Patent Drafting

Patent Drafting is the term lawyers use for writing patent applications. Patent applications are the long, written documents which describe whatever the invention is that is sought to be patented. Because the patent application will determine the invention’s patentability, patent drafting is important.

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Quality Patent Drafting Is Important Because The Patent Application Is All The USPTO Can Judge By

Patent drafting is important because the United States Patent and Trademark Office (“USPTO”) makes its determination as to whether or not (and to what extent) an invention is patentable based solely on the disclosure provided to it: the patent application. If an aspect of an invention is not adequately disclosed in the initial application, rights to that aspect may be permanently lost.

Consequently, drafting patent applications in a manner that thoroughly discloses the invention, anticipates and accounts for common issues in examination (and beyond), and complies with all statutory requirements that impact rights is crucial. Low quality patent drafting can result in a patent that is worthless.

The U.S. Patent Examination System Is Designed To Produce Uniform Results

Although on its face much of this may seem designed to work against small businesses or individual inventors, the reasoning behind it is actually far more banal. The system is designed to produce uniform results across a wide range of technologies and an enormous volume of applications. From this perspective, the extent of its nuance is actually beneficial.

The complexity of the U.S. patent system is a feature, not a bug. With sufficient knowledge of its intricacies, no business is too small to benefit from the nuance.

Patent Drafting is Important Because the Examination of Patent Applications is Rigid

Examination of patent applications for patentability is an extremely rigid practice. Given the importance of uniformity in applying complex laws and relatively abstract concepts across the entire range of technology known to man, this rigidity is not surprising. Unfortunately, as a consequence, it is very possible that an otherwise patentable invention may be denied a patent based solely on inadequacies in the form or content of its disclosure.

The Reasons That A Patent Might Be Denied Stem From United States Federal Law

Patent rights stem from the United States Constitution (Article I, Section 8, to be precise) and are expanded upon by United States Federal Law (Title 35 of the United States Code). Consequently, rejections for the grant of a patent are statutory. Typically, these rejections manifest as rejections under one of 35 U.S.C. § 101, 35 U.S.C. § 102, 35 U.S.C. § 103, and/or 35 U.S.C. § 112. However, patent applications may be rejected under other statutes.

U.S. StatuteCommon Reason for Denial
35 U.S.C. § 101Patent ineligible subject matter
35 U.S.C. § 102Invention lacks novelty
35 U.S.C. § 103Invention is obvious
35 U.S.C. § 112Form of disclosure is non-compliant
The most common reasons for a patent application to be rejected are for patent ineligible subject matter pursuant to 35 U.S.C. § 101, lack of novelty under 35 U.S.C. § 102, obviousness per 35 U.S.C. § 103, and inadequacies in form via 35 U.S.C. § 112.

In their text, each of 35 U.S.C. § 101, 35 U.S.C. § 102, 35 U.S.C. § 103, and/or 35 U.S.C. § 112 sets forth certain requirements for patentability. These requirements are elaborated further upon in our overview of patent prosecution. Forward thinking entrepreneurs can get ahead of common problems by accounting for them beforehand with quality patent drafting.

Patent Drafting: Provisional Applications vs. Non-Provisional Applications

There are two types of patent applications that one might file: provisional applications and non-provisional applications. Generally, when patent lawyers talk about patent drafting, they are referring to non-provisional applications.

Provisional Patent Applications Can Be Converted to Non-Provisional Applications, So Patent Drafting Strategy is Important

There are several reasons that references to patent drafting among patent agents and attorneys are often to non-provisional applications. For one, filing of a non-provisional application will ultimately be required in order to procure patent rights, so advice regarding non-provisional applications is the most broadly applicable. Several patent drafting strategies are based around this, strategically incorporating certain elements at specific points.

A second reason that references to patent drafting are often to non-provisional applications is the lax formatting requirements for provisional applications. The requirements for provisional applications do not preclude filing as a provisional a full-blown non-provisional.

In a certain sense, advice which applies to drafting non-provisional applications also applies to drafting provisional applications in many situations. Because suggestions which are more broadly applicable yield more bang for the buck, drafting references to non-provisional applications are more common.

Provisional Applications vs. Non-Provisional Applications: A Quick Overview

The above notwithstanding, there are important differences between provisional and non-provisional applications. Different intellectual property strategies can make beneficial use of the unique properties of each. Therefore, it is worthwhile to be at least superficially familiar with both.

Side-by-side Comparison of Several Important Aspects of Provisional Patent Applications and Non-provisional Patent Applications From a Patent Drafting Perspective

At the most basic level, the difference between a provisional patent application and a non-provisional patent application is that provisional applications are less formal. As this distinction is by far the one most commonly repeated by those who work in the field, it is likely that here is not the first or only place it will appear. But why is this phrase so common, and what does it mean?

Provisional Patent Applications Can Contain Pretty Much Anything The Filer Can Dream Up, Without Regard for Form

The reason provisional patent applications are so commonly distinguished from non-provisional applications by contrasting the formality of each is that provisional applications can contain pretty much anything, making other distinctions only situationally applicable.

Whereas non-provisional patent applications typically trend towards a particular format in preventative anticipation of certain pitfalls that arise commonly during examination, provisional applications are not subject to examination and thus do not need to be in such a format.

Additionally, provisional applications are not statutorily required to contain certain elements that non-provisional applications must contain. Though perhaps mundane on its face, this distinction has yielded several patent drafting strategies for provisional applications.

Strategies for Drafting Provisional Patent Applications: A Brief and Far From Complete Overview

Like a well fitting suit jacket, a good lawyer covers your ass. Having watched the evolution of patent law in the courts, patent lawyers have found certain problems to frequently occur. As a result, several dominant strategies for drafting provisional patent applications have emerged.

A side-by-side comparison of "The Omnibus Provisional," "The Let Me Think On It," and the "Non-Provisional as Provisional," presented to demonstrate the types of considerations which may be beneficial in determining a patent drafting strategy.
A side-by-side comparison of “The Omnibus Provisional,” “The Let Me Think On It,” and the “Non-Provisional as Provisional,” presented to demonstrate the types of considerations which may be beneficial in determining a patent drafting strategy.

This article proceeds to describe three such provisional application patent drafting strategies. We have named them “The Omnibus Provisional,” “The Let Me Think On It,” and the “Non-Provisional as Provisional.” These names are our own, and are in no way official. Additionally, these strategies do not encompass all patent drafting strategies: there are infinitely many more. Instead, these strategies are presented to demonstrate the types of considerations which may be beneficial in determining a patent drafting strategy.

Provisional Patent Applications Can Be Used As A Placeholder For Patent Rights, Preserving The Effective Filing Date For Up To One Year

Many of the above noted strategies revolve around the benefits that provisional applications impart to subsequently filed non-provisional applications. One of the most notable such benefits is that the date on which a provisional application is filed may be used to obtain certain additional rights in non-provisional applications that are based upon the earlier filed provisional application.

An Important Benefit of Provisional Patent Applications is that Non-Provisional Applications May Claim Their Benefit Within One Year of the Provisional Application’s Filing Date

Importantly, non-provisional applications filed within one year of the provisional application on which they are based can claim as their effective date the filing date of the provisional application. While this may appear unimportant on its face, such a claim can make the difference on whether an invention is patentable.

That Non-Provisional Patent Applications Filed Within One Year of the Provisional Application Upon Which They Are Based Can Claim As Their Effective Date The Date Of The Provisional Application Is So Important That We Have Intentionally Disrupted The Flow Of This Article So That It Stands Out

Again for those in the back: non-provisional applications filed within one year of the provisional application on which they are based can claim as their effective date the filing date of the provisional application. This sounds meaningless, but it is incredibly important. Got it? Awesome. Let’s move on.

Below, three provisional patent drafting strategies are overviewed. Keep in mind that this list is far from exhaustive, and that many other strategies exist. The names used to describe these strategies are our own, and may or may not exist outside of this article: we made them up.

How to best go about obtaining patent protection is a decision that turns on the details, and should not be made based solely on a single online article (even one as good as this!). Rather, competent patent strategy should be based on a synthesis of multiple perspectives, potentially including the foregoing. This article is only intended to get the proverbial juices flowing.

Provisional Patent Drafting Strategy I: The Omnibus Provisional Application

Visual Representation of the "Omnibus Provisional" Provisional Patent Drafting Strategy
Visual Representation of the “Omnibus Provisional” Provisional Patent Drafting Strategy

One common strategy for provisional applications involves drafting a single large, comprehensive disclosure of every conceivable aspect of the invention sought to be protected, and then filing it as a provisional application. Because non-provisional applications are limited by statute to direction towards a single unified invention, this strategy allows an inventor to obtain a filing date for what will eventually become multiple non-provisional applications while paying a single initial filing fee.

The Omnibus Provisional Application Strategy Entails Filing A Large Disclosure As A Provisional And Then Breaking It Up Into Non-Provisionals As Necessary One Year Later

Per this strategy, the omnibus provisional application would be split into multiple non-provisional applications upon the expiration of one year from the filing date of the omnibus application. Consistent with the patent laws, each non-provisional application would claim a patentably distinct component/sub-invention disclosed in the omnibus provisional.

The Omnibus Provisional Application Strategy May Be Useful To Those Looking To Defer Substantial Costs Pending An Anticipated Cash Influx

This omnibus provisional strategy may be useful where cost deferral is beneficial. Per this strategy, the fees for filing, drafting, and prosecuting multiple non-provisional patent applications can be deferred for one year (at which point it must become a non-provisional or will be abandoned).

A side-by-side comparison of "The Omnibus Provisional," "The Let Me Think On It," and the "Non-Provisional as Provisional" highlighting the "Omnibus Provisional" patent drafting strategy strategy.
A side-by-side comparison of “The Omnibus Provisional,” “The Let Me Think On It,” and the “Non-Provisional as Provisional” highlighting the “Omnibus Provisional” patent drafting strategy strategy.

Clients who may benefit from the omnibus provisional strategy include early stage start-ups with limited funds who anticipate a cash influx within a year, venture backed companies between rounds of fundraising, and larger/further along companies simply looking to defer costs to a more profitable quarter. For certain technologies and/or business models where international protection is important, this strategy may be adapted to accommodate foreign filings.

Provisional Patent Drafting Strategy II: The “Let Me Think On It”

Visual Representation of the "Let Me Think On It" Provisional Patent Drafting Strategy
Visual Representation of the “Let Me Think On It” Provisional Patent Drafting Strategy

The “Let Me Think On It” is a provisional patent drafting strategy which entails filing a comprehensive disclosure of the invention in a format that will require substantial modification to comply with non-provisional filing requirements, and using the one year period for non-provisional filing to decide how to proceed. After one year, it is time to either file a non-provisional based on the provisional application or abandon the invention.

Those Who Are Unsure of Whether To Proceed With a Full-Blown Non-Provisional Patent Application May Benefit From the “Let Me Think On It” Strategy

As the “Let Me Think On It” strategy entails a comparatively lower up front cost than other patent drafting strategies, it is well suited to those looking to preserve potential patent rights while still deciding how (if at all) to proceed. For example, an individual inventor deciding whether to throw his hat in the entrepreneurial ring for the first time may make beneficial use of this strategy, as might a company with an existing patent portfolio who seeks to preserve potential rights while working through the business case for patent protection.

Because Of Its Intentional Sparsity, The “Let Me Think On It” Comes With An Increased Risk of Omitting Important Details, Which Could Impact Patentability Down The Line

While the “Let Me Think On It” provisional patent drafting strategy comes at a low(er) cost up front (in some instances, a detailed PowerPoint presentation or inventor’s log may be sufficient to file almost as-is), it may come with the trade-off of higher conversion costs if/when a non-provisional application is ultimately filed.

A side-by-side comparison of "The Omnibus Provisional," "The Let Me Think On It," and the "Non-Provisional as Provisional" highlighting the "Let Me Think On It" strategy.
A side-by-side comparison of “The Omnibus Provisional,” “The Let Me Think On It,” and the “Non-Provisional as Provisional” highlighting the “Let Me Think On It” strategy.

Additionally, because non-provisional applications may claim benefit only to that subject matter which was disclosed in the provisional, such a manner of disclosure creates the risk of omitting important details, which could potentially affect patent rights. Thus, as with anything, it is important to weigh the risks and benefits of this strategy.

Provisional Patent Drafting Strategy III: The “Non-Provisional As Provisional”

Visual Representation of The "Non-Provisional as Provisional" Provisional Patent Drafting Strategy
Visual Representation of The “Non-Provisional as Provisional” Provisional Patent Drafting Strategy

As its name suggests, the “Non-Provisional As Provisional” strategy entails drafting an application that meets all of the requirements for non-provisional filing, and then filing the application as a provisional. Per this strategy, additional details might be added about a month before the filing of the non-provisional, though no new matter can receive the benefit of the provisional filing date. Thus, the non-provisional application is submitted substantially in the same form as its provisional counterpart.

The “Non-Provisional as Provisional” Is A Middle-of-the-Road Patent Drafting Strategy Which Allows Deferral Of Some Costs While Requiring Certain Others Up-Front

The “Non-Provisional as Provisional” patent drafting strategy allows the applicant to defer the cost of patent prosecution, which can be substantial. In contrast to the above-described “Let Me Think On It” strategy, per the “Non-Provisional as Provisional,” the cost of patent drafting is largely borne up-front.

A side-by-side comparison of "The Omnibus Provisional," "The Let Me Think On It," and the "Non-Provisional as Provisional" highlighting the "Non-Provisional as Provisional" patent drafting strategy.
A side-by-side comparison of “The Omnibus Provisional,” “The Let Me Think On It,” and the “Non-Provisional as Provisional” highlighting the “Non-Provisional as Provisional” patent drafting strategy.

Of the three provisional patent drafting strategies described herein, “Non-Provisional as Provisional” is often considered the Goldilocks-ian “just right” middle, because both its risk profile and cost are balanced relative to its counterparts. This is because the provisional application itself is drafted to be comprehensive, with the intent of making only minor changes before converting it to a non-provisional a year later.

The “Non-Provisional as Provisional” May Be Well Suited To Those Looking To Balance Risk Aversion With Cost Deferral

The “Non-Provisional as Provisional” patent drafting strategy may be well suited to those looking to defer prosecution costs while paying the up-front cost of comprehensive drafting. For example, a start-up looking to raise a seed round may file a provisional application that is substantially in non-provisional form with the intent of minimizing its operational costs pending funding.

Alternatively, a Fortune 500 company may file a provisional application that is substantially in non-provisional format with the intent of deferring prosecution costs until a later quarter. The uses of this versatile, middle-of-the-road provisional drafting strategy are vast. Provisional patent applications drafted in this manner can be tailored to fit the needs of most businesses.

The Basics of Non-Provisional Patent Drafting

In contrast to provisional applications, non-provisionals are examined by the United States Patent and Trademark Office (USPTO) and thus have strict requirements. While the formatting requirements for non-provisional applications are minimal, experienced patent prosecution attorneys find that examination tends to go better when certain stylistic principles are followed.

Patent Drafting Requires Familiarity With Certain Stylistic Principles Which Have Emerged Because of the Rigidity of Examination

The predominance of these certain stylistic principles is a result of the rigidity of examination. For example, it is a basic tenet of patent law that structure is patentable and function is not. Consequently, when drafting a patent application, focus should be drawn to the structure of each element of an invention rather than how the invention works. In practice, this results in a unique manner of description. For example:

There are provided methods, and devices for assaying for a binding interaction between a protein, such as a monoclonal antibody, produced by a cell, and a biomolecule. The method may include retaining the cell within a chamber having an aperture; exposing the protein produced by the cell to a capture substrate, wherein the capture substrate is in fluid communication with the protein produced by the cell and wherein the capture substrate is operable to bind the protein produced by the cell; flowing a fluid volume comprising the biomolecule through the chamber via said aperture, wherein the fluid volume is in fluid communication with the capture substrate; and determining a binding interaction between the protein produced by the cell and the biomolecule.” United States Patent Number US20190195874A1 to Anupam Singhal et al. for Methods for assaying cellular binding interaction, available for viewing here on the USPTO website.

Experienced patent practitioners will recognize phrases such as “[t]he method may include” (emphasis added), “fluid communication,” and “a fluid volume comprising” as typical of a well drafted patent. Each has its own unique meaning, and is included for a specific purpose. The phrase “the method may include” is written to be expressly non-limiting. The term “fluid communication” is an intentionally vague description of the means by which two features are connected (disclosing how features are connected is a requirement). That a “fluid volume” comprises several elements rather than consists of those same elements is legal distinction.

Anatomy of a Non-Provisional Application: Parts, Form, and Content

Patent drafting is precise, and the rules regarding it are complex. Because of this, it probably is not possible to comprehensively overview every aspect of it. Instead, this article proceeds to outline the anatomy of a patent (whose form will be quite similar to the non-provisional application from which it issues), and then offers several tips for patent drafting which highlight important aspects and common pitfalls.

The Requirements of Patent Drafting Are Set Forth By Title 35 of the United States Code, Chapter 37 of the Code of Federal Regulations, and the Manual of Patent Examining Procedure

The requirements for the contents of a non-provisional patent application are set forth by statute in 35 U.S.C. § 111, the full text of which can be read here. The specifics of how this plays out in the day-to-day practices of the USPTO are explained in great detail in Chapter 600 of the Manual of Patent Examining Procedure (“MPEP”), which can be read here. For the simplistic purposes of this discussion, however, suffice it to day that a non-provisional application must contain a specification, drawings, an oath/declaration, the required fee, and at least one claim.

Reproduction of Selected Text from 35 U.S.C. § 111(a)
Reproduction of Selected Text from 35 U.S.C. § 111(a), the United States Federal Statute which dictates the requirements for a patent application.

To help add important context to this discussion of the components of a non-provisional patent application, below you will find excerpts from a published (and thus publicly available) patent application, which – as of the date of this writing – was pending before the USPTO. That application is U.S. Patent Publication Number US 2019/0108262 to Myles Scolnick et al. for Data Analysis System and Method, published April 11, 2019, a link to which can be found here (click on the blue “Images” button along the top for the view seen above).

The Components of a Patent Application, Broken Down

Consistent with what can be expected to appear in USPTO Office Actions, “U.S. Patent Publication Number US 2019/0108262 to Myles Scolnick et al. for Data Analysis System and Method” will be referenced herein as “the Scolnick Publication,” or “Scolnick.”

Cover Page of U.S. Patent Publication Number US 2019/0108262 to Myles Scolnick et al. for Data Analysis System and Method, published April 11, 2019.

Box 1 in the figure above shows what most patents attorneys would consider to be the essential components of a patent application. The front page contains important information about the application. The drawings, specification, and claims are statutorily required elements of every patent application.

Components of a Patent Application: The Abstract

Astute readers will also notice a prominently featured “Abstract” section in the figure above. The abstract is essentially a summary of the invention and is required by 37 C.F.R. § 1.72(b). It is limited to 150 words. The abstract should drafted in such a manner that it can efficiently serve as a scanning tool for searching in the relevant art. Further details regarding the abstract can be found in Section 608.01(b) et seq., available to read here.

Components of a Patent Application: The Drawings
Patent Drafting Drawings Example
Selected Drawings from U.S. Patent Publication Number US 2019/0108262 to Myles Scolnick et al. for Data Analysis System and Method, published April 11, 2019.

In the Scolnick Publication, the Drawings consist of seven figures. In the above-linked online version of the Scolnick Publication, the Drawings begin immediately after the Front Page. This order is common, and is a function of USPTO printing procedure. Interestingly, 37 C.F.R. § 1.77 mandates the drawings follow the specification in an applicant’s submission. 37 C.F.R. § 1.77(a) (“… The elements of the application, if applicable, should appear in the following order: … (4) Specification. (5) Drawings….”).

Because Scolnick discloses a “system and method,” the drawings look like flow charts. Such flow charts are typical of method and system patents. Similarly, disclosures directed towards physical objects would likely contain drawings of the object disclosed. Further details regarding USPTO requirements for drawings in a non-provisional application can be found in MPEP § 608.02.

Components of a Patent Application: The Specification

Continuing with Scolnick, after the drawings begins the specification. Per 37 C.F.R. § 1.71, “… [t]he specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old….” 37 C.F.R. § 1.71(b). Additionally, the specification “…is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same….” 37 C.F.R. § 1.71(a).

37 CFR 1.77(b) Sets Forth the Requirements for the Specification in a Non-Provisional Patent Application
37 CFR 1.77(b) Sets Forth the Requirements for the Specification of a Non-Provisional Patent Application

The elements of the specification are set forth in 37 C.F.R. § 1.77(b), whose full text can be read here. In Scolnick, those elements can be seen below as follows:

Name of Component37 C.F.R. § 1.77(b) SubsectionCorresponding Scolnick Section
Title37 C.F.R. 1.77(b)(1)Box 1
Cross Reference to Related Application37 C.F.R. 1.77(b)(2)Box 2
Technical Field37 C.F.R. 1.77(b)(7), as informed by MPEP 608.01(c)*Box 3
Background of Invention37 C.F.R. 1.77(b)(7)Box 4
Summary of Invention37 C.F.R. 1.77(b)(8)Box 5
Brief Description of Drawings37 C.F.R. 1.77(b)(9)Box 6
Detailed Description37 C.F.R. 1.77(b)(10)Box 7
* Technical field is an optional subsection of the Background section. See MPEP § 608.01(c). (“The Background of the Invention may (but is not required to) include the following parts: (1) Field of the Invention:  A statement of the field of art to which the invention pertains. … This item may also be titled ‘Technical Field.’” (Emphasis Added)).
Patent Publication Annotated to Illustrate Patent Drafting Concepts
Pages 1 and 2 from U.S. Patent Publication Number US 2019/0108262 to Myles Scolnick et al. for Data Analysis System and Method, published April 11, 2019. Annotated to illustrate patent drafting concepts.
Components of a Patent Application: The Claims

After the specification proceeds the claims. According to 37 C.F.R. § 1.75, “[t]he specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.” 37 C.F.R. 1.75(a). Claim drafting is extremely nuanced, and the particulars can take a lifetime of experience to fully understand. For more information on claim drafting, look to MPEP 608.01(i). The claims section of Scolnick is reproduced below.

Patent Drafting Claims - Scolnick Publication
The claims section from U.S. Patent Publication Number US 2019/0108262 to Myles Scolnick et al. for Data Analysis System and Method, published April 11, 2019. Annotated to illustrate patent drafting concepts.

The claims section is the meat of the patent: they lay out what the invention is “claimed” to be. If patent infringement is alleged, it will be the claims that are assessed to determine the allegation’s validity. If an aspect of the invention is not claimed, the patent does not protect that aspect against use by others (though if it is disclosed in the specification, it may preclude the grant of a patent which claims that feature). Consequently, claim drafting is one of the most important aspects of patent drafting.

Patent Drafting Tips: A Not-At-All-Exhaustive List

As evidenced above, patent drafting is extremely nuanced. That said, there are certain principles that arise with enough frequency that they are worth being aware of and accounting for. A small list of such principles and tips for how best to account for them follows below.

Patent Drafting Tip 1 – Detail is King: Err in Favor of Over-Disclosure Because You Cannot Add Things Later

When drafting a patent application, it is important that as much detail as is possible be included in the initial disclosure. Such detail is beneficial because the newly filed application will be examined in view of prior filed applications, and the content of the new application as filed is the only thing that can distinguish it from others. This makes sense, because a system where others could be prevented from using undisclosed features of an invention (this is what a patent does) would not work.

After The Original Disclosure Has Been Filed, No New Matter May Be Added
37 CFR 1.121(f) Precludes the Introduction of New Subject Matter to a Pending Patent Application
37 C.F.R. § 1.121(f) Precludes the Introduction of New Subject Matter to a Pending Patent Application

After the original disclosure has been filed, no new matter may be added. This concept is so important that it is worth saying again for a third time: after the original disclosure has been filed, no new matter may be added. If a detail is not included within the four corners of some page within the disclosure, that detail cannot be used to differentiate a newly filed application from prior art. Because amendment to the claims is one of the main strategies through which patent eligible subject matter is determined, this is a big deal.

Absurdly, Comically, Over-The-Top-Completeness in the Initial Disclosure is the Best Way to Get Around the Prohibition on New Matter

To get around the prohibition against adding new matter and the potential issues this bar creates, it is a good idea to err in favor of over-disclosure. In other words, it is better to describe an invention in more detail (relative to what is necessary to understand it) than too little.

A lever that functions to start machine on does so by mechanically changing the position of an electrical switch. Is the fact that a lever is used essential to the invention, or would the invention work just the same if the machine was started instead using a remote control which sent a electrical signal? Either way, the specifics are worth disclosing.

Patent Drafting Tip 2 – Structure, Not Function: Focus On “The What” Rather Than “The How”

Patent drafting requires focus on structure rather than function. This is not to say that function should be omitted, but instead that function should be disclosed in relation to those structures which enable it. The reason for this is that function may not be (i.e., is not allowed to be) patentable, whereas structure may be (i.e., is allowed to be) patentable.

“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original) (case text can be found here); see also MPEP 2114, et seq.

Here is an example. An inventor files a patent application for a new type of toothbrush. The toothbrush is unique because rather than traditional bristles, it uses a series of small sponges made from a material that has properties the inventor found through experimentation does a better job cleaning teeth.

It is important that the inventor describes the structural elements of these sponges, because the fact that they do a better job cleaning teeth will not distinguish them from prior art without something more. Perhaps the sponges are in a certain arrangement that facilitates removal of plaque. Maybe they are porous, and this porousness aids in this function. It could be that the material the sponges are made from has certain abrasive properties which are beneficial for cleaning teeth. Regardless of the specifics, structure rules the day.

Patent Drafting Tip 3 – Patent Drafting Is Like Wizardry: The Wording is Important

Patent drafting is a precise art, and every word matters. Not only must each element of the invention be described precisely, accurately, and in sufficient detail, but applicants must additionally consider how the law has interpreted important terms. For example, MPEP 2111.03 describes the important distinction between the transitional phrases “comprising,” “consisting of,” and “consisting essentially of.”

  • Comprising: “The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.” Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003).
  • Consisting Of: “The transitional phrase ‘consisting of’ excludes any element, step, or ingredient not specified in the claim.” MPEP 2111.03, citing In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931).
  • Consisting Essentially Of: “A ‘consisting essentially of’ claim occupies a middle ground between closed claims that are written in a ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’ format.” PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, (Fed. Cir. 1998).
Language Matters in Patent Drafting: See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003)
“Interpretation of descriptive statements in a patent’s written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment. The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (Full text available here); see also MPEP 2111.01.

This subtle distinction is not a unique one. For example, MPEP 2111.04 (the very next section) describes the difference between the terms “adapted to,” “adapted for,” “wherein,” and “whereby.” Here, however, the distinction is not as clear cut. The MPEP states that “[t]he determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case,” MPEP 2111.04, and then cites to case law where those specifics are discussed further.

Patent drafting requires knowledge of both the governing law and the underlying technology. Precision is crucial with regard to both, and every word matters.

Deciding Whether to Hire a Patent Attorney is a Business Decision

As an entrepreneur, it is important to question conventional knowledge. Unsurprisingly, many entrepreneurs at least consider drafting their own patent applications. While doing so is certainly well within their rights, likely within their capabilities, comes at a substantially reduced cost, and may very well result in the grant of patent rights, there are tradeoffs.

A Poorly Drafted Patent is Worth Nothing, and Might Even Jeopardize Patent Rights

A poorly drafted patent is worth nothing, and could result in a permanent loss of patent rights. Decision makers in areas where patent protections are valuable know this. If a person in such a position were to see that a patent they were considering licensing was drafted by the inventor, that patent may be subjected to additional scrutiny.

In such an instance, it may be suggested that remedial measures be taken to strengthen the patent under consideration. If the patent at issue was not drafted and prosecuted in a manner amenable to such future remediation, it is possible that rights could be lost forever. Consequently, those seeking patent protection with the intent to license or sell the underlying rights should consider the tradeoffs.

Quality Patent Drafting Could Save Money in the Long Run

The risk that a patent will be poorly drafted increases with the complexity of the invention, regardless of the level of experience its preparer boasts. Experience in patent drafting serves to mitigate this risk. Commonly, inventors who opted to draft and prosecute their own patent will reach out to a patent attorney after a series of rejections that they disagree with but have been unable to overcome. Depending on the nature of the rejection, the solutions may be unpleasant to hear.

In a worst case scenario, the remedy may require drafting an entirely new application, filing it as a continuation-in-part to the co-pending original, and prosecuting it from ground zero. Depending on the complexity of the invention and its field of endeavor, prosecution may still be difficult and thus costly. In an even worse case, rights may be irretrievably lost. It is thus worth considering objectively whether the risks outweigh the potential benefits.

Final Thoughts on Self Representation Before the Patent Office

Navigating risk and balancing it with reward is uniquely entrepreneurial: the extent of one’s ability to do so successfully is largely determinative of outcome. One measure of risk is the difference between what is known and what is unknown. The extent a patent attorney can be helpful in doing so depends heavily on circumstance.

For those unaware of what they don’t know, engaging the services of a patent attorney to assist in patent drafting may be a cost that pays off down the road. While the first order effects of so-doing may include a cost you would prefer not to incur, the second order (and beyond) benefit may very well outweigh this. As an entrepreneur, you are uniquely situated to decide this.

Mutchler Patent | CT Patent Lawyer
Mutchler Patent LLC | Think Entrepreneurially.