Patent Drafting — Best Practices

Patent Drafting — Best Practices

Drafting a patent application is not as easy as many think. Many times those new to the industry fail to adequately describe inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention.

Chef America, Inc. v. Lamb-Weston, Inc, 358 F.3d 1371 (Fed. Cir. 2004) -

In this case, while deciding against the claim for infringement, the court analyzed the usage of “To” vs “At”. In this case, the applicant attempted to protect a cooking step for heating a dough at a certain temperature inside an oven. But in their patent application, the applicant drafted the claim to read “heating the . . . dough to a temperature in the range of about 400 degrees F. to 850 degrees F.” The court stated that “to” is not “at” and so the claim required the dough and not the oven to be heated to the temperature as specified in the claim. The Court then stated that the claim was not infringed, and according to the court’s observations, it was opined that this claim could not possibly be infringed unless one wanted to make a burned dough.

It is clear from the above case that the chances where the infringing party loses out on its claims due to poor drafting are significantly high.

What is Patentable Subject Matter?

The subject matter of a patent refers to what can be patented. In some jurisdictions, virtually any invention can be patented. Other jurisdictions have somewhat more restrictive definitions of the patentable subject matter. In both cases, a wide variety of things can be patented as long as they are new, useful and non-obvious. A patent application should be drafted in such a way that by considering categories of the patentable subject matter. Some categories of patentable subject matter are:

• Mechanical Devices and Articles of Manufacture
• Processes/ Methods
• Chemical Compositions or Compounds
• Isolated and Characterized Molecules
• Genetic Organisms/ Gene Sequences
• Computer Programs
• Improvements

While drafting patent applications for inventions related to a business method, and computer program per se, patent drafters need to be more attentive in using keywords related to business and software. Many times, even if an invention falls into the patentable subject matter, a patent examiner, while prosecuting the patent application, may give rejections related to the patentability of the invention by going through keywords and classifications related to business and software.

In most countries, the software cannot be patented if it does not form an element within hardware or a system. Whereas the USA is one of those countries in which ‘business method’ and software related patents have been filed during the last 15 years and many big companies invest large amounts of money and other resources for planning new ideas for doing business which leads to the development in Business. However, in June 2014, the US Supreme Court’s ruling in the Alice Corp. v. CLS Bank ruled that ‘implementing the abstract idea’ on a computer does not make it patentable. Hence, a patent drafter needs to be more attentive in identifying the patentability of an invention.

Importance of Prior Art Search

A prior art patentability search may be conducted before the filing of a patent application to gauge the prospects of obtaining broad claim coverage. Also, it is often presumed that the inventor himself will have a good sense of novelty based on his reading of the literature in his field and by communication with his peers. In some cases, a more rigorous search may be justified before investing in an expensive foreign patent application. Prior art searches are a good way to get information on developments in the field of invention. Prior art searches may sometimes reveal what competitors consider worth protecting. Search results may be a critical factor in deciding whether to file a patent application. If a prior art search reveals references that anticipate the claimed invention, the inventor and the patent drafter should consider how they can “avoid the prior art” by drafting the claims to overcome it. The prior art may instead warrant a “design around” effort to see how the claims of the new application can be changed to avoid the prior art.

How to draft a patent application?

• Receive Invention Disclosure from Client
• Schedule/prepare for invention disclosure meeting
• Conduct invention disclosure meeting
• Prepare 1st draft of the application
• Receive feedback from your supervisor on your 1st draft
• Send 1st draft to an inventor for review
• Receive feedback from inventors
• Revise application as needed
• Prepare documents for inventors to sign
• Send documents to inventors with the final draft of the application.
• File application

Specifications

It enables one to make and use the invention and describes what the invention is. It must disclose the best mode of making and using the invention (generally needed for the U.S.). A patent attorney is his own lexicographer. He is free to use any word with a supporting definition in the specification.

The specification should include:

• Title
• Background of the invention
• Summary of the Invention
• Brief description of the drawings
• A detailed description of the invention
• Claim(s)
• Abstract
• Sequence listing

9 Important Considerations for Patent Drafting

1. Title of the invention:

Don’ts:

1. It should not be long.
2. It should not exceed 500 characters in length.
3. It should not use words like “new”, “improved”, “improvement of”, “improvement in”.
4. Articles “a,” “an,” and “the” should not be included in Title.
5. It cannot be too general (e.g., inductor, resistor) and cannot be narrower than the broad claim.

2. Background of the invention: It is a statement of the field of art to which the invention pertains.

Do’s:

1. It is usually written as a two-part statement i.e., a broad statement followed by a more specific statement. For example: “The present disclosure relates to communication systems and more particularly to wireless mobile communication systems”.

Don’ts:

1. It should not be labeled as “Field of the Invention”.
2. The specific statement should not be narrower as compared to that of broad claim.

3. Summary of the invention:

Do’s:

1. Summary should be labeled as “Summary of the invention”
2. Summary should be consistent with the invention as claimed.
3. We should amend the summary if claims are amended during prosecution.

Don’ts:

1. We should not use the phrase “The invention is”.
2. The language of claims to be paraphrased in plain-English sentences without legal phraseology like “means” or “said”.
3. We should avoid referring to “objectives” of the invention.

4. Brief Description of the Drawings:

Do’s:

1. we should refer to the different views by specifying the numbers of the figures and to the different parts by use of reference numerals.
2. We should refer to “embodiments of the invention” rather than to the “the invention”. For example:

• Fig. 1 is a front view of a ……
• Fig. 2 is an exploded view of one embodiment of a …….
• Fig. 3 is a perspective view of ….

5. Detailed Description: It is a written description of the invention and of the manner and process of making and using it.

Do’s:

1. It should be full, clear, concise and exact in terms to enable any ordinary person skilled in the art to make and use the invention.
2. The best mode of performing the invention is contemplated by the inventor in the detailed description, and it must be set forth (for the US).

6. Drawings: Drawings/Figures are required where necessary for understanding the subject matter to be patented. If drawings are submitted after the filing date may not be used to provide enabling disclosure or to interpret claims with the corresponding filing date.

Do’s:

1. Drawings must show every feature of the invention specified in the claims.
2. Figures are, generally, ordered from general to specific.
3. Figures are described in numerical order.
4. Embodiments of the invention should be shown in Figures using reference numerals for each part.
5. It is suggested to use sequentially even or odd reference numerals (For e.g., 2, 4, 6, 8 …).
6. It is recommended to describe apparatus/ article first and then describe method.

Don’ts:

1. We should not use the same reference numeral for two different parts.

7. Abstract: It is a brief summary of the invention. Moreover, the abstract is often similar to the broadest claim

Do’s:

1. It must commence on a separate sheet, preferably attached after the claims section.

Don’ts:

1. Similar to Summary, legal phraseology (such as “means and “said”) should be avoided in the abstract.

8. Claims: The specification must conclude with a claim. Claims create a fence to define what we exclude another from practicing.

Do’s:

1. The claim should particularly point out, and distinctly claim the subject which the inventor considers as the invention.
2. Claims must be supported by the specification and drawings.
3. Further, we cannot add “new subject matter” after filing a patent application, but claims can be amended to the extent supported by the specification.
4. Outer boundaries or periphery of the claim must be stated.
5. There should be proper and logical connectivity among claim elements by considering novel and inventive elements in the claim.
6. Claims should be in a sentence format, and claims are divided into independent (Claim stands alone, and does not refer to other claims) or dependent format (Claim refers to previous claims, incorporates the subject matter of previous claims, adds a limitation to independent claim, and narrower in scope or coverage than independent claim).
7. The claim should begin with a capital letter and end with a period. Each element recited in the claim should be indented, and multiple claims are numbered consecutively.

Parts of a Claim

A claim is split into three parts:

1. Preamble — It names, defines, or describes the subject matter of the invention, and may state an intended use or purpose.
2. Transition — It joins the preamble with the body, and affects the scope of the claim. Usually, the transition is of two types: open-ended and closed-ended transitional phrases (for example, comprising, essentially consisting of, and consisting of)
3. Body — It recites elements or steps of the claimed invention and how they interact.

Claim Punctuation

A comma separates the preamble from the transitional phrase, a colon separates the transitional phrase from the body, and paragraphs that define and describe the logical elements are separated with semicolons.

Example:

Preamble, the transitional phrase:

Element (#1);

Element (#2);

Element (#3)

Proper Antecedent Basis Elements in the patent claim must have the correct antecedent basis. Use indefinite article “a” or “an” when introducing an element for the first time. Use definite article “the” or “said” when referring back to the introduced element. Use of special words such as “wherein”. “whereby”. “such that” to further define a structure or provide a function associated with a given structure.

Drafting Around Negative Limitations:

Patent examiners do not like “NOT”. Indefiniteness objection for unclear boundaries or no support in application will be raised if we mention negative limitations (such as “NOT”) in claim elements. We should avoid this problem by stating what the element is rather than what the element is not.

9. Invention Disclosure Meetings

Questions to be asked to inventors before drafting a patent application

• Did you or anyone else make a written or oral publication or disclosure regarding any aspects of the invention? (prior publication may destroy novelty)
• Did you test the invention?
• Can you tell me what you have invented?
• Do you have a photo or drawing of your invention?
• Is there another way to arrive at the technical effect caused by the invention?
• What are the advantages of the invention in comparison to the prior art?
• What are the important and/or critical features of the invention?
• How was the problem solved in the past?
• What is it that you want your competitors not to be allowed to do? (Strategic defense)
• How could a competitor design around the contemplated patent claims? (Strategic defense)

Questions to be asked to inventors in view of the identification of the invention (based on Patentability Search Report):

• Is identified reference the closest prior art?
• What is the difference between the closest prior art and the invention? (Novelty?)
• Could you explain your invention?
• How is it constructed?
• How does it function?
• How is it used?
• What arguments do we have in favor of the inventive step?
• Are there any other applications of the invention?
• What is the aim of the invention?
• What technical problem was solved by the invention?
• How does the invention solve that problem?
• Due to what technical feature, the problem underlying the invention, is solved?
• What are the technical effects caused by the invention?
• Do you intend to use the invention in your own business? (Revenue generation)
• Are you planning to sell or license your invention? (Revenue generation)
• Where do you want to get a patent? (Filing)

References

1. https://www.ipwatchdog.com/2016/12/10/patent-drafting-anatomy-patent-claim/id=75575/
2. https://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf
3. https://www.mondaq.com/india/patent/558400/a-primer-to-patent-application-drafting-with-special-emphasis-on-standard-practises-before-the-indian-patent-office
4. https://photonlegal.com/aftermath-of-poor-patent-drafting-a-series-part-ii/