patent drafting tips

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Module 7: Patent Administration and Management

Patent Drafting

Karl RacketteFreiburg, Germany

[email protected]

Patent Drafting2EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

He who asks

questions,

cannot avoid the

answers.

Cameroon Proverb


Basic Idea underlying the Patent System

• In exchange for a limited-term right to exclude others from making, using or selling an invention in a country,

• the patent applicant must provide according to the laws of that country

• a complete and accurate public description of the invention and

• define in a set of valid claims the scope of protection requested.

• This provides others with the ability to use that information to invent further, thus pushing technology forward for the benefit of society.


Patents

Patents reward disclosure rather than secrecy.


Where do inventions come from and go to?

• Where do inventions come from?

– single inventors alone or in cooperation

– production and service companies of all sizes

– private and public research laboratories

– University research laboratories

• Where do inventions go to?

– „down the drain“ (published too early or abandoned)

– kept as secret know-how (sometimes best strategy)

– disclosed to at least one patent office in order to apply

for exclusive patent protection

– enter the market as new products


Patent Drafting as the Important Step

Failure?

Success?

Enforcement

Commercialization

Grant and publication of the patent

Prosecution of the patent application

Drafting and filing of a patent application

Crystallizing the idea behind the invention

Finding a solution for a technical problem


For drafting patent applications it is important

• To understand the invention

• Find the gist of the invention

• Find the right embodiments

• Find the right words, terminology and sentences to

describe the invention (WORDS are POWER)

• Have imagination how competitors could avoid the

claimed invention but still take advantage of its

teachings (foreseeing the future)


Claiming an invention

• What is the new invention?

• Claims must contain the technical features essential

for solving a particular objective problem

• What is the desired scope of protection?

• (Where is the protection needed?)


Patent application (1)

• The first step in securing a patent is the filing of a

patent application.

• The patent application generally contains

– the title of the invention, as well as

– an indication of its technical field; it must include

– the background and

– a description of the invention, in clear language

and enough detail that an individual with an

average understanding of the field could use or

reproduce the invention.


Patent application (2)

• Descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention.

• The application also contains various "claims", that is, information which determines the extent of protection granted by the patent.

• Abstract

• Other formalities (request, fees, designation of inventor ...)


Disclosing an invention to a patent office in view of patent protection requires:

• Spotting the invention or inventions

• Generalizing each (new and promising) invention

• Finding the right words to define each novel generalized invention => claims

• Describing in detail each invention (with words and drawings) in such a way that the reader skilled in the field to which the invention belongs could copy and make use of the invention => description, drawings, abstract


The 10 steps involved in patent drafting

1 Spotting the invention

2 Generalizing the invention

3 Drawing one or more figures showing the invention

4 Arranging the figures of the drawing in a sequence

5 Deciding on the terminology to describe the invention

6 Drafting the claims

7 Drafting the detailed description (reference numerals)

8 Inserting the reference numerals in the claims

9 Writing the introductory part of the description

10 Writing the abstract using the reference numerals


Hair Dryer with Travel IronStep 1 and Step 2

Spotting and Generalizing the Invention

What is the invention?


Hair dryer with travel iron(prior art)


Inventor‘s travel iron (perspective view)


Attachment (perspective view)


Attachment (top view)


Attachment (bottom view)


Attachment (side view)


Step 1: Spotting the invention

• Before taking the steps necessary to protect a particular invention, you need to find that particular invention.

• What the inventor brings to you is only an example(embodiment) of his/her invention.

• The inventor generally does not really know what the invention is – usually the inventor thinks the prototype/embodiment is the invention, but it is not!

• If you are to protect his/her invention, you need first to identify what that invention is about.

• It is not uncommon for there to be more than one invention within a single prototype/embodiment .


Step 1: What is the invention?

• What are the differences between the closest prior art

and the invention that you can spot?

(or catch, detect, determine, discern, discover, distinguish, find,

isolate, identify, notice, make out, locate, perceive, pick out,recognize, single out etc.)

• What are the technical effects of the differences

identified?

• Which specific difference has the technical effect that

seems to be the most important one?

(most significant, most substantial or most unexpected one)?


Step 1: How to spot the invention.

• If there is a novel invention

(only novel inventions are worth considering),

it must involve at least one feature which

distinguishes the prototype (embodiment,

example) from what is already publicly known.

• But not every new feature in the example is

useful to define the invention. You need to

identify the new feature(s) or combination of

features which provide the “trick” of the invention

(inventive step requirement).


Step 1: How to spot an invention.

• Find a sole new feature

• Find a new combination of known features– the hard part is deciding which few elements of the

combination are needed to get the desired benefit.

– Note: If A, B, & C are all already known in the art but have previously only been used individually, the combination A+B+C is novel.

• Identify what problem did the inventor intend to solve and what problem he did objectively solve.


Step 1: Look for the trick of the invention.

• What is the “trick” of the invention – how would you summarize the invention in one or two sentences?

• The “trick” or “gist” of the invention is related to the technical effect, advantage or benefit which the invention provides over the closest prior art.

• Identify the most commercially important advantage(s) of the invention?

• What needs to be there to achieve that advantage.

• It is sometimes helpful to use a finger to show wherein the drawing (picture) the important feature of the invention can be seen.


Step 1: What provides the benefit or trick?

• Generally the person drafting the patent application has to analyze the prototype to see which of its features work together to provide the benefit. You need to consider carefully the accuracy of what the inventor says.

• If there is more than one advantage you need to consider if they are due to the same distinct set of features.

• If different advantages come from some quite distinct sets of features, then they are likely to belong to separate inventions.


Step 2: Generalizing the embodiment of the invention

• Once we have spotted the specific feature or combination of features important for the invention we are still not quite ready to draft our main claim.

• We need to generalize the important feature(s) and crystallize what we think the general idea underlying the invention is.

• This can be done once a narrow main claim has been drafted and is reviewed (several times).

• It is important to generalize the concept of the invention by concentrating on the essential features, by using broad technical concepts, broad language and by avoiding unnecessary limitations.


Side view of the travel iron with one plate 2a (1rst embodiment)


Side view of the travel iron with two plates 2a and 42 (2nd embodiment)


Bottom view of the attachment


Top view of the attachment


Steps 3 and 4: Drawings

• Drawings are required when they are necessary for

the understanding of the invention.

• To make patent drafting easier, it is good to have a

sensibly ordered set of drawings which move from a

broad overview, via intermediate drawings to those

that show the details of the invention.

• Flow sheets and diagrams are considered drawings.


HangerSpotting and Generalizing the Invention

What is the invention?


Hanger (Prior art 1)


Hanger (Prior art 2)


Hanger (invention)

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Exercise tospot and generalize (identify)

an invention in order to prepare the

drafting of broad claims

for a patent application

A Tea pot ?


Tea pot with one spout


Questions to the inventor in view of the identification of the invention (1)

• Did you or anyone else make a written or oral publication or disclosure regarding any aspects of the? (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?


Tea pot with two spouts and two cups


Tea pot with two spouts ???


• What prior art does exist concerning the invention?



Tea pot 1


Tea pot 2


Tea pot 3


• What single piece of prior art is the closest to the

invention?



Tea pot 1 Tea pot 2 Tea pot 3

Tea pot of the inventor


• Why tea pot 2?



• What is the difference between the closest prior artand 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 inventive step?

• Are there any other applications of the invention?

• What is the aim of the invention?

• What technical problem was solved by theinvention?



• 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?




• Is there another way to arrive a 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 the Inventor for Identifying the Invention (10)

• 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)


Step 5: Deciding on the terminology to describe the invention

• When writing the description it can be helpful to have a set ofdrawings to hand which you have labeled with the names of the

parts shown in the drawings.

• Write down (together with the inventor) next to the figures of

drawings what they show

• Write down next to each element shown in each of the figures how these elements are called by the specialist and how they

could be named in broad terms (e.g. instead of copper wire it might be electrical conductor)

• Use dictionaries and/or published patent documents downloaded from the internet


Step 6: The Claims

The claim or claims shall define the matter for which

protection is sought.

Claims shall be clear and concise.

They shall be fully supported by the description.


Claims

A series of numbered statements

in a patent specification, usually following the

description, that

define the invention

and

establish the scope of the monopoly conferred

by the patent.

Each claim consists of one sentence starting

with a capital letter and ending with a full stop.


Independent Claims

• At least one such statement (usually the first) will be

self contained - this is known as an independent claim.

• The first independent claim may be called the main

claim


Dependent Claims

Claims that refer to previous claims

using wording such as

”... as claimed in (or as defined by, or according to) claim 1 or claim 2...”

- these are known as dependent claims.


The Claims

• The number of the claims shall be reasonable in

consideration of the nature of the invention claimed.

• If there are several claims, they shall be numbered

consecutively in Arabic numerals.


The Claims

Claims shall not, except where absolutely necessary,

rely, in respect of the technical features of the

invention, on references to the description or

drawings.

In particular, they shall not rely on such references as:

"as described in part ... of the description," or "as

illustrated in figure ... of the drawings."


The Claims

Where the patent application contains drawings, the

technical features mentioned in the claims shall

preferably be followed by the reference signs relating

to such features.

(they may be inserted later after having drafted the detailed description)

When used, the reference signs shall preferably be

placed between parentheses. If inclusion of reference

signs does not particularly facilitate quicker

understanding of a claim, it should not be made.


Manner of Claiming

The definition of the matter for which protection is

sought shall be in terms of the technical features of

the invention.


Manner of Claiming

Whenever appropriate, claims shall contain:

(i) a statement (preamble) indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art,

and

(ii) a characterizing portion.


The characterizing portion of a claim

• is preceded by the words

"characterized in that," "characterized by," "wherein

the improvement comprises," or any other words to

the same effect—

• and states concisely the technical features which, in

combination with the features stated in the preamble,

it is desired to protect.


Dependent Claims

• Any claim stating the essential features of an invention

may be followed by one or more claims concerning

particular embodiments of that invention

• Any claim which includes all the features of one or

more other claims shall do so by a reference, if

possible at the beginning, to the other claim or claims

and shall then state the additional features claimed.


Dependent Claims

• Any dependent claim shall be construed as including

all the limitations contained in the claim to which it

refers or, if the dependent claim is a multiple

dependent claim, all the limitations contained in the

particular claim in relation to which it is considered.

• All dependent claims referring back to a single

previous claim, and all dependent claims referring

back to several previous claims, shall be grouped

together to the extent and in the most practical way

possible.


Step 7: Purpose of the description.

• to disclose and teach the invention;

• to support the claims;

• to provide the basis for interpretation of the

claims;

• to provide a context within which to view the

claims; and

• to provide basis for future amendment of the

claims (during prosecution or litigation).


The description

• shall disclose the invention in a manner sufficiently

clear and complete for the invention to be carried out

by a person skilled in the art.

• describe in detail at least one way of carrying out the

invention claimed;

• this shall be done using examples where appropriate

and with reference to the drawings, if any


Reference signs (numerals)

• When drafting the detailed description with reference to the figures in the drawings it is good practice to compile a parts list making sure that for each feature shown in the figures always the same reference numeral and same terminology is used. (The terminology might be based on the notes made earlier on the drawing copies or on the claims cf. Step 5)

• Later reading of the description is made easier if each feature when mentioned for the first time in the description gets a higher number

• It is possible to start with a number higher than the highest figure number and use only odd or only even numerals (in case features were overlooked)


The description

• In order to make it easier to describe the invention

and in order to facilitate understanding, set out your

material as though you were telling a story.

• Start with the big picture and work into the detail of

the invention.

• This means that you should describe the context of

the invention, then the main structure, before you

start to describe small details of the invention or a

particular embodiment.


The description

• When you describe the invention, ensure that you give

its context. Start with the big picture and work into the

detail of the invention.

• Do not throw the reader right into the heart of the

invention - lead the reader progressively along a

logical path with no sudden changes of direction.


Support

• When you are drafting a patent remember that this

is the only chance to put information into the description.

• Now is the time to add basis for later claim

amendments as well as support for the claims as they

are first written.

• If you want to get broad claims granted and for them

to be enforceable, disclose the invention across the

whole scope of your claims. If you have broad

independent claims, bear this firmly in mind.


Alternatives.

• When writing the description, you should

describe a concrete embodiment (e.g. what

is shown in a drawing).

• Describe what is shown and only then refer to

alternatives, rather than doing this while

notionally describing what is shown.

• The description should, however, be written

so as to be intelligible without looking at the

drawings.


No matter can be added after filing

• The effective scope of the claims will also be influenced by what you have said, especially in your introduction.

• What you say in your description, not just the introduction, will influence the patent office examiner and the prosecution of the application.

• The description is the source of all allowable amendments during prosecution of the patent application – no matter can be added after filing. So what you say right at the start of the patenting process is very important.


Step 8: Inserting the reference numerals in the claims

• When the detailed description is finished it takes only

a little time to insert the reference signs or reference

numerals into the claims drafted earlier.

• The parts list made during the drafting of the

description can help to avoid errors or omissions


Step 9: Introductory part of the description

• The description shall first state the title of the invention

• specify the technical field to which the invention relates;

• indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding,

searching and examination of the invention, and, preferably,

cite the documents reflecting such art;


The introductory part of the description

• disclose the invention, as claimed, in such terms that

the technical problem (even if not expressly stated

as such) and its solution can be understood, and

state the advantageous effects, if any, of the

invention with reference to the background art;

• briefly describe the figures in the drawings, if any;


Technical field.

• This and the title should be consistent with the

preamble of the independent claim.

• If you make this narrow, you will similarly limit the

independent claim (at least in Court) possibly to

less than the claim seems to cover.

• If you make this broad, you will not broaden the

claims beyond what they seem to cover, but the

patent office should search across the entire field -

exposing you to more prior art during examination.


Background or prior art discussion.

• The way in which you describe the problems with the prior art influences the way in which the invention will be understood.

• If you identify problems in the prior art, the assumption is that your invention solves them all.

• Consequently, something which does not solve all the problems may be considered not to be covered by the claims of the patent. So, make it clear if the invention only solves some of the problems. It is often better not to mention problems which remain unsolved.

• If you reduce a problem but don’t (always) eliminate it, make this clear.


Advantages of the invention

• The identification in the description of advantages of the invention can be very helpful in showing the invention in a good light.

• You should not suggest that the invention always provides all the advantages, unless you want to restrict the protection of the patent to things which do this.

• Associate the advantage(s) with the features which give that advantage(s).


Step 10: The abstract

• Intended to help searchers know what the

patent is about.

• 150 words maximum.

• Often based on the main claim, but this is not

always helpful.

• Unlike the other parts of an application, does

not contribute to the disclosure of the

invention.


Following Step 10: Review

• When you have finished your specification

(complete description, claims, drawings,

abstract) review it, particularly with reference to

the language of the claims.

• Are all the features mentioned in the claims also

present in the description?

• Have you explained how the embodiments or

elements of the invention interact or can be used

together?


Cake Cutter

Exercise


Cake made of several layers


Cutting a cake into horizontal slices


Prior artPrior art 1:Using a string or a knife to cut horizontal slices

Prior art 2:

A cake cutter comprising

- a single straight thin metal wire adapted for cuttinghorizontally through a freshly baked cake

- an inverted U shaped metal frame made out of a thickwire and being provided with a handle in the middle

- the frame having two legs with notches near itsfree ends for engagement with connector provided at the ends the thin wire


Invention as explained by inventor:Cake cutter with two wires cutting through cake


Cutting through the cake


Three slices before using whipped cream


Drawing made by the inventor


Photo: twisted cutting wire


Photo showing connector of lower cutting wire and

cap on end of one of the legs of the frame


Photo: cutting wire section


Capture your thoughts.

• When “invention spotting” it is a very good idea to

capture your thoughts as they occur to you.

• Use a piece of paper (flip chart, whiteboard,

blackboard or laptop) to capture your thoughts

before you test them. You can see patterns in your

collected thoughts that you would not see if you

filtered your thoughts before you capture them.


What did we find?

• What are our choices?

• What can we reject?

• Which of the ideas looks most promising?


– Some drawings useful to explain the invention

– One independent claim defining the invention

– Several dependent claims defining fall back positions

– An introductory part to the detailed description

• explaining the background and the prior art,

• the problem to be solved by the claimed invention,

• the inventive solution of the problem and

• the advantages of the claimed invention

– A detailed description explaining the drawings

Please prepare:


Thank you for your attention!

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