowing and offset chimney 28 enables smoke generated by the smoker 10 to be concentrated into a
narrow plume which can be directed into a beehive and also facilitates ease of use since
the smoker 10 can be held generally upright, whilst the smoke plume exits at an angle. The ability to hold the smoker 10 upright is desirable since otherwise smouldering fuel in the firebox 12 can get disturbed. This, in turn, reduces the efficiency of the smoker 10 and can cause it to stop generating smoke. An insulating handle 30 is attached to the lid 26 by means of a threaded screw 32. [Describe the air inlet]
The amount of ambient air that enters the firebox 12 is controlled or restricted by a
restricted air inlet in the form of a horizontally oriented air inlet tube 34. The air inlet tube is the only air inlet for the firebox 12. This ensures that smoke is generated in
a controlled manner by causing fuel in the firebox 12 to smoulder rather than burn, due to the relatively low amount of oxygen available. The air inlet tube 34 is located between the bottom of the firebox 12 and the grate 18 so that the airflow does not become clogged by ash and so that burning ash is not disturbed by the airflow. [Introduce the bellows]
Although the smoker 10 can produce small amounts of smoke from the air provided
or convected through the air inlet tube 34, bellows 36 are attached to the firebox by means of brackets 38 to allow additional airflow to be delivered to the smouldering fuel to increase or drive out smoke.
[Describe the bellows in more detail]
The bellows 36 have an inlet valve 40 that allows air to be sucked in and an
outlet valve 42 that enables air to be blown out into the firebox 12. A tapering,
concentrating cone 44 is fitted at the outlet valve 42 and provides an air exit hole
46 for the bellows 36. The cone 44 concentrates and speeds the air emitted from the
bellows 36. In turn, the air column travels further into the firebox 12 and the column of air draws in additional surrounding air which increases the volume of air delivered
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7. Worked example to smouldering fuel. The air exit hole 46 of the bellows 36 and the air inlet tube 34 of the firebox 12 are aligned to enable air to pass from the bellows 36 into the firebox.
The bellows 36 are fitted with a return spring 48. The bellows 36 can be depressed
to cause air to be expelled and then automatically reinflate ready for subsequent use. [Describe the ‘reasonably long’ air inlet tube]
The air inlet tube 34 is reasonably long so as to be in close proximity to the
concentrating cone 46 of the bellows 36. This reduces the amount of convected air drawn into the firebox 12 between puffs, which helps to control the smouldering. [Describe the shield]
A cage or shield 50 in the form of a strong stainless steel wire mesh surrounds the
outside of the firebox 12 and is secured to the brackets 38 which hold the bellows 36.
Even when the firebox 12 gets hot, the cage 50 is generally cool enough not to cause a burn if touched, particularly when wearing gloves. [Describe how the smoker is used: ‘In use’]
In use, fuel is lit and placed inside the firebox 12 on the grate 18 and the lid 26 is
closed. Small amounts of smoke are naturally generated which can be directed towards a beehive. More smoke can be produced by squeezing the bellows 36 a few times to increase temporarily the amount of oxygen and the flow of air in the firebox 12.
This drives accumulated smoke out of the chimney 28 and also increases smouldering combustion, without producing a flame. [Describe alternatives]
Various modifications will be apparent to those skilled in the art. For example, the
cage 50 can be in the form of a ‘U’-shaped sheet of metal (not shown), although this
tends to get quite hot. The bellows 36 could be replaced by another air supply such as a mechanical or electrical fan (not shown). As explained above, the air inlet 34 may be in the form of an air inlet tube. However, provided that the firebox inlet hole is
not too large, satisfactory results can be obtained even without an air inlet tube 34.
Instead of being hingedly connected, the lid 26 could be a push-fit or screw-fit onto
the firebox 12. This can make filling the firebox 12 difficult, particularly when the lid 26 is hot and, once removed, the lid 26 is easily lost. If the lid 26 is of the push-fit
type, it is held in place by a friction fit and a loop of springy wire (not shown) can be used to help the lid be removed without the bee-keeper burning their fingers. Finally,
the smoker 10 can be made of steel or another suitable metal or material instead of or as well as copper.
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8. Brushing up our drafting parts referred to, and in the absence of drawings conjures up no mental picture of any sort at all. The length of the specification is not unduly increased by employing a phrase such as ‘the mechanism includes a driving shaft A carrying a wheel B and mounted coaxially with a driven shaft C’. This gives at any rate some idea of the arrangement and makes it very much easier to identify the parts on the drawing without searching about for the reference letters concerned. Even if the length of a specification is slightly increased by adopting a pictorial style it must be recollected that the length of a specification is really unimportant. Again going to first principles the purpose of the specification is to convey a description of the apparatus as clearly as possible, and in fact a reader may obtain a clear picture more rapidly from two pages of clearly-worded pictorial description, than from a single page which he has to read three times.
Inspection and checking Some patent agents, who have been concerned with the methods of inspection used by industry during the war, such as the multiple gauge which with a single blast of air checks a dozen dimensions of a cartridge case with incredible accuracy, may sometimes wish they could subject their patent specifications to some such automatic scrutiny, inserting Claim 1 into a neat little slot and reading on a huge dial, too narrow, too broad or OK. Although I cannot offer anything of this sort it may be worth summarizing certain questions which can usefully be asked in reviewing a specification to help one judge whether it covers the invention as well as possible. No doubt many other questions may be added but it seems that some of the more important are as follows: 1. Has Claim 1 utility; i.e. does it include the features from which the advantages of the invention follow? 2. Can Claim 1 be avoided by any obvious modification? 3. Has Claim 1 patentable subject-matter or does it cover something obvious? 4. If Claim 1 is weak are there strong, independent sub-claims? 5. Do the claims say what they mean and mean what they say; i.e. do the mental picture and verbal counterpart agree? 6. Can the claims be avoided by selling subordinate integers? 7. Do the claims cover the construction when empty, idle, placed on its side, upside down, etc.? 8. Do the claims include any limitations which lend no patentable subject-matter and are not essential to the purpose aimed at? 9. Are the claims based on any doubtful theory? 10. Are the claims accurate in substance and terminology? 11. Can the claims be made less pompous and more succinct, for example, by making them more colloquial or pictorial without sacrificing accuracy? 12. Are all the client’s information, modifications and remarks included (if this is desirable)? 13. Is there sufficient explanation of parts, operation and terms, and mention of advantages, bearing in mind the state of the art and the need for clarity to a judge? 14. Are any doubtful terms defined, in particular ‘the type specified’? 15. Is the description of the drawings complete in itself?
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8. Brushing up our drafting 16. Is the technology consistent throughout the specification, especially if the claims have been amended? 17. Does the description lead up to and amplify the claims and set forth the purposes and points of the features claimed? 18. Is any unnecessary or doubtful theory included, and if so is it guardedly introduced? 19. Is any unnecessary or doubtful modification described, and if so is it guardedly referred to? 20. Are there any superlatives or are results claimed which need not be obtained, or worse still are not even obtained by the preferred construction? 21. Is everything stated in the specification true? 22. Are there reference letters to all parts of the drawings likely to be pointed at in Court?
Policy in drafting claims Form of claim to suit each case The question of the form of claim to be adopted is included in this part of the paper since some members may make it their policy to prefer one type of claim to another. One man may always start: ‘In a so and so the combination with...etc.’, another starts: ‘A so and so comprising in combination’, another prefers: ‘A so and so in which or wherein’, while others use the word ‘characterised’. The question of functional claims is discussed more fully in section 3.2. My own view is that the patent agent should have all these forms of claim in his repertoire and in each case should select the form which best suits the particular invention. I would suggest using the term ‘characterised’ only when a single feature really does characterise the invention, and one of the combination forms when a combination of features is involved, especially if each feature by itself is already known. But even here there is no hard and fast rule and each case should be considered on its merits.
How broadly to claim In some cases it is fairly obvious that the invention enables certain clear-cut advantages to be obtained; and it is relatively easy to complete one’s mental picture of the invention to be covered. In other cases it may be extremely difficult to decide how broadly to claim the invention, and there may be no limit to the possible breadth beyond the fact that the claim becomes impossibly vague and functional. One example of this difficulty is where the invention is a case of, for example, ‘the hotter the better’. It is clearly asking for trouble on the ground of ambiguity to limit the claim by a phrase such as ‘very hot’ and the only way to make the claim definite is to select an arbitrary limitation such as ‘above 1000°C.’ Then, of course, if the nearest prior art was just under 500°C an infringer may get much of the advantage of the invention by using 950°C. On the other hand if our claim specifies ‘above 500°C’ it includes at its extreme limit a case having no appreciable advantage over the prior art. Presumably the best makeshift is to select an adequate breadth of no man’s land between the claim and the known prior art and be content to let the infringer into this territory.15 Further limitation can, of course, be brought into later claims. It may be
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Appendix – Paper P3 2007
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Appendix – Paper P3 2007
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