Patent Drafting: Everything You Need to Know
What Is Patent Drafting?
Before we dive into the basics of patent drafting, let’s first understand what a patent is.
A patent is a techno-legal document that gives rights to an applicant in exchange for full disclosure of an invention. The patent rights prohibit others from making, using, selling, or importing the patented invention without the consent of the patent owner. The journey from an idea of an invention to active patent rights is a long, and a rather a skillful journey.
One of the main requirements for an invention to be eligible for a patent is that the invention must be new. In other words, the invention should not be available in public domain in any form, such as oral, written, audio, videos, or the like.
Different Searches(novelty search and state of the art search) are conducted with different features of the invention to gain information regarding potential novelty, and in some cases potential non-obviousness, of the invention. After the inventor believes that novelty is established, the next step to an active patent is skillful patent drafting.
Table of Contents
Patent drafting is a process in which a patent application is prepared describing various features of the invention and detailing the technical effects and advantages of the invention. The main parts of a patent application generally include specifications and drawings.
The specification consists of different sections such as Title, Background, Object, Summary, Brief description of drawings (if any), Detailed description, Technical advantages, Claims, and Abstract. Patent drafting is a vital skill which decides fate of a patent application. A well-drafted patent application is likely to get a grant in a shorter time and without many objections from the Patent Office.
On the other hand, a poorly drafted patent application may result in extended examination, unnecessary expenses, and waste of time. In some cases, a poorly drafted patent would not be converted into a patent and would be rejected by the Patent Office. Hence, it is important for an inventor to provide care and attention to patent drafting.
At the end of the patent drafting process, we get a patent application which can be filed before a Patent Office. Attention should be given while drafting the patent application so that the patent application clearly explains the invention and covers all aspects of the invention.
The scope or outline of the invention for which protection is sought is decided by the claims. Even though various features are explained in the description, if a feature is not claimed, then that feature cannot be enforced. Hence, it is very crucial to have a patent application with a well-drafted set of claims which can result in maximum ROI for the inventor and/or applicant upon grant.
How Do You Draft/Write A Patent Application?
Basic Overview Of Patent Drafting Process
Now that we have understood what patent drafting is, let’s find out how to draft a patent. Patent drafting is a multi-layer process. Some basic layers are identifying an invention, segregating novel features of the invention, identifying technical contributions and advantages made by the novel features, combining the features so as to be represented as a whole invention, and drafting a patent specification.
Below are some points to take care of while drafting a patent application:
As a first step, it is important to identify an invention, and then
- identify novel features of the invention
- identify the distinguishing features on the basis of prior art search
- thoroughly understand the technical field to which the invention belongs.
Only a well-understood invention can result in a well-drafted patent application.
The patent specification should include explanation of all the features of the invention. A well-written patent specification includes enablement of the invention.
In other words, the patent specification should be prepared such that it includes complete information about the invention and best mode of working the invention, such that only by reading the specification, a skilled person should be able to understand the invention. Often, sketches and figures are utilized to explain the invention.
Hence, a full disclosure of the invention is required in the specification. Clear enablement helps a person to make and use the invention on their own after the patent term expires.
This helps in covering an appropriate scope of the invention for patent protection. It is highly recommended to take assistance of a patent professional or a patent attorney to discuss the scope of the invention. It is essential to include all features of the invention, however, in a manner that does not unnecessarily limits the scope of invention. The drafter may have some freedom to extend the scope of protection as far as such extension is practically possible with the invention.
Claims are the part of the specification which decides scope of the invention. Claims can be considered as the most important feature of a patent application. Claims should be drafted such that the scope of the invention is clear. While drafting, one should keep in mind that the claims must be fully supported in the description. In other words, whatever is claimed must be explained in the specification.
In most cases, a simple reiteration of the claims in the description should be avoided. Claims define the scope of protection while the specification explains the features in detail. These are, in fact, legal requirements under patent laws in various jurisdictions. Patent laws require the claims to be clear, concise, definite, and fully supported.
Lastly, it is important be up to date with revised rules and guidelines of patent application drafting provided by different jurisdictions for legal compliance and to avoid unnecessary prosecution extension. We, at TTC, follow specific steps while preparing a patent draft to prepare a high-quality patent application for our clients.
What Patent Drafting Is NOT?
It is very important to understand that a patent draft is a highly specialized document that needs in-depth knowledge of technology as well as patent laws of different jurisdictions. Hence, the patent draft is not a mere write-up or summary of the invention.
Another misconception is comparing a patent draft with a scientific paper. Research scholars generally think that a patent draft is similar to drafting a research paper that is published in different scientific journals.
It is very important to keep in mind that a patent draft is not a research paper. A patent draft requires different disclosures of different aspects of the technology in different forms (such as drawings, detailed descriptions, and claims) in order to get a granted patent.
Common Mistakes (Errors) with Patent Drafting:
Patent drafting is a vital skill which requires in-depth knowledge of different aspects of drafting of a patent application. As we know, the scope of the protection of the invention is decided by the claims, and the claims are enabled by well drafted specification.
Hence, it is very important to draft the patent application attentively. Below are some mistakes which should be avoided while drafting a patent specification for a high-quality patent application.
Flow is very important while writing. When one component or a feature is disclosed for the first time, then all the relevant features of that components have to be explained altogether.
Also, the specification should explain the invention with respect to a relevant drawing such that, while referring to drawing, the invention should be clear. Some poorly drafted patent specifications do not follow a proper flow while drafting the specification which often leads to incomplete and/or unclear explanation of the invention.
Introducing components at one place and explaining the same at other parts of the specification may make the specification unclear for a reader. Hence, it is difficult to read such patent application and fully understand the invention.
The term ‘language’ here is meant as the complexity or structure of the sentences used in the patent specification. Irrespective of the language in which the specification is drafted, i.e., English, German, French, or other regional languages, the patent specification should allow a reader to easily understand and interpret the invention.
This also helps patent examiners in patent offices to perform searches during examination. Sometimes, the inventors may use limiting terms based on the field of the invention, especially for the invention of Computer Science or Mechanical engineering.
A skillful patent drafter always takes care of such terms and uses more generalized terms. The main advantage of using the generalized terms is that the scope related to that feature may be broadened. It means that more embodiments for a single feature can be covered. Further, it may render the patent specification easy to understand the invention if generalized terms are used.
Many times, it happens that the invention is very complex and a very detailed explanation of different features of the invention is required. In such cases, for better understanding, a drafter needs to use many different components.
It may happen that due to a greater number of components, terms used for similar components may get interchanged. The drafter, in such cases, tends to mix-up the terms, which results in inconsistency in the specification and confusion while reading the specification.
This also gives rise to unclear scope of claims at certain extent. A skilled drafter always takes care of such precisions to draft a clear and well-understood specification.
This is a common mistake done at the time of drafting the specification. The drafter may tend to explain the invention with such specificity that they miss an opportunity to broaden the scope to a certain extent.
For instance, if plastic is used in the invention as a material for making a component A, then instead of keeping the scope open for other flexible materials such as silicon, the drafter focuses on claiming plastic only.
On the other hand, for getting broader protection, sometimes drafter tries to overly generalize a term as broad as possible and ends up in claiming non-novel feature.
For example, an invention uses series arrangement for rods in a mechanical structure, but the claims include parallel arrangement of the structure as well, which is already present in a prior art. Such practice may result in complicated and extended examination.
One more important factor is to have the claims well supported in the specification. This mistake is commonly seen when the inventor themselves draft a patent application. It is advisable for the inventors to take assistance from a professional rather than self-drafting the patent specifications.
In other cases, the specification contains only the claims in form of sentences. No extra explanation is given in the specification. This should also be avoided. The claimed features should be explained clearly so as to enable a skilled person to understand the invention.
Yet another mistake is improper explanation of accompanying drawing. It may also happen that some elements of the specification (for example some terms) are changed at a later stage of the drafting.
In such cases, it is important to check consistency of the drawings with the latest version of specification. Also, care should be taken while assigning reference numerals to the components so that all the components have different reference numerals
This mistake is common for young and enthusiastic inventors, who do not disclose all aspects of the invention. It is to be noted that a patent is granted in exchange of full disclosure of the invention. For any reason if the inventor does not include or share all details, then such patent application may result in complicated prosecution.
A professional drafter always knows what to ask to the inventor before drafting a patent application to avoid such scenarios during prosecution, and additionally, how to skillfully draft the specification to fulfill the enablement requirements and if possible, touch upon features which are not yet fully developed but would be required as and when there are improvements in the invention in future years.
As we know claims are the important part of the specification which decides scope of the invention, it is important to avoid mistakes while drafting claims as well. Some common mistakes while drafting claims are:
- Not Properly Worded
- Unclear & Indefinite
- Incorrect Antecedent Basis
- Inconsistency of terms
- Too broad or too narrow claims
Why do You Need to Know About Patent Drafting?
Drafting an application for a patent involves an exhaustive explanation of concepts and ideas that the inventor considers novel and inventive over existing ideas. Inventors may sometimes believe that a simple explanation of concepts and ideas would be sufficient for the patent application.
Drafting a patent application is much more than a simple explanation. Drafting involves analyzing what concepts have to be explained in greater detail than other concepts. Care has to be taken to not over-simplify the concepts. Care has to be taken to emphasize the details that are most important for explaining the functionality and/or configurations of the invention.
Claims form an important, if the most important, part of a patent application. Special attention has to be directed to not only what concepts are being written in the claims, but also to how the concepts have a written in the claims.
Interpretation of claim language is a point that many inventors get to know at a later stage, for instance during examination or litigation. Compliance with patent laws and rules is another important factor during drafting a patent application.
In explaining and claiming the invention without in-depth knowledge, the inventor may inadvertently arrive at a path leading to a too narrow scope of protection and/or problems in enforcing the patent against competitors.
These issues raise the need for awareness about patent drafting procedures and legal requirements and it is always a good idea to take assistance from a Patent Attorney and/or Patent Agents for patent drafting.
What Are the Parts of a Patent Draft?
As mentioned before, a Patent draft includes a patent specification which is filed before a Patent Office to get a patent grant. A patent draft explains the invention so that the invention is clear to a skilled person in the same field.
There are mainly two types of patent drafts. A provisional patent draft and a non-provisional or complete patent draft. The provisional patent draft is prepared when the main intention is to secure a priority date for the invention.
One major difference between a provisional patent draft and a non-provisional patent draft is that the provisional patent draft does not necessarily include claims. Claims filed only with the non-provisional or a complete patent draft are referred for examination and decide the scope of the protection.
A patent draft has different parts as discussed below:
- Field: This part generally discloses a field to which the invention generally relates. One example of the field is:
“The present disclosure generally relates to providing oral healthcare education. More specifically, the present disclosure relates to an apparatus and a system for providing oral healthcare education to visually impaired persons”
- Background: This part discloses existing devices or methods related to the field of invention, broadly known as Prior Art. Background generally discloses prior art and limitations or disadvantages associated with the prior art.
- Object: Object discloses the objectives of the invention. It generally lists distinguishing features and advantages of the invention for which protection is being sought.
- Summary: This part summarizes the main features of the invention to be claimed. The Summary also includes a broader explanation of the invention and briefly mentions the solution provided by the invention.
- Brief Description of Drawings (if any): If the invention includes any drawings, then this section includes a description of the drawing briefly such that a reader can get an overview of what could be disclosed by the drawing. The drawings are to be prepared in separate sheets as per different guidelines of different jurisdictions. The drawing sheets are filed with the patent specification.
- Detailed Description: This is an important part of the specification. The detailed description explains the different features of the invention in detail. Detailed description should be written such that a skilled person in the art can understand the invention solely after referring to this description.All claimed features and their interconnections, if any, need to be explained. In other words, all the claimed features need to be well supported in the detailed description.
Sometimes, the detailed description may also include examples for a better understanding of the invention. Moreover, the detailed description should disclose the best mode of working of the invention or one working example of the invention.
- Technical Advantages: This is the section that relates to technical advantages attained by the claimed invention generally and with respect to the prior art.
- Claim(s): Claims are the most important part of a patent draft. Claims decide the scope of the protection which would be awarded to the inventor when the patent is granted. Claims are broadly divided into two categories, independent claim, and dependent claim.Every patent draft or patent application must contain at least one independent claim. Claims tend to change in course of the examination. Hence, many times scope of the granted claims is different (narrower in most cases) than the originally filed claims. Claims have three main parts:
Parts of a Claim: Preamble, Transitional Phrase, and the Body
- Preamble: It is a part that sets the stage for the invention. For instance, the preamble gives a general idea about the field of the invention. Some examples of the preamble are as follows:
‘An apparatus for cooking rice’
‘A method for making tea’
- Transitional Phrase: Transitional phrase is a part that connects the preamble with the body of the claim. There are different transitional phrases, such as open-ended transitional phrase and closed-ended transitional phrase. Some widely used open-ended transitional phrases are “comprising,” “including,” and “containing,”.
These terms mean that the claim may “include the following elements but does not exclude others.” One example of an open-ended transitional phrase are:
‘An apparatus, comprising:
- a pencil.
- an eraser attached to one end of the pencil; and
- a light attached to the center of the pencil.’
This claim means that the apparatus may include other features apart from the listed ones.
One example of the closed-ended transitional phrase is “consisting of”. In this case, the claim covers ‘only’ the elements listed and nothing more. One example of the closed-ended transitional phrase is as follows:
- ‘An apparatus, consisting of:
- a pencil;
- an eraser attached to the pencil; and
- a light attached to the pencil.’
In this claim, the apparatus does not include anything more or less than the listed components.
- The Body: The body of a claim is the part that follows the transitional phrase. The body recites all the important elements of the invention and the interconnection or interrelation between the components. The body recites the limitations of the claim.
- Abstract: Abstract is a technical summary of the invention. The abstract gives a broader idea about the field and the use of the invention. Generally, the abstract should disclose the invention sufficiently to enable a person to perform a search for anticipation. The publication of a patent application includes publication of the abstract and representative drawing if any.
- Drawing: Drawings are part of the specification, however, they are prepared and submitted to the Patent Office in separate sheets. Different jurisdictions have different rules for allowable drawing sheets.
In the case of the invention related to a specific field, for example, In the mechanical engineering field, it is advisable to include different views and cross-sections of a device, a component, or an apparatus for clarity. Apart from the flow chart, drawings should not include any descriptive matter. Also, different components in the drawings should be numbered for a better understanding of the invention.
Apart from these parts, some patent drafts also include laboratory experiments or research data to clearly distinguish the technical effects of the claimed features over the prior art. These types of data are generally added at the time of showing the efficacy of a new substance.
Examples of Patent Draft
One example of a patent draft is shown below. The patent has been drafted for Xlscout which is integrated with innovation and scientific principles for patent analytics. for patent analytics.
In the patent draft shown, the following sections can be seen:
- Title
- Field of Invention
- Background
- Summary
Another portion of the patent draft is shown below in which the following sections can be seen:
- Brief Description of Drawings
- Detailed Description
Claims form an important part of the patent draft. In a patent draft, the claims are usually provided at the end of the Detailed Description. An example of claims can be seen in the below patent draft.
Patent Drafting for Beginners
Drafting a patent application involves a detailed explanation of the invention to be patented often with reference to associated diagrams and figures. Explanation of the invention is not the only aspect of patent drafting.
Patent claims form an integral part of a patent application since the patent claims define the scope of protection that the inventor will obtain once the application is granted and the invention is patented.
- Before starting with the drafting of a patent application, the draftsperson needs to establish a clear understanding of the invention. This may include requesting the inventor to provide details of the invention, such as in an invention disclosure document, analysing the documents for understanding the invention, and holding discussions with the inventor.
- The draftsperson may then proceed to draft the patent application. For beginners, it helps to have a roadmap of how they intend to explain the invention. Similar to describing a story, it is important in the patent application to have an idea about the order in which different concepts of the invention will be explained.
- In some cases, the draftsperson may find it preferable to draft a set of patent claims prior to describing the invention in detail. Drafting the claims allows the draftsperson to have a clear blueprint of the most essential features and less essential features of the invention and eases the process of describing the invention in detail.
- The draftsperson can then prepare rough sketches or make use of diagrams provided by the inventor. In reference to the diagrams, the draftsperson can start to explain the invention keeping in mind that the focus remains on the most essential aspects of the invention. The explanation generally includes the real-world problems that the invention aims to solve and detailed articulation of the various concepts of the invention.
Patent Drafting Cost
The actual cost of patent drafting will vary depending on various aspects. Some professionals charge a set fee for drafting the patent application while some professionals rely on hourly billing.
The cost of drafting a provisional patent application is generally lower than the cost of drafting a non-provisional patent application. Non-provisional patent application includes covering each aspect of the invention in detail, drafting a set of claims, and preparing formal drawings. Hence, the cost of a non-provisional application is generally higher than a provisional application.
The complexity of the invention may affect the pricing of patent drafting. Inventions with complex features and a large number of embodiment s would take much longer to draft. Moreover, it takes a lot of effort to draft a set of claims to not only broadly cover different embodiments under common claims but also to cover specific features of different embodiments in specific claims.
The cost of patent drafting also depends on the number of related inventions that the inventor desires to protect in a single application. Patent laws require that one patent application should be filed for a single invention. Sometimes, the inventor may want to provide details of multiple related inventions under a single application, and at a later stage, divide the single application into multiple applications.
In addition to patent drafting, inventors also prefer to avail of patent filing services together with patent drafting services. For filing the drafted patent application at the Patent Office, the official fee has to be paid to the Patent Office in addition to the professional fees. Please feel free to contact us for details of official fees charged by patent offices.
When to Draft Patents
Before we put the skills discussed above to use, it is very important to identify when to use those skills and when to draft a patent. For drafting a patent, it is crucial for the inventor to identify an invention. If the invention can be considered to bring disruptive innovation, an inventor can directly go through the patent drafting process.
If the invention is an incremental advancement, then it is important to identify novel features of the invention and the technical advantages they bring. A majority of the inventions fall into the category of incremental advancement.
For identifying an invention, it is advisable to have a detailed discussion with a patent professional or a patent attorney. A patent professional at this stage may ask the inventor a few questions.
A skilled and experienced patent professional knows which questions to ask to bring out the essential features of the invention. For a sample questionnaire, please contact us. During the detailed discussion, the patent professional helps the inventor identify the features on which a patent application should be focused.
After identifying the features, the inventor may opt for searching for prior art in the field before actually starting with the patent drafting process.
In some cases, the invention may be partially developed. To protect the date of invention, the inventor can choose to draft a provisional patent application. This would give the inventor the time to fully develop the invention and add details to the already drafted provisional patent application. In some cases, the invention may be complete, and no further development is intended. The inventor can proceed directly with a non-provisional patent application in such cases.
Conclusion
Patent drafting is an art to master. It is a process that requires utmost precision and presence of mind to cover the invention in a way that is beneficial to the client. It is important to be well-versed with continuously changing rules and guidelines of different jurisdictions.
We, at TTC, have experts who are highly skilled at patent drafting. From identifying the invention to well-drafted patent applications, we can help the inventors to get the maximum scope of protection for the invention so that the inventors can get maximum return on investment.
Our experts develop an in-depth understanding of the technical field of the invention. The expertise is in various domains such as Software, Communication, the Internet of Things, AI/ML, Electronic Circuits and Devices, Mechanical, Pharma, Chemistry, Network Security, Wireless, etc.
Our experts hold discussions with the client before initiating drafting to understand client requirements for different patent applications and prepare claims to protect all aspects of the invention.
Our in-house patent illustration team provide high-quality illustration as per the legal standards. Understanding the requirements of our clients, we suggest different paths that would be beneficial to the clients, such as PCT applications, continuation applications, divisional applications, etc.
FAQs
In the broad sense, the content of a patent draft is the same for different countries for the same invention. For example, details of the invention, the examples, and corresponding drawings may be kept the same for a patent application for different countries. However, a patent application differs based on national or regional guidelines. The formalities to be followed or the presentation of information may be different for different countries.
Patent rights are territorial rights. In other words, a patent is granted to be enforced in one jurisdiction. There is no international patent or ‘one patent’. The applicant has to file an individual application to each jurisdiction where protection is required. Some organizations grant a patent to multiple jurisdictions such as European Patent Office (EPO), African Regional Industrial Property Organization (ARIPO), and African Industrial Property Organization (OAPI), which grant a patent to the member states.
There are different aspects of a mobile application or a game that are patentable. These types of patent applications are patentable as Computer Implemented Inventions (CII) or Computer Related Inventions (CRI). Different patent offices, such as USPTO, EPO, and Indian Patent Office, have issued their guidelines for drafting and prosecution of such applications.
For instance, in some jurisdictions, the technical character of the mobile application or a game has to be shown, while in other jurisdictions, a practical application may be shown. A patent professional or a patent attorney can help the investor to draft a patent application in accordance with the guidelines.
World Intellectual Property Organization or WIPO is a platform provided by United Nations (UN) that helps the inventors to guide and protect their Intellectual Property, such as Patents, Trademarks, and Copyrights.
There are currently 193 member states. Patent Cooperation Treaty (PCT), governed by WIPO, is an international patent system that helps applicants with the filing of a single patent application in different member states in which the protection for the invention is sought.
A patent draft once filed before a Patent Office cannot be amended to include improvements. In other words, new matter cannot be added to a filed patent application. Hence, at the time of the drafting of a patent specification, it is important to include possible alternatives for different features of the invention.
It is however possible to protect improvements in the form of continuation-in-part applications and patent of addition applications A patent professional or a patent attorney can help the inventor to identify and include such alternatives.
Why TTC?
When it comes to performing invalidation search of any other IP search, a customer has various options. For example, one can get the search performed by an individual or an organization. Whereas an individual can only offer a limited expertise in a particular technology or IP field, an organization has various employees having abundant IP experience and diverse expertise in different technology domains.
Now when coming to organizations, again there are various choices available these days, and one should choose the best. TTC by all means is one of the best and renowned organizations in IP searching. And this did not happen overnight, TTC has an IP experience of almost two decades providing excellent and satisfying services to our consumers.
At TT Consultants, we apply intelligence to Intellectual Property (IP) globally. Our focus is to help clients solve their problems by providing useful strategies to them thus ensuring meticulous execution. We serve world’s largest companies, law firms, institutions, and several other IP fraternities. We help to monetize IP, defend IP litigation, lead innovation in industry and achieve most out of IP budgets.
We have various long-term clients who always choose TT as their go-to firm for diverse projects. We offer various services such as:
- Patentability Search
- Invalidation Search
- Freedom-to-Operate Search
- Landscape Search
- State-of-Art Search
- Infringement Search
We also specialize in patent portfolios, patent rankings, and technology landscapes. We further offer market research as well. We have specialized and expert teams for patent drafting, prosecution, office actions, etc.
TT Consultants is led by a highly experienced executive team committed to driving innovative solutions that deliver value to our clients. Our team comprises of 200+ experts in various technology areas such as electronics and communication, mechanical, pharma, biotech, life sciences, computer science, electrical, and many more. Also, we have more than 25 PhDs with diverse expertise in various domains. We have 60+ experts having more than 10+ years of experience in IP.
In addition to that, we have IP experts related to us from the US, UK, Taiwan, Japan, and Canada having vast IP knowledge. Few of our team members have also served as USPTO patent examiners, thus we provide you with the best of everything. Also, we have our own in-house tools, XLPAT and XLSCOUT where the merging of human and machine learning gives best results. Humanizing intelligence from machine learning is primary foundation of analysis, insights, and informed decisions.
Proprietary algorithms, using Artificial Intelligence and Machine learning, led to evolution of a machine designed to mimic behaviour of an expert searcher. Various data sets include Patent data, Non-Patent Literature, Standard Essential Patents, Litigation data, Corporate data, Reassignment data, and Examination data.