What Is Patent Drafting?

Patent drafting is a part of how to patent an idea and is the process of writing the patent description and claims. It is at the core of every patent application. When the patent is issued or allowed, the draft serves as the specification part of the document.

What Patent Drafting is NOT

Often an inventor wants to complete the patent drafting process by providing an essay or a business plan that outlines the invention. Unfortunately, documents like these are of limited use.

Journal articles usually state that the invention is consistent with accepted science. This goes against the grain of what patenting accomplishes. In this case, the goal is to point out that the work is not an apparent continuation of current accepted wisdom.

A business plan is also the wrong for a patent application. A project or business plan focuses on what will be done. It may describe the results the company hopes to achieve with the invention. This future-oriented way of presenting the invention is not helpful. When drafting a successful patent application, the focus is on what has already been established.

The technical aspects required of a patent draft also make a business plan or journal article unusable. The detail necessary for a patent draft would be overkill for either of the two documents discussed. Finally, drawings and illustrations in a journal article and a business plan, generally do not meet the criteria for a patent draft.

Why do You Need to Know About Patent Drafting?

Collaboration between an attorney and the inventors is an essential part of the patent drafting process. It is imperative that the attorneys understand the invention in detail, all of its claims of usefulness, as well as what distinguishes it from similar existing products or processes. Failure in this area increases the chances of the application being denied by the United States Patent and Trademark Office (USPTO).

According to the USPTO, in one nine-year period, fewer than 60 percent of U.S. patent applications were recommended for issuance. Of those that were issued, only about 20 percent were ever commercialized. This statistic emphasizes the importance of having an experienced patent attorney with whom you have good regular communication.

How Do You Draft a Patent

Initially, your patent attorney has you complete an invention disclosure contract. This allows you to communicate the information about your invention in enough detail for the attorney to understand the invention. At this time, your attorney begins drafting the patent application starting with the claims made about the design.

Once your attorney precisely captures the scope of the invention in the draft claims, the inventor or a draftsman begins preparing any required drawings to help further explain the claims. In some instances, the pictures depict existing inventions to make a proper distinction between those items and the innovation that you are applying for.

During the patent drafting process, there are many collaborative discussions between you, the draftsman, and the attorney. It is not unusual for the scope of the claims to change somewhat during this time. When these changes happen, it is likely an effort to further differentiate the new invention from existing ones. Changes could also be related to a new or broadened understanding of the invention or its uses.

What Are the Parts of a Patent Draft?

As outlined in 37 CFR 1.77, the non-provisional patent draft includes the following thirteen sections:

  1. The title of your invention

  2. A cross-referenced list of any related patent applications

  3. A statement about any federally sponsored R&D —if applicable

  4. The names of all parties if there is a joint research agreement

  5. References to a "sequential listing," any tables or computer program listings, as well as any appendix submitted to a CD or storage device and the incorporation-by-reference list

  6. Background information on the invention

  7. A brief summary of invention

  8. A short description of the drawings

  9. A detailed description of invention

  10. The claim or claims

  11. An abstract of the disclosure.

  12. Sequence Listing, if not supplied on a CD or storage device

  13. An oath or declaration

A provisional patent draft includes the following, according to 37 CFR 1.16(d):

  • The name of all inventors

  • The creator's residential address

  • The title of the invention

  • Name and registration number of attorney or agent and docket number (if applicable)

  • Correspondence address

  • List of any U.S. government agencies with interest in the application

Patent Drafting: Clear Writing Is Key

Some people struggle to write the simple and concise verbiage needed for patent drafting. The summary paragraph for a patent should encapsulate the entire invention. This kind of explicit writing zeroes in and gets to the point without any wordy elaboration. It requires removing all passive voice and finding the right phrases that express the idea while organizing the text in a way that states the information definitively.

When an application is difficult to read or understand, it hurts you, the applicant, in many ways. First, the more complicated the document is to read, the less likely it is that you will read the application thoroughly, and so you may miss errors and omissions. Too often the applicant gives up halfway through the document and skips ahead to the signature page. The result is an application that may or may not include what you intended.

Secondly, the patent clerk or examiner may not read the application. The examiner usually knows the claim extremely thoroughly. However, because this person only has a limited amount of time, the more time they spend trying to find or understand the claim language, the less time spent doing the actual patent searching. This results in a denial or possibly an allowance that is less thorough.

If the patent is ever litigated, a confusing draft can frustrate and annoy judges, juries, and other parties. A poorly written patent may also leave open doors for litigants on either side to interpret the language in an unintended way. This is costly for all the parties.

Four Common Mistakes With Patent Drafting

As discussed, not writing clear, concise copy is the single biggest mistake the drafter can make. The patent claim drafting process requires careful and specialized attention. The omission of a single word, or even using the wrong word, can result in the difference between a bogus patent claim and one with merit and value. As we discussed earlier, it is also important to have a complete and adequate description of the patentable invention. However, it may be just as dangerous to have too much detail.

These four situations illustrate why going the DIY route with a non-provisional utility patent is not a good idea.

1. Explaining the Function of an Invention

One of the biggest mistakes inventors make is spending too much effort explaining what the invention does and too little time describing what the invention is and how it works to deliver the described functionality. This may seem counterintuitive, but what something does is less relevant to a patent clerk than fully figuring out what makes it work, why it works, and what makes it useful, new, or different.

2. Too Vague or Simplistic

This is definitely the norm when it comes to rookie mistakes. Inventors are especially proud when they come up with a simple solution. After all, everyone is looking for them. That's actually part of the problem. If they are so straightforward and obvious, it is not a patentable invention. The key is to describe even the most simple idea in great detail, taking special care to emphasize as many uses of the invention as you can come up with.

Also, it is important to take the time to describe, in detail how your design is different, uses different or varied materials, and produces a more efficient and useful result than other similar already patented inventions.

Another reason inventors fail to accurately and adequately describe their products is that they are afraid of revealing their trade secrets or process. However, this is a necessary risk to receive exclusivity. Patenting is not the time to hold back. The standard is that every patent is described in enough detail that anyone reasonably skilled in the field of the invention could recreate the device and be able to use it based on the information provided.

3. Too Specific

This is very rare, but it can happen. When it does, it is a problem. While describing the materials used in the process or invention, start general and then get more specific. For example, if the invention requires a cloth you could say only that. However, that is probably too vague. If you say it needs a cotton cloth that is more accurate, which is good, but you should tread carefully. How important is it that the cloth is cotton, specifically? Other fabrics have similar natural properties such as bamboo and rayon. A better description is, "an absorbent material made of natural fibers, such as but not limited to, cotton, rayon, or bamboo."

4. Miswording

We all make poor choices in wording sometimes. For example, using the wrong preposition proved very costly to a company issued a patent for a cooking process. Chef America, Inc. owned a patent on a process used to make a dough product that was, verbatim, "to be heated to about 400° F to 850° F." When Lamb-Weston, a competitor, developed a similar product, Chef America, Inc. sued for infringement. However, because the patent claim issued literally required the dough to be heated to up to 850 degrees Fahrenheit, the court found in favor of Lamb-Weston whose patent specified the dough was to be baked "at" 400° F.

Example of a Bad Patent Draft

Traditionally, a good patent makes the claims of an invention in the broadest terms as possible. To be more specific, writing a good patent means identifying what the invention is about in terms of existing products and describing it in a way that meets the client's goals. Identifying the "invention" given the existing or earlier product is not an easy task.

One typical example is the pop-tops found on soda cans. Years ago these cans had pull-tops that came off. The pieces that came off were typically sharp and known to cause injuries. The pieces, more often than not, seemed to find their way into lakes and streams where they caused damage to fish and other wildlife.

Eventually, someone came up with the idea of a pop-top that didn't come off. I'm certain he had a particular mechanism in mind, but the real contribution was more than the mechanism. The value of the "invention" was the idea of keeping top attached to the can. Unfortunately, the claim was not made as such. Instead, the complaint was that the invention required the tab to have a particular type of cross-section.

This example is one of thousand in which a bad patent draft gave too much of the wrong information and instead of creating an innovative and fruitful patent, resulted in an epic failure for the client inventor.

Frequently Asked Questions

  • Is it a good idea for an inventor to draft their own patent?

An inventor can write his own patent. However, that is usually not a good idea for several reasons. The result will likely be that the application is denied. The cost of filing is quite steep so that loss has to be financially absorbed. Also, even if you are successful, the scope of the patent is likely inaccurate. Therefore the patent is vulnerable to action. Hiring a skilled and knowledgeable patent attorney, even if only to consult, is a better idea than attempting a DIY.

  • What about using patent drafting software?

We cannot speak about specific products, but software, no matter how intuitive, cannot replace the counsel and collaboration of an experienced attorney. Carefully read the fine print when using software that makes claims about the success rate of filing patent claims. Consider the potential and likely costs of litigation and infringement suits down the road.

  • I have a provisional patent. Do I need to draft another?

A provisional patent application is only an informal document. It never issues as a patent. You have pending patent status, which means that further steps are needed to move from pendency to a full issuance. The primary purpose of a provisional patent is to give a filing date to the applicant who can later use that to claim priority during the formal non-provisional application.

  • What is the deadline for filing a non-provisional patent?

To retain the benefits of a provisional patent application, a non-provisional patent must be drafted to claim the advantage of the existing provisional application. It is filed with the USPTO within one year of the original provisional filing date, or the benefit is lost.

Steps to Drafting A Patent

Once you have selected a qualified patent attorney, the following steps prepare and file your patent.

1. The inventor to fills out an invention disclosure form. This is a questionnaire that includes logical inquiries to capture information that describes the novel and innovative features of your invention.

2. After reviewing your invention disclosure form, the patent attorney schedules a meeting to make certain they fully understand the technology, idea, or process you want to license. Take this opportunity to explore any other possibilities of your invention by expanding the scope. It is helpful to consider any future changes and improvements you conceptualize, as well as any other industries that could use your invention.

3. Creating sketches and drawings is an important step that you as the inventor are specially positioned to provide. If you have any background in engineering or drafting, you may be able to carry out this step by collaborating with your attorney.

You want to prepare free-hand drawings or sketches that help the examiner visualize the various elements of your invention. For system or product claims, this includes a broad system architecture. For processes or method claims, this includes any algorithms used. Include each claimed aspect of the invention. This step is important to help the attorney in structuring the patent claims.

4. Drafting the patent description finalizes the claims and figures. Then it is time for the patent attorney to describe each element in detail for each aspect of the patent claims.

5. Once all other parts of the patent application are ready, the "abstract" is written. This is a brief summary of your invention. All of the main elements are listed and kept as simple as possible.

6. Before the patent application is filed, the draft is ready for you to read. Review it thoroughly before signing off on the finished draft. Schedule one last meeting to go over any questions you have, whether it is the language of the report itself or any something related to the process and what to expect going forward.

The process of patent drafting is long and arduous. While it is possible to achieve patenting without an attorney, it is not advised. There are many pitfalls and dangers associated with patents issued without proper documentation. The failure rate of patent issuance increases drastically without the help of a lawyer.

Do you have a question about patent drafting? Post your patent or legal need on the UpCounsel Marketplace to ask questions and receive advice and recommendations. Our patent attorneys have an average of 14 years experience. Many obtained their law degrees from prestigious universities such as Yale and Harvard. They have worked with or for clients like Google, Stripe, and Twilio.