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ARTICLE · 02 MAY 2018

The importance of a well-drafted patent specification

To properly frame a patent specification and draft claims, lawyers must know how products and services are commercialised.

AustraliaIntellectual Property

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, and so that the patent ultimately meets the applicant's commercial objectives. This is no small task.

Patent specifications are complex to draft, even where the inventive concept has already been crystallized and a client's commercial objectives have already been given deep consideration, let alone in cases in which the inventive concept is still its initial stages and the scope of it is more 'nebulous'. Indeed, Courts have marveled at how difficult it is to draft a patent application. For example, the US Supreme Court explained that drafting of "[t]he specification and claims of a patent... constitute[s] one of

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