Preparing Patent application – Patent drafting or patent writing


Preparing Patent application - Patent drafting or patent writing

Let’s review our expectation from a patent application one more time.

The outcome expected from Patent protection

  • Provide broadest possible protection to our innovative ideas
  • Competitors should not be able to copy or compete with our invention without our consent
  • Competitors should not be able to work around our patented invention and build similar solution without infringing on our patent (this is most important point)
  • we should be able to monetize the patented invention by
    • by producing patented invention without competition
    • by licensing it to other company to get royalty payments
    • by completely selling the patent rights to other business

and get significant monetary benefits for your efforts

writing a patent application around the novel feature of the invention which has inventive step needs very balanced and scientific approach.

Going too broad or too narrow protection while writing claims would be a mistake.

“Claims should not be too broad because those would be anticipated by existing prior arts, and the claims should not be too narrow because competitors would not be able to work around and use our invention”

Now as an inventor or applicant of patent you are not supposed to know all these rule and skills for patent drafting, so we would be brief about this. As the sole purpose of this book is to educate you with all the steps involved and mistakes to avoid, cares to take at every stage.

So we would not going in to much details of the patent drafting, and how it is done as we are not teaching inventors to draft patent application, which would be really difficult to achieve with a book or let alone single chapter in a book.

The purpose of this section is to make you (inventor) aware about what happens at every stage, behind the scene actions happing with your invention disclosure and what to expect at each stage.

We will start form where we left of the last section on patentability opinion. after receiving neutral or positive patentability opinion form patent agent / attorney, you take a decision whether to proceed with the patent drafting and patent filing process.

Depending up on:

  • the type of patent application (provisional or complete)
  • complexity of subject matter
  • preparedness of inventor with required information (invention disclosure) and
  • time / bandwidth available to work on your project (along with other projects)

it takes about 5 to 12 days for a patent agent or patent attorney to come up with a draft of patent application, which you review along with him.

Patent drafting how patent professional does it

You may be surprised to know, the patent drafting does not begin with title of the invention or the abstract; In fact most patent professional first draft claims !!!

Claims are most important part of patent application.

  • Claims decide the boundaries of the protection that you would be getting for your invention
  • Claims are used to enforce your patent
  • Claims decide whether the competitor is infringing on your patent
  • Claim are closely examined in the patent examination phase at patent office
  • Claims are most difficult part of patent application to write

Of course, there are other dependencies and rules for other parts of patent applications when deciding scope but it is the claim which stands most important thing that decides the future of your patent.

Important things about claims:

The purpose of claim is to define the invention protected by the patent.

The reason patent agent or attorney starts with writing claims first, because once we have complete set of claims providing appropriate protection to the invention and which are approved by you (inventor), then writing remaining parts of the patent application like: detailed description, abstract and summary becomes easier as these parts generally follow the boundaries set by claims.

How to review claims

To be honest, a patent agent or attorney is the most appropriate person to write and review claims with you, however there are some important things to consider :

  • Since, claims define the scope of legal protection, it is suggested that they should be drafted carefully to cover all the aspects of the protection being sought at the same time adequately distinguishing the prior art from the claimed invention.
  • Unity of invention and clarity of claims
  • a) Claim(s) of a Complete Specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept.
  • b) Claims shall be clear and succinct and fairly based on the matter disclosed in the specification.
  • Significance of Claims
  • a) A claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected. No exclusivity is obtained for any matter described in the Complete Specification unless it is claimed in the claim

What is not claimed in the claims stands disclaimed, and is open to public use, even if the matter is disclosed in the description.

Each claim is evaluated on its own merit and, therefore, if one of the claims is objected, it does not mean that the rest of the claims are invalid. It is therefore important to make claims on all aspects of the invention to ensure that the applicant gets the widest possible protection.

And there are many rules and standard practices that a professional would be incorporating while writing claims for your patent application. In short,

“Claims should be written in such a way that they would not be invalidated in the litigation phase and they would not allow competitors to practice the invention without infringing on patented invention”

Just like claims, there are many rules and standards for writing other elements of patent specification like:

  • Detailed description of the invention
  • Diagrams, illustrations and images
  • Abstract
  • Field of invention
  • Background of the invention
  • Include references to cite
  • Title of the invention
  • disclosing best mode
  • covering all possible embodiments

and many more…

however discussing all the rules and regulation is outside the scope of this book and its outcome. Still if you are interested in reading them, below are the documents on government patent office website you can download and read…

How patent attorney works on your invention

when you think about near perfect patent application that properly protect your invention, there are few things a patent application should do:

  • The claims for invention written in appropriate manner such that claims are broad enough to stop competitors from working around the invention and at the same time claims are narrow enough not to be anticipated by existing prior art
  • Describing the invention in enough detailed manner such that the person skilled in the art should be able to understand and practice the invention, that is it should be enabling description of the invention.
  • all possible variation and embodiments of the invention are covered.
  • claiming the invention in such a way that it will survive not only prosecution (that is till the grant) but also it will survive the litigation phase (after the grant). And licensing phase (that is making money with patented invention)
  • describing the best mode of practicing the invention
  • and in case you (inventor) decides to go for foreign filing a patent application should be able to facilitate foreign filing/ international filing.
  • and of course the patent application should be following all the rules and laws about how patent application should be written as required by patent law.

based on all of these input the patent attorney creates the final draft of the patent application along with the drawings to be reviewed by inventor. And upon receiving the final draft of the patent application you (inventor) should review it line by line keeping in mind the scope of your invention that you want to be protected.

all the corrections that is adding information removing information or editing existing information is to be done with track changes enabled document editor, search that your corrections would be appropriately grasped by patent agent or attorney. and after considering suggestions and changes the patent application is ready to be filed in patent office.

Preparing Patent application - Patent drafting or patent writing

About 

Registered Patent Agent India (IN/PA 2352) with bachelors degree in electronics and telecommunication engineering. Working in patents and IPR field since 12+ years. associated with leading Intellectual Property firms in India Successfully helping inventors and businesses in securing their Intellectual Property Rights (IPR) including Patents, Trademarks, Designs & Copyrights along with Contract & Commercial Matters.