Shelston IP discusses the considerations for drafting various patent specifications. To read the full article as originally published in the LexisNexis Australian Intellectual Property Law Bulletin, please click here. This article was published originally in the LexisNexis Australian Intellectual Property Law Bulletin, Volume 31, Number 6, pp.106-109 (2018), and is republished here with permission.
Patent attorneys work at the interface of science, law, and commerce. The fundamental prerequisites for a person to practice patent law are technical and legal qualifications. However, it is also critical to have an in-depth understanding of how products and services are commercialized in order to properly frame the patent specification and draft the claims,
In the recent Federal Court decision, Ronneby Road Pty Ltd v ESCO Corporation  FCA 588 (the decision), Justice Jessup found all the claims of an opposed application invalid for lack of utility because none would deliver each and every one of six advantages listed in the specification, despite there being evidence showing that a