Patent drafting refers to writing a patent application to apply for a patent. To write a patent application, you need to consider certain factors that can result in a well-structured patent application. The importance of good patent drafting should not be underestimated. Whether a patent application results into a patent grant or not, is largely dependent on the merits of the invention, a well-written non-provisional patent application goes a long way in contributing to receiving a patent grant. Conversely, an invention with high merit but a loosely written patent application may not always result in a patent grant. Therefore, as a patent drafter, you may want to ensure that the patent application includes a high quality draft.
There are numerous courses available on patent drafting but if you want to write a patent application, I have covered some best practices on patent drafting below before you jump on to any paid courses. I suggest reading this article and practicing patent drafting to improve your writing skills. To make the approach simpler, I have also covered the various contents in a sequence which can be followed while writing.
Step 1: Analyze invention disclosure form/invention details
The first step in patent drafting is to get the detailed invention disclosure from the inventors. You should thoroughly review the disclosure, understand the inventive concept, implementation details, technical advantages of the invention and so on. If it is possible to discuss the invention with the inventors, schedule a call or meet in person and have a detailed discussion with the inventor(s). Do not hesitate to ask several but relevant questions to get all details on the invention and ask for more details, if required. Also, encourage inventors to provide multiple drawings illustrating various aspects of the invention.
Step 2: Write claims for the patent application
Once you have a thorough understanding of the invention, figure out the scope of the invention that needs protection. List down the essential and non-essential features of the invention that need to be included in the claims. For convenience, I suggest preparing a detailed flowchart for a process/method and a block diagram for a device/apparatus/system that need to be claimed. Doing so provides clarity on what exactly should be claimed.
Further, figure out the essential features and write independent claims by including these features (an essential feature is any feature without which the invention cannot work). You can refer to the flowchart/block diagram you created earlier and select these essential features from that flowchart for formulating the independent claims. Do ensure that the independent claims are kept broad but simultaneously also capture the inventive step.
Moving further, the remaining features in the flowchart/block diagram that were not included in the independent claim can now be included in the dependent claims. Refer the flow chart and block diagram step-by-step and try to include as much detail as possible around the important aspects, in the dependent claims. Also, try to include several work-arounds to these aspects in the dependent claims. You should avoid adding subject matter to dependent claims just for the sake of increasing the number of claims but instead, try to add meaningful and inventive subject matter as far as possible.
As a side note, you may want to optimize patent cost in India or elsewhere by checking the number of free claims allowed in your preferred jurisdiction. For example, USPTO allows filing 20 claims including 3 independent claims without any fee while Indian Patent Office allows 10 free claims with no restriction on the number of free independent claims (the excess claim fee in India is significantly lower than in US though). If cost is a primary (or at least important) consideration, you may want to limit the number of claims in the patent application, as per the number of free claims allowed.
Step 3: Create Drawings
The next bit is to create the drawings. Drawings should be included in a separate document. You should include drawings illustrating various facets of the invention in the form of flowcharts, block diagrams, prototype or product views, hardware layouts and so on. Once you have included all drawings in the document, check for formal requirements such as page margins, position of signatures, sheet numbers and so on, for the preferred jurisdiction and address these requirements in the drawings document.
Once step 2 and step 3 are completed, you may want to get the claims and drawings reviewed from the inventors/client to avoid excessive changes after the specification is written.
Step 4: Write a patent application description
Moving on, let us proceed to the lengthier part of the patent application— description writing.
Divide the description into the following sub-sections:
- Field of the invention
- Summary of the Invention
- Brief description of drawings
- Detailed description
Let’s look at how to write each of these sections:
Field of the invention
Field of invention refers to the technical domain of the invention. If you have read this article, I mentioned a concept of industrial applicability as a criteria for patentability. This section also addresses this criteria by clarifying the technical domain in which the invention is applicable.
Background section refers to the prior art available in the technical domain of the invention. The purpose of this section is to describe the conventional technologies/solutions available in the domain of the invention and the challenges/problems with the convention technologies.
As a drafter, try to very briefly discuss the closest prior art (do a prior art search if required) available in the domain by discussing only the relevant details. The objective should be to build a foundation that logically leads the writing flow to the problems/challenges associated with the prior art (that resulted in the invention) and end the background section at the problem statement — do not mention anything about the invention in this section.
There is no fixed length of the background that is recommended but I suggest keeping the background as short as possible. Remember that Examiner can always find text from the background and cite it as “Applicant Admitted Prior art” during patent prosecution. Therefore, it’s best to keep the background short and concise.
Summary of the invention
As the name suggests, this section is a summary of the invention. You should keep this section too concise and clear. Avoid writing too many details since the objective of this section is to help a reader quickly understand the invention and to give an overview of the invention. The reader should not get confused with too many details (save them for the detailed description).
I would also suggest keeping the language of the summary as close to the claim language as possible. This also serves as written support for the claimed subject matter and help overcoming support-related objections during prosecution. In fact, some attorneys I have worked with even copy-paste the claimed subject matter in the summary section for this purpose.
Brief description of drawings
This section introduces a brief description of each drawing. All you need to do is just add a one-liner about each drawing and we’re good to go to the next section.
This section forms an important aspect of the patent application because it is interpreted in close coherence with the claimed subject matter. This section should thoroughly cover the length and breadth of the invention. I suggest taking the drawings and claims as guideposts and aim to describe each aspect represented in drawings and covered in the claims. This way, you can ensure that all claimed subject matter is described in the specification and all aspects of drawings are referred to and described without missing out on anything.
Another aspect to consider apart from describing the details is to thoroughly describe the novelty and inventive step of the invention. Additionally, while you do so, try to articulate how does the inventive step address the problem that was mentioned in the background section. Take this a step further by also articulating the technical advantages that are realized from the inventive step of the invention.
Further, for each and every step of the invention, try to cover as many variations/work-arounds as possible as a part of different embodiments. You should try to visualize any possible work-arounds for all aspects (no matter how minor they may be) of the invention that a third-party may come up with. Apart from making the draft exhaustive, these aspects also provide fallback options for claim amendments during patent prosecution.
If your invention is software-based, ensure that you also describe the hardware or physical structure required for the invention. This is because in several countries, software alone is not patentable. The specific hardware structure should not be added just for the sake of adding hardware/physical structure but should be shown and described as an essential requirement for the invention to work. It should be closely integrated with the software. The hardware itself need not be new but should be essential for the invention to the work. Try to describe these hardware/structural components in detail and also how each of these structural components performs different steps of the software.
The more exhaustive, clear and articulate the description section is, higher are the chances of the patent application surviving the patent prosecution cycle to get a grant.
The abstract helps a reader understand a brief overview of the invention. It is a bit less detailed than the summary of the invention. While drafting, ensure that you confirm the allowed word limit of the abstract. For example, in India, the allowed word limit is 150 words, failing which, one can receive an objection. Once the Abtract is completed, just append the claims to the above-described description section and then, append the Abstract in the end in the same document. This document along with the drawings form your patent application draft.
I hope the above explanation would help you create a great patent application. I would also suggest you to be mindful of the jurisdictional patent laws before filing the patent application. Additionally, you may want to check this article (linked above as well) that covers additional tips for increasing the quality of your patent application.
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Disclaimer: The above article merely provides suggestions to write a patent application and the author does not take any responsibility on the outcome of a patent application written based on the above suggestions. Please ensure that a patent attorney or a patent agent is consulted for a review before filing a patent application.