Drafting Patent Applications – Essentials

A properly drafted patent application takes into account several factors – technical breadth, legal strategy, as well as conformance with the rules and regulations in U.S. statutory law, guidelines issued by the United States Patent and Trademark Office (USPTO). Now with First-to-file system in affect in US, it makes all the more sense to file your patent application as early and thoroughly as possible. Over 12,000 applications were filed over last 2 weeks alone, the highest ever filing in such a short time.

One thing to keep in mind is – what is the ultimate goal for drafting and filing a patent?It is to make patent  valuable, enforceable and defensible. That said, how do you go about achieving this? – Address the following items:

Determine which area/field are you applying the patent for? – One of the key aspects to focus is on the construction of the claims; This a key aspect to success (as to why you want to patent in first place). Also, this will preempt from potential litigations. So, get it right.

Quick Tips for drafting patent applications:

Here are some quick tips for drafting patent applications:

  • Reviewing a Patent Application Drafted by an Inventor
  • Pitfalls when preparing a patent application – The best thing to do is explain why your invention solves problems and/or is important for the relevant consumer audience.
  • Patent Drafting: Describing What is Unique Without Puffing Drafting Patent Applications: Writing Method Claims
  • Defining the Full Glory of Your Invention in a Patent Application

Building / Parts of Patent Application:

Main parts of patent application include:

  • Complete specification with at least one claim
  • Oath or declaration
  • Power of attorney
  • Assignment
  • Small entity / large entry definition
  • Drawings
  • Specification – The specification includes the following:
  1. Cross-reference to related applications (either parent applications for continuation/CIP/divisional, or a reference to a PCT filing)
  2. Title of the invention: should be succinct, must be technically accurate
  3. Statement regarding federally sponsored research or development
  4. Reference to a sequence listing
  5. Background of the invention
  6. Brief summary of the invention
  7. Brief description of the several views of the drawings
  8. Detailed description of the invention
  9. Claims
  10. Drawings
  11. Sequence listing
  • Information Disclosure Statement (IDS)
  • Foreign filing claim
  • Petition to make special – In certain circumstances, an application may receive expedited review and issuance, and an accordingly longer patent term – usual criteria (37 CFR 1.102) is responsible for deciding whether to grant it or not;

Also, decide on foreign filing strategy;

Filing procedure:

The drafted patent application should be submitted along with a cover sheet, that identifies the submitted documents, the title of the invention, the names of the inventors, and the claim for small-entity status (as applicable), the fee to be remitted using a Fee Transmittal Form.

Common Mistakes to avoid when drafting patent application:

  • Address the patent application to the real audience
  • Include references in Information Disclosure Statement (IDS); Limit background to minimal details
  • Claim the invention from one vantage point (be very focused)
  • Do not paraphrase the invention or claim in the abstract
  • Avoid any inconsistent or vague terms
  • Exclude the language that should not be in a claim in first place; Just focus on “novelty”
  • Do NOT include any extra or unnecessary word(s) in a claim
  • Claim what all you have disclosed in the specification
  • Oversight in investigating inventor documents
  • Build patent portfolio for licensing and defense and protecting the technology

Some good references on “drafting a patent application” out there are – Patent Application Drafting: A Practical Guide and The Essentials of Patent Claim Drafting by Morgan D. Rosenberg  and How to Write a Patent Application (Kindle Edition).

Kameshwar Eranki is President & CEO of VajraSoft Inc. VajraSoft Inc. IP Products and Solutions include – Thunderbird IP Application Suite: Thunderbird Patent Portfolio Management System, IP Cost-O-Meter, IP Monetizer and IP Analytics.

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