Drafting a Patent Application

TITLE

e.g. Microwave rapid cooling device

FIELD OF THE INVENTION

General

Is it a toothpaste or a nuclear submarine?

Specific

e.g. More specifically this invention relates to a lipstick preventing the biting of ones nails.

BACKGROUND OF THE INVENTION

What customer need is this field of technology trying to solve?

What are the general requirements of a good solution?

Make an intelligent person who never studied the field think
"That's interesting; I never knew how that worked".

PRIOR ART

i.e. Anything that either:

1. resembles your invention

2. bears directly on your invention in any way

3. describes any component of your invention, even if it does not include other crucial components

4. describes how other people tried to solve the same problem you are trying to solve

For each piece of prior art

Summarize it

How does it work?

What does it do?

How is it used?

What are its limitations?

Why is your invention different and better?

List a set of goals and objectives of your invention

One object of this invention is to create a simple, inexpensive, and durable hyper widget with
fewer moving parts, and which can bounce higher than any previous widget or hyper widget.

Another object is to create a hyper widget which can generate
a more concentrated vacuum in a smaller space.

Another object is to create a hyper widget which can be manufactured
without requiring any radioactive elements or toxic chemicals and which
generates less waste during the manufacturing process.

SUMMARY OF THE INVENTION

This should be a brief (one page or less) overview for someone who doesn’t know anything about the invention.

This section will be published by a number of data services after the patent issues, and it will be read
by people who will decide whether to order a copy of the entire patent.

First, tell a friend a CONCISE summary of your invention following your heart.

Then summarize the last section.

What customer need are you trying to solve?

What are the general requirements of a good solution?

What are the limitations of current solutions?

Why is your invention different and better?

What are the goals and objectives of your invention?

HOW DOES YOUR INVENTION REALIZE THOSE GOALS?

Now, rewrite the whole summary
and reverse its structure to start with the solution (your invention) on top.

What is the invention about?

How is it used?

Why is it usefull?

Finally, write your abstract according to rule 33 of the European Patent Convention.

The formal abstract may differ from your summary.
You write it after you have written the patent including its claims.

BRIEF DESCRIPTION OF THE DRAWINGS

Study the field of your invention VISUALLY

Study the drawings of several patents in the same field as your invention.
That will give you a sense of how patent drawings are arranged and what their goal is.

You can collect a scrapbook of drawings
(e.g cut and paste them into powerpoint)
that visualizes the field of your invention.

Drawings of prior art are rarely printed in patents.
However, such drawings can help a patent attorney figure out how your invention works,
so if there are any good prior art drawings, make copies and include them with your first draft.
Clearly label them as prior art (for example, “This is the device described in patent 4,567,890 by Smith”).

List the drawings you have in mind in a legend

Figure 1 is a plan view showing the hyper widget of this invention.

Figure 2 is a side elevational cutaway view along line 2-2 on Figure 1.

Figure 3 is a circuit diagram of a control unit for the hyper widget of this invention.

Figure 4 is an exploded view showing the components of this invention.

Figure 5 is a chromatograph showing the purification of the ABC substance.

Figure 6 is a graph showing a plateau in blood concentrations
over a prolonged period after injection of the drug.

Start doodling

Take a whiteboard and a thick black marker.

Sketch and discuss your invention with friends.

Let them have a try at it too.

Dress smart

Carefully consider the best way to show your invention visually.

Many patent attorneys and examiners look at the drawings
before the text, so drawings can create the first impression.

If you lack talent, call someone who is both a renowned scientist
and an inspired artist, like e.g. Robert Dijkgraaf.

Create something simple and elegant.

Read Edward Tufte.

Read Miffy.

DETAILED DESCRIPTION

This section contains a narrative explanation of the invention.

If the invention is in the mechanical or electrical field, the application usually will have no examples.
Instead, it will have figures. This section is the place for a detailed narrative describing the figures.

Best mode of carrying out the invention

An inventor must reveal the “best mode of carrying out the invention”
that is known on the day the patent application is filed.

The inventor cannot hide the best version and keep it as a trade secret
while using an inferior version to obtain a patent.

However, improvements that are discovered after the application is filed can be kept as trade secrets.

Inventors and their attorneys must act with complete candor and good faith
in bringing all relevant information to the attention of a patent examiner.

NOTE: THIS IS NOT TRUE UNDER EUROPEAN LAW,
IN EUROPE IT IS ALLOWED TO "POSITION" YOUR INVENTION OR TO ACT STUPID.

Alternate preferred embodiments

In addition to pointing out the best mode,
the inventor should try to anticipate possible modifications to his invention.

Typical language:
“In an alternate preferred embodiment of this invention,
the positions of the cardioblot and framistat can be reversed.
This would cause . . .”

It is also possible to use functional language in describing and claiming an invention.

For example, suppose that in a machine, it is necessary to securely mount part A on part B,
but it doesn’t matter how you do it.

Instead of specifying ways of attaching those parts, you can simply refer to
“means for attaching part A to part B,” and give one or two suitable examples,
such as bolts or welding.

Similarly, it is often possible to use functional language in the chemical or biological field,
such as:

“any pharmaceutically acceptable salt of this compound,” or

“at a dosage sufficient to generate an immune response in an injected animal,
using a suitable carrier substance.
Such carrier substances are well known to those skilled in the art.”

How is the description examined by the European Patent Office?

See part C, chapter II.4 of the Guidelines for Examination in the European Patent Office

EXAMPLES

Speculative "inventions"

Most chemical and biological patents must include examples to assure a patent examiner
that the molecules, mixture, cells, etc., have been created and perform as claimed.
Otherwise, people could get speculative patents merely by synthesizing a compound
without having to prove its utility. Such patents would discourage research rather than promote it.

Ordinary skill in the art

If examples are necessary, they should contain enough detail and data
to allow “someone with ordinary skill in the art” to repeat the experiment and get successful results.

In general, “ordinary skill” refers to someone who can carefully follow written instructions,
rather than a creative whiz who can find a way to overcome any obstacle.

The instructions can be very complex and demanding, and the level of skill required to follow it can be high;
for example, in the field of biotechnology, “ordinary skill” often refers to people with PhD degrees,
since nearly any biotechnology company will have one or more PhD’s.

The key point is that “ordinary skill” must not require a high degree of imagination or ability
to overcome unforeseen obstacles or to think up creative additions to a set of instructions.
The invention must be capable of being carried out without requiring “undue experimentation.”

Specify your "Bill Of Materials"

Whenever a reagent, piece of equipment, or other item is mentioned, the supplier should be listed
along with the city where the supplier is located.

Model numbers (for equipment or hardware), product codes or trademarks,
and purity classifications or other specifications (for chemicals) should be specified
the first time that item is mentioned.

If you use a trademark, describe what that item is in technical terms
or by reference to some publication that describes it in detail
(e.g., “This product is a granular polyacrylamide with an average molecular weight of X daltons,
an average particle diameter of Y microns, and a charge density of Z coulombs per gram,” or
“This chip is described in the ‘Microprocessor Specification Handbook’
published by the Magnarola Company, of Piston, Michigan”).

If you used a special cell or plasmid, indicate not just where it is described,
but where it is available to the public
(if it’s not available, it might be necessary to deposit a culture with a public depository).

Describe what you did

If you refer to a process that is described elsewhere,
give a citation to the article or book where it is described,
and point out any deviations from the published version.

Even if the only deviation was increasing the quantities used, describe what actually happened.

REFERENCES

If citations were given in abbreviated form (such as “Smith 1980”) in the text,
the full citations (including titles of articles or chapters) should be listed here,
in alphabetical order.

Example: Smith, W.C., et al, “A New Treatment for Payne Syndrome,” Science 123: 83-87 (1980).

If your patent needs a lot of references, use the free patent application software provided
by the EPO, WIPO or the USPTO, and/or use a professional bibliographic database.

CLAIMS

Claim drafting is a highly specialized skill, and it is NOT
recommended that inventors try to draft their own claims.

Basic rules

1. Every “limitation” in a claim must be in-fringed for that claim to be infringed.

2. If any claim in a patent is infringed, then that entire patent is infringed.
The patent owner does not need to show infringement of more than one claim.

The first rule acts as a major warning for inventors.
In the broadest claims, do not include any limitations that are not absolutely essential.

Every limitation in any independent claim should have a clear reason for being in that claim,
and the only two reasons for including a limitation in an independent claim are:

(1) to define and describe the invention, or

(2) to avoid prior art.

How to write a broad independent claim

Tips by an AMERICAN patent attorney:

First decide what is essential and what is not essential to "the invention",
meaning in this sense the patentable invention over the prior art.

After you have decided what the Invention is, what I do is:
On a piece of scratch paper I write a claim of indeterminate breadth.

That is, some of my elements come out very broadly
and some of my elements come out very narrowly
and I really do not care.

All I am concerned with is getting something on paper
from which to work from.

Once I have written down this claim of indeterminate scope
I conduct what I call my schizophrenic dialogue.

That is, I actually talk to myself and ask myself two series of questions

The first series of questions relates to each of the
major elements in this claim of indeterminate scope.

I read over each element and I ask myself
is this element necessary to the invention as I have perceived it?

Thus, if I have included as an element of my draft claim
"a housing surrounding the drive shaft" and I know that
the machine will work without the housing as well as with the housing,
then I cross out the entire element.

I do not need it, and I do not want it to unduly limit my claim.

Once I have done this I will go back and check
to see that each remaining element in the claim is
in fact interrelated with each other element.

If it is not, I will add language to interrelate the unrelated elements.

Once I perform this second step to make sure everything is interrelated,
I go trough the claim again.

This time I go word-by-word and ask if the word is necessary.

When I do this I look for all words of limitation such as
"rigid, flexible, elongated, round," etc.

Does the element have to be rigid?

If it does, leave "rigid" in;

If it does not, take it out.

I look for "s's" on the ends of words because unless I need a plurality of the element,
I have limited the claim to having the plural and have given up on the possibility of
preventing someone from using the combination with a single one of those pluralized elements.

In this fashion, I proceed through the claim word-by-word
to measure the necessity of each word.

If I do not need the word, I take it out.

If I think that a given noun without modification is simply to broad or
a modifier is necessaryfor the invention to be operative, I include the modifier.

When I get done with this second scanning of the claim, I have a broad claim, and it is a simple as that.

You can of course also conduct the dialoges together with a friend or your entire team.

How are claims examined by the European Patent Office?

See part C, chapter III of the Guidelines for Examination in the European Patent Office.

How to add narrower claims

Tips by an AMERICAN patent attorney:

I strongly urge you to write them in dependent form.

I would also urge you, if possible, to narrow your claims
in the area that you really consider novel in the combination.

Thus, for example, if what is new is the addition of an element to D to an old combination A, B, & C,
then it is preferable for the second claim to more particulary define the new element D and
the third claim to even more specifically define the same element.

ABSTRACT

In the US your summary is often repeated verbatim as the Abstract.

Under the PCT it is often written by the examiner.

Under the EPC however, the Abstract is an required part of the applications.
See EPC rule 33 for details.

DRAWINGS

Don't try to assign any numbers. Your patent attorney will do that.

Give your attorney two copies

“Plain vanilla”

Don’t put any words or numbers at all;
Just draw the device, graph, or whatever,
and leave the drawing as open and clean as possible.

Labeled by words or phrases

Put any labels out around the edges of the paper,
and use arrows to point out each labeled piece.

Choose one drawing to be included in the abstract.

See rule 32 of the European Patent Convention for details.

And for the whole story, see part A, chapter X and part C, chapter II.5
of the Guidelines for Examination in the European Patent Office.