Patent drafting or writing is an essential skill and is important to maintain the balance or the broad claim scope as against the rules of the respective patent offices and what is allowable in each of the jurisdiction. In order to be able to draft/write a patent particularly well one requires to obtain the invention disclosure from the inventor, this includes asking the right questions based on the given invention disclosure and to bring out the patentable aspects of the invention. The most common way to do it is to have an invention disclosure form. Based upon this a basic prior art search may be performed, which will reveal the prior art and help ask more questions to the inventor and also help in writing the patent document. Once the patentable invention is identified, understanding the invention along with the inventor is important in drafting the claims. As the claims form the most important aspect of the patent document and delineate the rights in the patent.
The typical parts of the patent include:-
- Detailed description/Specification
Before one goes into the parts of the patent application, the Title needs to be drafted. The title should not be overly narrow, however, it should indicate what the invention discloses.
The claims have a preamble, transitioning phrase and the body. The claims are the legally operative aspect of the invention, therefore it is important to capture the invention carefully. The strategy regarding the breadth of the claim is based on the business needs or perspective. The number of independent claims and dependent claims is also decided based on these aspects. Another deciding factor here, is in which jurisdiction the claims are being filed. For instance, the EPO, does not allow multiple independent claims for each claim category as that of the United States. The claims are generally drafted initially and the specification drafted around it. Thereby, being able to meet the sufficiency of disclosure requirements. Once the final application is drafted, the claim terms need to be cross-referenced with the drawings and the specification and if need be amended according to the strategy employed by the Patent Attorney.
The detailed description/specification consists of the description of the invention which will enable understanding of the claims and allows a person who is skilled in the art to be able to understand and perform the invention. The specification requires satisfying the legal obligations of the respective jurisdictions. The requirements vary for the different patent offices. For instance, US and India mandate a “best mode requirement”, wherein the best mode for performing the invention as known to the inventors needs to be disclosed. The US additionally has a “written description” as well as an “enablement” requirements. As far as the EPO, is concerned, it follows a problem-solution approach. It also has a “sufficiency of disclosure” requirements which are similar to the “enablement”. While drafting the specification, it is always better to err on the side of inclusion, however, concepts/ aspects of a technology which is well-known in the art may be skipped. In order to satisfy the broadest possible interpretation, phrases like “in an embodiment of the invention” is used as against the “The invention is”. While writing/drafting the patent application, it is key to not use any terms in “absolutes”, this will not only aid in prosecution but will be helpful in the event the patent is going to be litigated. However, this does not mean that there is room for ambiguity while drafting the document. The document should bring about clarity but at the same time not use “absolutes.” The detailed description/specification also consists the background and the summary sections.
The background section consists of the general state of the art with respect to the field of the invention. The background also sometimes may consist specifically identified prior art from the prior art search performed or that of the competitor as disclosed by the inventor which may be the closest prior art and will require briefly summarizing the same. The problem-solution approach followed by the European Patent Office (EPO) requires the inclusion of stating the problems and the solutions provided by the earlier prior art in this section. In the following sections, the advantages or the difference in the claimed invention is stated. The summary section summarizes the invention in brief.
Clear, legible drawings describing the invention disclosed are to be provided in a patent application. Certain jurisdiction’s required that every claimed element be represented as a part of the drawings failing which formality objections will be raised regarding the same. It is upon the patent attorney drafting/writing the application to determine as to what detail the drawings are to contain. Another key aspect of the drawings is the consistent referencing of the same. Whatever be the referencing, the same needs to be consistently maintained throughout.
The abstract is generally describes the invention in a minimalistic form. Maybe the first paragraph of the Summary is included as the abstract. It is primarily meant for the patent searchers to be able to identify whether the specific technology they are analyzing is present with the specific patent document. Barring this, the abstract receives a very minimal review. Most jurisdictions follow a word limit with respect to the abstract so that it not elaborate.
We at OutsourceIP, have experienced patent drafters/writings across the different technological domains who are well versed in the laws of both EU and US patent laws and rules to be able to draft the patent document with the nuance and finesse it mandates which would make the prosecution process smoother.