The requirements for a patent specification or description for an invention in the field of quantum technology are the same as for other patents. It is necessary to show that the claims of the granted patent define the subject matter for which patent protection is sought and the granted claims are new (also called novel) and involve a so-called inventive step (that is the claims are not obvious).
There are also requirements for the specification of a patent application. In Europe, the patent application must “disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. In the United States, the patent specification must contain a written description of the invention, as well as the manner and the process of making and using the invention. This description needs to use “full, clear, concise and exact” terms so as to enable the person skilled in the art to understand the invention.
The challenge in the field of quantum technology is that technology is rapidly evolving and that the understanding of some of the terms is not necessarily clear. There is little guidance in the field of case law from the patent offices or courts to help understand some of the terms. Indeed with patent specifications being filed around the world and translated into multiple languages, there can often be translation errors occurring. The patent examiners and judges are still learning when making judgements about the disclosure of the prior art and the scope of protection of the claims.
The best way to overcome some of these issues is to draft a clear description and include more information that might be otherwise necessary. It is often better to over-estimate the knowledge of the mythical person skilled in the art, rather than assuming knowledge. In many cases, a scientific paper is used as the basis for at least part of the patent specification. However, it should not be assumed that this is sufficient for the patent application. Scientific papers are written for specialists in the field and may often include implicit assumptions about the skilled person’s knowledge that may not be immediately obvious to the patent examiner.
If you would like support in preparing your patent application in the field of quantum technology, then do get in touch. We can support you with our team of experts in the field.
