Home > Topics > The IP Toolbox > How to Read a Biotech Patent > Editor's Summary, Implications and Best Practices

Patent attorneys are not the only ones who have to be familiar with patent documents. Everyone in an organization, especially scientists, should be able to understand the basic components of a patent. Naturally, everyone who reads a patent—patent attorneys, scientists, technology transfer officers, university presidents, and government policymakers—will have different motivations for doing so. A technology transfer officer might focus on the legal and business aspect of a patent document: what was patented and by whom, whether or not related patents exist, what the scope of the patent rights is, when the patent issued, and when the patent is due to expire. A scientist interested in the background and science of the patented invention would likely focus on the technical details of the patent disclosure. A university president might read a patent in order to better understand the types of inventions that are currently being patented, with an eye to optimizing his or her university’s IP management system. Finally, a government policymaker would likely want to get a sense of what types of inventions are being patented and what advantages such patents may confer on the patent owners as well as the larger society.

This chapter describes the basic components of a standard patent document: the cover page (which includes the title of the invention, the names of the inventors, the names of the assignees, the date of issuance, and the abstract); the text of the patent; and the claims (which define the boundaries of the IP rights that are conferred by the patent).

The patent abstract is a short description of the invention. By reading the abstract, readers can quickly determine the nature of the invention. Although, as the chapter explains, the “abstract shall not be used for interpreting the scope of the claims,” courts have occasionally used it for this purpose.

The text of the patent, which defines the scope of the patent’s claims, is also called the disclosure (in the U.S., it is called the specification). TRIPS mandates that the invention must be disclosed “in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.” The form of the disclosure varies from country to country. U.S. patents must contain written description, enablement, and best mode.

The claims of the patent describe the technology for which the applicant hopes to secure IP rights; this is the most important part of the patent. The claims must “particularly point out and distinctly claim the subject matter which the applicant regards as his invention.” Claims can be either dependent or independent: independent claims stand on their own, but dependent claims depend on—that is, refer back to—an independent claim. In a typical patent document, the claims are located near the end of the text.

Although patent documents provide a wealth of information, they are quite often misunderstood. For example, scientists do not always understand the critical differences in presentation, content, and intent between patents and scientific publications. A patent document can be daunting until the reader understands its structure.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• When setting up a patent office, it is advantageous to implement patent practices and procedures that are consistent with those of other countries.

For Senior Management (university president, R&D manager, etc)

• Patents are critically important documents. It is important for all professionals in your organization (including scientists, administrators, business personnel, and, most important of all, technology transfer professionals) to be able to understand the basics of a patent document.
• Scientists, whether newly arrived or long established, should be encouraged to read and become familiar with patents that apply to their own fields. Because patents often disclose more detailed information about inventions than is found in the scientific literature, they can be very valuable in keeping scientists up-to-date.

For Scientists

• Be aware that patents often disclose significant amounts of valuable technical information that may be of use to your own research. Make it a habit to regularly review issued patents and patent applications that pertinent to your own field.
• Remember that technical concepts and components may not be described the same way in patents as they are in the scientific literature.

For Technology Transfer Officers

• In your institution, some scientists may already actively read patent literature and seek IP protection for their inventions; however, there are probably others who do not do these things. It may take broad changes in the culture of your institution to ensure that all of your scientists are IP-aware.
• In order to have coherent, efficient, and productive interactions with your patent counsel, you will need to be familiar with patent documents.
• All professionals within your organization should be familiar with patent documents and be able to communicate with each other about them. However, the degree and scope of their understanding need not be identical.