Maximizing Your Impact: How to Review Patent Drafts & Give Constructive Feedback

February 2, 2023
- Patent Drafting & Illustrations
- Patent Prosecution

Money saved is money earned. Agreeing with this statement, one has to make an emergency call when it comes to filing a draft patent application to a patent office (USPTO, in the case of US patents). The patent application is a legal document that needs a great deal of time to be drafted by a drafter or patent attorney. Any inaccuracy, i.e., textual or numerical errors in the application may invalidate or raise 112 rejections (in the case of US patents). Although an inventor/patent attorney may file a “certificate of correction” to the USPTO, it costs them extra money and time. Usually, to obtain a patent, patent attorneys or inventors have to deal with two things other than the novel idea, namely time and money. If it took too long to file a patent, then there is a possibility that you may lose your idea/invention to someone else who has filed before you, under the First-to-File act. In patents, extending a date is never a good idea. Similarly, filing a false or erroneous patent application has its own consequences, such as facing multiple rejections and thus requiring more money as a penalty. Remember! Money charged by the patent office is directly proportional to the time consumed on the patent during its examination.

To combat the above problems, patent attorneys or inventors must ensure that their patent application is error-free before filing it to the patent office. Patent attorneys are known to be legal experts, while inventors are technical experts of inventions. Thus, the inventors are not aware of the reviewing process of the drafted patent application and cannot formulate constructive comments in a form understandable to the drafter/patent attorney for any corrections or errors present in the application. So, what is the solution here?

This is where a reviewer with technical as well as drafting knowledge comes into the picture to bridge the gap between the drafter/patent attorney and the inventor. An accurate review and meaningful comments can help the drafter to draft a better patent application. Reviewing the patent application draft means having an eagle eye on every detail associated with the patent, i.e., Title, Abstract, Background, Summary of the Invention, Brief Description of the Drawings, Detailed Descriptions, Claims and Diagrams, and providing a suitable document with useful comments to your drafter/patent attorney.

A good reviewer can make good comments. Believing this, let us provide you with some review strategies against different sections of patents in ranking order, which can help you to achieve the purpose:

Detailed Description and its reviewing tips

The detailed description requires most of your attention and technical knowledge while reviewing utility patent applications. This section must include factual and accurate information, therefore any inclusion of errors in invention benefits, experimental data, scientific data, formulas, or numbering of labeled diagrams – just to name a few – could raise 112 rejections. The drafter/reviewer should keep in mind that the inventions are patentable and not the idea. For example, a patent application for “a car turning into a humanoid robot” that does not disclose “how the car actually turns into a humanoid robot” will not award you the patent. So, the patent application must provide the solution of “how the car turns into a humanoid robot” and its complete process. Therefore, the detailed description of the utility application must be written in such a way that a person having adequate automotive and robotic knowledge could make or manufacture “the car that could turn into a humanoid robot” as described in the patent application without any unnecessary experiment, under the Enablement Requirement Act.

The reviewer should check if the diagrams are correctly numbered and properly demonstrated in the detailed description. Further, this section may include more than one embodiment and their respective advantages, described in a manner of practicing the invention. However, the reviewer should ensure that none of the embodiments is diverting the invention or indicating any other invention.
The use of multiple terminologies to address the same thing throughout the invention can lead to unnecessary confusion and thus can be avoided. For example, if a term such as cover, case, protecting entity, housing, shield, guard, etc. is used at various places to denote a smartphone cover, either define it at the beginning of the detailed description or avoid such practice.
Lastly, check if there are any spelling, grammatical, or punctuational syntax errors, and correct them if present before filing the patent application to avoid any future dilemmas.

Patent Claims and how to review them?

Another important area where the reviewer needs to be cautious is when reviewing the claims of the patent application, as it defines your scope of legal rights to serve different objectives. It is drafted in the light of the detailed description, without deviating from it. The claim set consists of independent claims and dependent claims, where independent claims cover broad features of your invention, while dependent claims support the independent claims and recite some additional features. As a result, dependent claims are narrower than independent claims, meaning that the dependent claim cannot be infringed without infringing the independent claim.

While reviewing, the reviewer should ask himself/herself whether the claim drafted is covering the invention, keeping the broad and narrow scope of claims in mind to achieve the maximum benefits. Then, ask about the novel and obvious features of your claims that are the heart of your patent application to achieve those benefits. If you are the reviewer and not the inventor, it is strongly recommended to keep the inventors engaged for this section.

Brief knowledge of how to review the Diagrams

“Image speaks louder than words”, keeping this in mind, diagrams are used in utility patent applications to simplify the complexities and make it easy to understand and practice. The diagrams go in sync with the detailed description, so the placement, numbering, and labeling of diagrams should be checked properly before filing the application. Diagrams do not hold your rights in the utility patent, but claims do, so you can add any number of diagrams, however, avoid including any irrelevant figures in the patent application.

Similar to utility patents, the diagrams in a design patent define your rights or the scope of your claim. One has to be extra cautious while reviewing design patents because all they contain are diagrams.

Summary of the Invention and its review process

As the name suggests, this section briefly summarizes the general concept of your patent application. This includes key features that are part of your utility patent application, however, it may not include every feature or embodiment. If you encounter any discrepancies in this section, point it out to your drafter or patent attorney.

Other section: Abstract, Background, and Brief Description of the Drawings

The abstract is a smart explanation of the patent application in very few words. The reviewer should verify the maximum length of the abstract, as it should be between 50 and 150 words (if it is in English or translated into English), as per 1826 The Abstract-USPTO. It is suggested to draft or review the abstract after drafting or reviewing the complete patent application.

A term such as “prior art” does not find an ideal venue in the background, so refrain from using it here. Providing low details of prior arts is always considered good otherwise it can be used against you. The reviewer must verify the shortcomings of the prior art provided in the background and mention it wisely to avoid any Applicant-Admitted-Prior Art (AAPA).

A brief description of the drawings just briefly describes the figures used in the patent application. It does not require much effort to review, or you can simply leave it to your patent attorney or drafter to review.

Go through how to make useful comments for your draft patent application.

It is recommended to use a Word document for reviewing and making any comments for any section of the draft patent application. Enabling the “Track Changes” feature of the word document allows the drafter/patent attorney to easily distinguish newly added words in the patent application as the newly added words are highlighted while the deleted words are still visible with a strike-through. Furthermore, a reviewer can add comments in the word document to specify any change, and a patent attorney can review and provide feedback.

To edit diagrams, use an arrow and text boxes of different colors to make any comments for any corrections to the diagram. To avoid any mid-way changes, convert the corrected diagrams to PDF format before sending them to the drafter or patent attorney.

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