Say you are a patent drafter who is newly introduced to the vast world of ‘Patent Drafting’. Alternatively, you are a new inventor trying to saving cost by drafting a patent application. It can be daunting in the beginning but it’s just a matter of getting a hang of it with a bit of practice.
Patent drafting basically refers to drafting a patent application to describe an invention. If an inventor needs to apply for a patent, they need to draft a patent application. They then need to file the patent application with a patent office of a desired jurisdiction.
Patent drafting encompasses several technical and legal aspects. It requires years of experience and technical/legal know-how to master. Additionally, patent drafting rules and practices vary across jurisdictions and a patent drafter must be well-versed with these practices.
However, there are certain basic check points that that can be implemented to prepare high-quality patent applications. These check points can also be used to review a patent application as an inventor to minimize the chances of getting objections on patent applications.
1. Patentability requirements for effective patent drafting
There are usually 3 requirements for patentability for determining whether an invention can be patented. These patentability criteria include:
Novelty – refers to the invention being distinct from prior art
Inventive Step – refers to the invention being non-obvious over prior-art
Industrial Applicability – the invention should have an application in an industry or a technological domain (being useful)
When writing a patent application, a patent drafter should ensure that they focus on the first two patentability requirements (novelty and inventive step).
They need not be explicitly named as is but must be described in the patent application with thorough detail. Novelty and inventive step should also be brought out in the independent and dependent claims of the patent application.
The third patentability requirement – industrial applicability need not be explicitly described but it should be sufficiently clear that the invention can be employed in an industry or technical field. In fact, a mere mention of the field of the invention is sufficient.
2. Problem-Solution statement and technical advantages
A patent drafter must ascertain that they clearly describe the problem the invention solves, in the draft. Some patent offices strongly stress on explaining a technical problem that the invention solves and describing the solution to that problem. Additionally, the patent drafter should describe the technical advantages (a.k.a ‘technical effect’ in Europe or ‘technical advancement’ in India) in the patent application.
Even in jurisdictions where this is not a necessary requirement, such a description of problem and solution still helps Examiners understand the invention clearly.
3. Clarity in patent drafting
Most patent offices have clarity as a legal requirement for filing patent applications (e.g. refer section 10 of Indian Patent Act, Article 84 of European Patent Convention and 35 U.S.C § 112 of U.S.C). Even a minor term whose meaning is unclear can prevent an inventor from getting a patent granted. Therefore, it is important that the entire application should be clearly explained.
A drafter should avoid ambiguous usage of words and phrases. It is suggested that everything is explained in a simple manner instead of making it complex to understand.
In addition to the description, the drawings should also include clear diagrams and illustrations that are referred to and described in the written description. Patent drafters can use any patent drawing software for this purpose.
Additionally, it is imperative that the ‘claims’ should be clearly and concisely described because they form the focus of patent examination. The claimed matter should not only bring out the novelty and inventive step clearly but should also have sufficient detail to encompass the scope of invention.
4. Scope of invention
The scope of an invention implies the boundaries of the invention that need to be protected in the patent application. One can also view the scope as the breadth and depth of the invention. Logically, one should target covering maximum scope in a patent application.
While covering depth, a drafter should aim for explaining all details from a high-level or broad explanation to the core of the invention. While covering breadth however, one should focus on covering all variations (also called ‘embodiments’ in patent jargon) of the invention. One should try to visualize all possible work-arounds of the invention and capture them in the draft.
As a side note, inventors tend to sometimes cover only the prototyped variations. Since there is no such restriction in patent law, it is suggested to cover all variations and work-arounds regardless of whether they are implemented practically or are mere theoretically ideas.
One caveat that should be taken care of is that all the covered variations should collectively form a single inventive concept (also called as ‘unity of invention’). One should not try to cover several inventive concepts into a single patent application, which often leads to rejection of the patent application.
5. Cover each section of patent application during patent drafting
A patent drafter should avoid writing a patent draft like a long monotonous description without any sections. There should be different sections in a patent application as per legal requirements for various jurisdictions. A drafter should cover all such sections including field of invention, background, summary of invention, brief description of drawings, detailed description, claims and abstract. I will cover sone best practices to write these sections in a separate article.
6. Jurisdiction-specific requirements
Each jurisdiction has its own set of requirements and a same draft document may not always satisfy requirements for all desired jurisdictions. For example, India specifically requires one to add reference numerals in claims but you need not add them in USA. USA allows 20 free claims but India allows 10 free claims.
There are several such differences across jurisdictions. As an inventor, always check with your patent attorney or agent whether your draft meets such requirements if you’re filing in more than one jurisdictions. You can optimize your patent filings and costs to a great extent on being vigilant about them.
7. English usage/Typographical errors
Once the above points are taken care of, the drafter should proof-read the entire draft and check for any grammatical errors or inconsistencies. Resolving these errors before filing eliminates any chances of objections related to indefiniteness and can also reduce prosecution costs in the long run.
Although the above points provide some guidelines for writing great quality patent applications, there are many more intricacies involved in drafting patent applications. Hiring a good patent attorney or a patent agent can be a great investment to this effect.
Disclaimer: The above points are only suggestions and my personal view. They are not recommendations and I am not responsible for the outcome of any patent related matters. Please consult a patent attorney before taking any action based on the above suggestions.