Writing patents is an art, and an evolving one at that; it takes years—even decades—to master. We recommend hiring a registered patent attorney or patent agent to draft your patents (rather than learning how to write a patent yourself), which can help you avoid getting this warning from your patent examiner:
An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an applicant may prosecute the application (except that a juristic entity must be represented by a patent practitioner, 37 CFR 1.31), lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.
Even worse, you could be under the impression that you do hold a patent, only to be devastated by a misunderstanding—or a typo. In Altera Corp. v. PACT XPP Tech., Altera was able to beat an infringement charge when it found that a PACT claim contained the word “haltered.” Was it meant to be “halted” or “altered”? The judge decided that the true meaning was not obvious; a single typo rendered the claim invalid.
A good defense, and your mark of novelty, depends solely on the document that presents it.
1. Rely on a Professional
With these scenarios in mind, we reiterate our first tip for writing a patent, already mentioned above: rely on a professional to do so.
Innovative thinkers and prolific inventors are not necessarily good technical writers. Yet, when you choose to release your idea to the public domain, you need to ensure that other people can understand it. If your reader is confused about what’s included in your patent, the document is not serving its purpose. To ensure your intellectual property rights are protected, turn to a registered patent attorney or patent agent.
The inventor develops the methodology. Then, a patent attorney or agent helps show the implementation in a clear and obvious way. The right drafting partner excels at both communicating the broad concepts of your technology and implementing the small grammatical and formatting details that make a difference.
Of course, working with a patent attorney or agent will be easier if you have an understanding of what makes a good patent. The remaining tips here will help you help your professional drafting partners write successful patents.
2. Conduct a Thorough Prior Art Search
It might feel impossible to uncover and understand all the relevant prior art, but it’s critical to the success of your patent. Using both semantic and Boolean search techniques helps ensure your search includes every possible search input, including all relevant words—terms, keywords, translations, synonyms, and similarities—along with relevant assignees, inventors, industries, categories, and technical patent office classifications.
3. Draft Broad Claims
To qualify as infringement, an offending technology must include every element recited in any one claim. Every word introduces an element of your invention the competition can potentially eliminate or design around to avoid infringing your patent. So, make your claims as broad as possible.
Certainly, you need to include at least one element that distinguishes the claim from the prior art. At the same time, don’t include any detail that isn’t necessary to describe it in the broadest sense. Otherwise, you introduce a needless limitation, which creates an opportunity for an infringer to escape liability by leaving it out of their competitive product or process.
4. Align Claims and Specification
Every patent must include a detailed written specification (usually drawings) and an exhaustive technical description of how the invention is made and how it works. When writing your patent claims, be sure every characteristic you claim and every term you use is included and explained in the specification. If any aspect of your claim is not described in the written specification, it could create grounds for invalidation. Even if the original patent examiner doesn’t notice and your patent is approved, a competitor may discover the lack of support in the future and could use it to invalidate the claim.
5. Stack Your Claims
Think of your patent claims as a game of Jenga®. If a competitor knocks out one of your claims, you want to have built a tower of claims so that, if challenged, at least some remain standing—and hopefully cover the competitor’s device or process.
The English language is not perfect and words are subject to interpretation, so the more claims in your patent, the better. For example, an independent claim may be interpreted more narrowly than intended, making it easier for the competition to avoid infringement. But written another way, it could be interpreted more broadly and keep the competition at a distance.
You can stack your patent with numerous claims by defining your invention in different ways using several independent claims, which stand alone, and dependent claims, which refer to and incorporate the limitations of other claims.
6. Clarity is Critical
To protect your intellectual property, whether you are writing a full application for patenting or an invention disclosure for publishing into the public domain, clarity is critical. When writing a patent, these three concerns often introduce inconsistencies. Keep them in mind when drafting patent claims.
Both too much and too little detail can hinder a reader’s understanding of your idea. Get to the point: state the problem, define the solution, and delineate the points of novelty. When you are describing your invention, assume a common denominator of knowledge and remember the rules of enablement. An enabling document allows any person skilled in the pertinent art to practice the invention without undue experimentation. However, if you do not offer enough detail, the reader is forced to make assumptions, interpreting what they think an implementation should look like. Provide enough information to illustrate that your solution is valid.
If you have a pronoun in a claim and the reader cannot easily identify what that pronoun refers to, you have an ambiguous antecedent. This could occur in a single sentence or throughout the descriptive text. For example, in the statement, “The new configuration consumed 20% less space than the previous design. It had a footprint of 12 square feet,” does “it” refer to the new configuration or the previous design? It is not obvious. Someone with basic skill in the art must be able to read the claim and understand the scope; an ambiguous antecedent often prevents this.
Another problem is the use of personal pronouns when describing method steps. When the writer fails to define the pronoun, the reader is left to guess. To avoid this type of ambiguity, remove the personal pronouns and state exactly who or what performs an action.
Grammar and Spelling
Seemingly minor errors can have major consequences. Don’t leave yourself vulnerable to patent application rejection or infringement because you meant to say one thing, but actually wrote something else. Never proofread or copy edit your own work. Your best option is to have a professional, non-bias review of the document.