Patent Drafting

Explaining Functionality NOT as Helpful as You Think

The goal in a patent application is to provide a full, clear, exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants protection to cover. I covered this topic last week in Patent Drafting: Distinctly identifying the invention in exact terms.

Merely saying that you need to describe the invention in full, clear, exact terms is all well and good, I suspect that most conscientious do-it-yourself inventors are attempting to do precisely that when they prepare and file a patent application. Understanding the legal requirements facing you is the first step, but translating that into actionable information that will allow you to meet and exceed that legal requirement is another thing entirely.

Perhaps the best way to try to understand what you need to do is to consider some of the common patent application mistakes that inventors make when attempting to describe their inventions. Appreciating these errors and why they are mistakes, or at least not as helpful as you might think, will go a long way to arming you with the information you need.

Why do You Need to Know about Patent Drafting?

Collaboration between an attorney and the inventors is an essential part of the patent drafting process. It is imperative that the attorneys understand the invention in detail, all of its claims of usefulness, as well as what distinguishes it from similar existing products or processes. Failure in this area increases the chances of the application being denied by the United States Patent and Trademark Office (USPTO).

According to the USPTO, in one nine-year period, fewer than 60 percent of U.S. patent applications were recommended for issuance. Of those that were issued, only about 20 percent were ever commercialized. This statistic emphasizes the importance of having an experienced patent attorney with whom you have good regular communication.

How Do You Draft a Patent?

Initially, your patent attorney has you complete an invention disclosure contract. This allows you to communicate the information about your invention in enough detail for the attorney to understand the invention. At this time, your attorney begins drafting the patent application starting with the claims made about the design.

Once your attorney precisely captures the scope of the invention in the draft claims, the inventor or a draftsman begins preparing any required drawings to help further explain the claims. In some instances, the pictures depict existing inventions to make a proper distinction between those items and the innovation that you are applying for.

During the patent drafting process, there are many collaborative discussions between you, the draftsman, and the attorney. It is not unusual for the scope of the claims to change somewhat during this time. When these changes happen, it is likely an effort to further differentiate the new invention from existing ones. Changes could also be related to a new or broadened understanding of the invention or its uses.

Patent Drafting: Clear Writing Is Key

Some people struggle to write the simple and concise verbiage needed for patent drafting. The summary paragraph for a patent should encapsulate the entire invention. This kind of explicit writing zeroes in and gets to the point without any wordy elaboration. It requires removing all passive voice and finding the right phrases that express the idea while organizing the text in a way that states the information definitively.

When an application is difficult to read or understand, it hurts you, the applicant, in many ways. First, the more complicated the document is to read, the less likely it is that you will read the application thoroughly, and so you may miss errors and omissions. Too often the applicant gives up halfway through the document and skips ahead to the signature page. The result is an application that may or may not include what you intended.

Secondly, the patent clerk or examiner may not read the application. The examiner usually knows the claim extremely thoroughly. However, because this person only has a limited amount of time, the more time they spend trying to find or understand the claim language, the less time spent doing the actual patent searching. This results in a denial or possibly an allowance that is less thorough.

If the patent is ever litigated, a confusing draft can frustrate and annoy judges, juries, and other parties. A poorly written patent may also leave open doors for litigants on either side to interpret the language in an unintended way. This is costly for all the parties.

Example of a Bad Patent Draft

Traditionally, a good patent makes the claims of an invention in the broadest terms as possible. To be more specific, writing a good patent means identifying what the invention is about in terms of existing products and describing it in a way that meets the client’s goals. Identifying the “invention” given the existing or earlier product is not an easy task.

One typical example is the pop-tops found on soda cans. Years ago these cans had pull-tops that came off. The pieces that came off were typically sharp and known to cause injuries. The pieces, more often than not, seemed to find their way into lakes and streams where they caused damage to fish and other wildlife.

Eventually, someone came up with the idea of a pop-top that did not come off. I am certain he had a particular mechanism in mind, but the real contribution was more than the mechanism. The value of the “invention” was the idea of keeping top attached to the can. Unfortunately, the claim was not made as such. Instead, the complaint was that the invention required the tab to have a particular type of cross-section.

This example is one of thousand in which a bad patent draft gave too much of the wrong information and instead of creating an innovative and fruitful patent, resulted in an epic failure for the client inventor.

Frequently Asked Questions

  • Is it a good idea for an inventor to draft their own patent?
  • What about using patent drafting software?
  • I have a provisional patent. Do I need to draft another?
  • What is the deadline for filing a non-provisional patent?

Do you have a question about patent drafting? Post your patent or legal need on the Aristocrat Market Solutions to ask questions and receive advice and recommendations. Our patent attorneys have an average of 4 years’ experience.

Explaining Functionality NOT as Helpful as You Think


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