2016-11-02
Once you submit your patent application to the Patent Office, it is very difficult to make changes to the content without risking potential validity issues in the future. During the examination process, it is often necessary to make amendments to the claims of the patent application to overcome objections raised by an Examiner. If the details needed to amend the claims are not clearly described in the patent, it may not be possible to make the amendments that could lead to the issuance of your patent. Writing a patent application is an art form and requires a clear understanding of what it is you are trying to protect. The form of the patent application is also important and often requires that a person who drafts these documents research the statutory requirements to ensure it is drafted correctly.
As a patent agent who drafts patent applications on a regular basis, here are 6 important things to keep in mind when writing a patent application:
- Be Precise, Be Clear
This is perhaps the most important piece of advise that you will receive. Be as precise, clear and accurate as you can when preparing your patent application. There should be no speculation or misunderstanding created in the mind of your reader. You can create confusion simply through the words you choose to use. For example, words such as thin, strong, or majority are considered vague as different people will have different definitions for those terms. It is, therefore, important to define exactly what these terms mean. Be as clear and specific as possible!
- Avoid Synonyms
We use synonyms every day to help people understand us. Switching between words such as ‘strong’ and ‘powerful’ may be used to convey a different idea then switching between 'strong' and 'rigid'. However, in a patent application it is important to avoid the use of synonyms. While synonyms can be helpful in some cases, they can also lead to confusion. 'Rigid' and 'powerful' may both be synonyms for 'strong' but are generally not considered synonyms for each other. By avoiding the use of synonyms and consistently using the same terms to describe the same elements in your application, you can avoid the possibility of confusion that could otherwise arise through the use of different words.
- Complete Claim
The patent claim needs to be complete. It needs to describe all of the elements that are required to make your invention work. When drafting a claim you should consider what elements are essential to your invention and ask yourself questions about how important certain elements are. If your invention does not work without placing a screw in a specific place, that needs to be in the claims. A patent may be deemed invalid if elements needed to make the invention work are missing from the claims.
- Describe everything
Never worry about the length of your patent application as long as you are confident that everything has been described accurately. Every element of your invention should be described and it should be clear from your description how the different elements fit together. You patent claim must be supported by the description so ensure it is complete. It is much easier to amend patent claims during examination when there is sufficient detail in the description to support the amendments you are making.
- Describe How Your Invention Works
Describing what your invention does is generally not sufficient. Whenever possible, include details about how to make and use the invention. The more details you are able to provide, the better your patent application is likely to be.
- Use Drawings
Drawings are an effective way of showing your reader exactly what your invention is. For patent applications related to devices, machines and other physical items, drawings are a required element of the patent application. Also consider the use of flow charts showing the various steps when describing a method. Drawings may provide greater clarity to the reader, but it is important to always remember that it is the claims, and not the drawings, that determine the scope of your patent protection.
Drafting a patent application requires knowledge of the statutory rules, applicable case law and proper formatting. While an inventor may prepare and file their own patent applications, it is often advisable to have a professional prepare the application on your behalf. It is often the small details that may be overlooked by the untrained writer that provide the information necessary to get a patent application approved by the Patent Office.
