What is a patent specification?

The patent specification document describes the characteristics of the invention. You have the option of filing a provisional specification or a complete specification in the first instance:

• A provisional specification broadly describes the invention and how to perform it.
• A complete specification accurately describes the invention and the best known method of carrying it out, and ends with one or more "claims" which define the scope of the invention.

You can choose between filing a complete specification of your invention that is ready for examination by IPONZ, or a provisional specification that contains a broad description of the invention.

Benefits of a provisional specification

Many people decide to delay examination and file a provisional specification first. A provisional specification is not examined, so IPONZ does not conduct a search for similar inventions or give an opinion on the content of the application.

However, this option gives you a further 12 months (extendible to 15 months) before you need to file a complete specification. This is usually considered to be the best way to start the application process because you:

• gain up to a maximum of 15 months to work on the development, financing and marketing of your invention
• do not need to publicly disclose the full or specific details of your invention
• establish a priority date that can help protect the invention from being patented by others
• gain an application number that you can use on the products you manufacture along with the words “patent pending”
• can reveal your invention to interested parties to gauge how successful it may be before proceeding further.
• avoid the larger cost of continuing your application until you can decide if you will proceed to file a complete specification.

What is the general format and content of a New Zealand patent specification?

1. Format

The patent specification (provisional or complete) should:

• be in A4 paper format on one side only,
• have a left-hand margin of at least 2.5 cm, and
• have page numbers, preferably at the bottom centre of each page.

Drawings (if applicable) should be placed at the end of the specification after the description and claims pages (if any) of a provisional specification or claims of a complete specification. Reference numbers and letters can be used. However, the drawing should not include any descriptive text or measurements.

It is usual to consecutively number the drawing sheets (e.g. 1 of 5, 2 of 5, etc.).

Drawings must:

• be on a single side of A4 paper format with a left-hand margin of at least 2.5 cm, and
• have consecutively numbered figures (e.g. Fig. 1, Fig. 2).

2. Content

Title

The title should not include acronyms, trade marks, fancy names, the word “patent" or personal names. The title must relate to and broadly describe the invention (e.g. “An improved fastener" or “A packaging method").

Description

Technical Field: The description usually begins with a brief statement identifying the technical field of the invention. For example, “The invention relates to … is suitable for [activity or purpose]."

Background of the invention (optional): You may wish to include some background information describing what is known (i.e. the most pertinent prior art) and mention if your invention attempts to solve any particular problems. Please note that a New Zealand court of law will generally hold you to your stated objects. The invention as defined by the claims in a complete specification or disclosed in the provisional specification should meet any stated object.

Statement of Invention: This section summarises the technical features and preferred features of the invention. The statements made set out the scope of the invention and should be equivalent to the main claims of your specification or, in the case of a provisional specification, claims you intend using for any subsequent complete specification.

Detailed Description of the Invention: The final part of the description describes the technical aspects of the invention in detail, explaining how to construct and use examples of the invention or how the inventive process can be carried out. Graphs, flowcharts, tables, experimental data and drawings are optional.

Claims: (essential for a complete specification only)

A claim can be independent or dependent on an earlier claim(s). The aim is to clearly define the extent of monopoly. Claims should not contain laudatory statements like “it is cheaper" or “it is the best way of doing it that I have seen".

Claims are written as one sentence. A claim can be as broad as the prior art allows but must not cover anything already known. Every claim should clearly set out the technical features of the invention and the subject matter should be supported or fairly based on the description.

Start your claim(s) on a separate page under the heading “What I/We Claim Is:". The page numbering will follow on from the description.

Any drawings are placed after the claim sheet(s). It is important to include drawings if you wish to file subsequent applications overseas that claim priority from the New Zealand patent application.

Professional assistance

Preparation of a patent specification is a complex matter and we recommend you contact a patent attorney for professional assistance. A list of registered patent attorneys can be found on our website.