Drafting a patent application is not as easy as many think. Indeed, drafting a patent application is quite difficult. Once you have obtained years of patent experience it is easy enough to look at patent applications from various technical fields of endeavor and understand why patent practitioners are making the choices they make when drafting an application, and it is also easy to identify high quality, well-written patent applications. But when you are new to the field, whether it be because you are an inexperienced practitioner or because you are an inventor, patent drafting basics do not seem all that basic.
While drafting a patent application is difficult, it is obviously not impossible. With some coaching, guidance and perseverance virtually anyone can learn how to do it. The problem, however, is the same as with any form of writing. Staring at a blank screen is only a recipe for further staring at a blank screen. The cycle of staring at a blank screen (or page) must be broken or it can and will become debilitating.
Patent Drafting Basics
A patent application needs to describe an invention completely, and if you really are entitled to a patent then at least some aspect of your invention is new and non-obvious, which means that heretofore it hasn’t existed. Describing something new that has not previously existed is more of a challenge than most people realize.
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. Yes, the goal is to explain the invention to a knowledgeable individual who knows something about the technical area pertaining to the invention, but if you really have an invention there must be something new, so at least that which is new won’t be understood or appreciated until it is described.
One of the best ways to accomplish the goal of completely describing an invention is to explain the invention like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, no matter how obvious. Kids do this when they describe things because they have no idea what the person listening knows, and to them it is new and interesting so they explain everything with tremendous detail (whether you want to hear it or not). That is exactly what you need to do in the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.
The caveat, however, is you absolutely must focus on what is unique. Spending all your time discussing those features, elements, characteristics and attributes that are already known and can be found in the prior art will just make your patent application needlessly long. You will need to describe those known things to the extent necessary to explain the what, where and why of what is unique, but too often those new to drafting patent applications focus exclusively, or nearly exclusively, on things that simply will not contribute to patentability. Uniqueness contributes to patentability, not a better or more complete description of the prior art.
But how do you explain the uniqueness of the invention? The best advice anyone can give you is to define everything that works so that those with knowledge in the technical area pertaining to the invention will understand both the boundaries of the invention (i.e., what has actually been invented) and how to make and use the invention. Doing this with instruction manual level detail is what you need to aim for.
Instruction Manual Detail
Most have at one time or another likely put something together. Several of my personal experiences relate to putting together a BBQ grill and a lawn mower. If you have ever had this experience you likely became quite frustrated, and likely also had a bunch of extra parts leftover, which doesn’t make you feel too secure when you are dealing with a rotating blade of a law mower or a BBQ grill connected to a propane tank! The last time I put together a BBQ grill there were multiple require steps that could only be performed after having undone one or more of the previous steps. Frustrating! Not a very good description.
In some important ways a patent application should be akin to an instruction manual, but unlike the aforementioned BBQ grill, the reader of relevant skill in the area is the one that should be able to follow along. Having said this, there is an important caveat! A patent is not a blueprint. You do not need measurements or engineering drawings. In fact, including measurements and the detail often found in engineering drawings can be a terrible mistake.
Many will mistakenly believe that engineering drawings are the best drawings because they will be required to actually build the invention. The problem with engineering drawings is not using them, but rather when they alone are used. If engineering drawings are the only drawings used in a patent application the invention will unnecessarily be limited to the narrow versions detailed — the precise measurements. Patent drawings are more general and show the invention and its parts holistically, without measurements. If someone copies the invention but changes the proportions slightly you want any issued patent to capture that as infringing. If you only used engineering drawings there is a very good chance that your description will be so limited that you will be unable to capture even minor changes as infringing.
The goal is to describe the invention in a way that specifically describes it so that the reader will understand all the various permutations and that you are indeed in possession of all variations. In other words, you need to provide an instruction manual for making and using the invention, paying particular attention to describing modifications, specific embodiments and alternatives. Having said this, unless you are filing a patent application that specifically covers a manufacturing process, there is no requirement that the patent application define the manufacturing processes. So, if you invented a widget you need to describe that single widget, with explanation of the pieces and parts that make up that widget. You do not need to describe a manufacturing process or assembly-line process for making thousands of that widget.
Always remember that multiple patent drawings can be extremely helpful. Most patent applications do not have nearly enough patent illustrations. If you have engineering drawings and want to include them that is fine, but just make sure you get other, more general drawings to include as well. You can normally get patent drawings for between $50 to $100 per page, sometimes more depending upon the level of detail required and number of figures you have on a single page. For the cost, patent drawings are the best way to expand a disclosure. Not only is everything shown in the drawing a part of your disclosed invention, but each drawings should be at least summarized in a patent application, which means the more drawings the more detail, and the more drawings the more written description you will have explaining the drawings.
And have you ever seen a worthwhile instruction manual without good, high-quality drawings showing you what to do? Probably not. So, if you’ve been frustrated by the decreasing quality of instruction manuals when “some assembly is required”, you fundamentally already know exactly what you need to do when you draft a patent application. Lots of drawings, lots of descriptive text that focuses on the key elements of the invention — that’s what makes a great patent application.
For more on use of drawings see Working with Patent Drawings to Create a Complete Disclosure and Patent Illustrations and Invention Drawings: What do you need?
I know how difficult it can be for those new to the industry to write a patent application because over the years I have taught many law school courses on patent application and patent claim drafting, I have worked with new patent practitioners to teach them the art of drafting patent applications and patent claims, and I have reviewed literally thousands of patent applications drafted by inventors and tried to help them understand what it is that they need to be doing. I’ve even created what we call The Invent + Patent System™, which is a step by step mentoring tool that helps inventors draft their own provisional patent applications.
For more information on patent drafting, please see Patent Drafting for Beginners and Claim Drafting for Beginners.
For more tutorial information please see Invention to Patent 101: Everything You Need to Know. For more information specifically on patent application drafting please see:
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Drafting Lessons from a 101 Loss in the Eastern District of Texas
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- Understand Your Utility Patent Application Drawings
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600
- A Tale of Two Electric Vehicle Charging Stations: Drafting Lessons for the New Eligibility Reality
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
Image Source: Deposit Photos.
Join the Discussion
4 comments so far.
TernaryOctober 21, 2018 11:52 am
Eric @3 I agree. The costs of obtaining a patent in the EPO are outrageous and there is no realistic path forward for independent inventors to get affordable IP protection. Ignoring the interest of small, individual inventors is a striking aspect of IP protection in Europe on the EPO level. However, we are going in the same direction in this country, while politicians maintain that the US Patent System is being tuned for protecting the interest of “Innovators.”
But, Benny has a point that some prosecution procedures in the EPO are well thought through. One element in the EPO that I particularly like is the recognition that you cannot and should not remove mathematical formulas from claims where they describe and claim the physical utility. This approach expresses a better understanding of technology and a better “scientific common sense” which is completely missing in our Courts.
Eric BerendOctober 21, 2018 09:49 am
@ 2. ‘Benny’:
Then again, your Eurosuperiority complex – replete with obdurate feudalistic disdain for the individual inventor – is so strongly pronounced, it fairly bleeds through the screen at the reader.
Tell us, “Benny”: is there ANYTHING in ‘European’ patent practice, that is not a “Step up” from EVERYTHING in U.S practice?
You just can’t make a compliment “to save your life”, without it being lefthanded so as to support your incessant, jaundiced narrative.
What a bigot.
BennyOctober 21, 2018 05:15 am
“Spending all your time discussing those features, elements, characteristics and attributes that are already known and can be found in the prior art will just make your patent application needlessly long.”
Apparently, not many patent drafting attorneys seem to understand this nuance.
European patent applications are a step up on US practice, since features mentioned in the claims are referenced to callouts in the drawings, making the claims so much more coherent.
Autrige DennisOctober 20, 2018 10:02 pm
Lots of great information to learn and share to my clients who may think they don’t need an experience patent attorney and that they can do the job themselves to save money. I love the part about defining well the non-obvious part of the invention. Which must be very difficult.