PREPARING A PATENT APPLICATION
Writing an effective disclosure is a key step in the process of filing a patent application. A good disclosure may serve to initially educate a corporate Patent Review Committee, so they can determine if the application is worth of the investment.
Sometimes this determination is a business decision, based upon a product line to be supported, available budget, and the current corporate philosophy of intellectual property. However, if the invention is to be judged upon its merits, then a good description of the invention is necessary.
Perhaps more important, the disclosure should also be the primary means of educating the Patent Attorney. The cost of initially filing a patent application is in the range of $7k to $15k.
The fees to be paid for filing the application are typically in the range of $1k to $1.5k, which means that the Patent Attorney is the primary cost driver. Therefore, the goal of the disclosure should be to minimize the time that the Patent Attorney must spend researching and “discovering” the invention.
At least a portion of the disclosure should be like a term paper written for an intelligent, but not especially technically sophisticated audience. A Patent Attorney rarely has the luxury of working exclusively in a single technical field.
Corporate management may also review the document. Although the PTO examiner will never see the disclosure, they may be unfamiliar with the technology, and so may require education in the subject matter, the basis of which may be found in the disclosure. Therefore, the disclosure should begin the explanation of the invention in a “big picture” context.
So, what’s a “big picture” description of the invention? If the invention is a new device, then the disclosure might explain the purpose of the device, what services it provides, how it’s connected, and the fundamental modules in the device.
If the invention is a particular circuit in the device, the reader may be unable to understand the circuit until it is placed in context of the device.
Some inventions are improvements on existing devices. This should be a relatively easy invention to explain, beginning with a general explanation of the prior art device.
Details of the prior art device, if needed for the explanation, may be easy to find in competitor specifications, technical publications, or issued patents. An “improvement” invention may come about as a result of known deficiencies in the prior art device – “it works well, except when…..”, or “it works well, but it is too slow…., or it has too parts”.
Then, the disclosure can introduce the new invention as an answer to some of the known deficiencies. In some cases the inventor can simply modify the prior art schematic diagrams or timing diagrams to show their invention.
An invention may be “revolutionary” if it replaces a preexisting device, process, or protocol, or if it is entirely new. In this case, an explanation of the prior art may not be especially relevant (i.e., there is no prior art).
Regardless of whether the invention is revolutionary or an improvement on an existing technology, the disclosure should emphasize at least one circuit or process step that differentiates the new invention from the prior art.
This point of novelty should follow naturally from the “big picture” view of the prior art and the new invention. For example, “the prior art device is made up of 5 basic modules (A, B, C, D, and E). Our device uses modules A, B, C, D, and F.” Or, “our device combines the functions of modules A and B into a single module.”Or, “our device performs the function of module A in an entirely different manner”.
Any advantages (e.g., cheaper or faster) associated with the new invention are not necessarily patentable, but they might point to novel subject matter.
For example, it may be difficult to patent a new invention device simply because it is faster or smaller than a prior art device. However, the faster speed may be the result of a novel circuit or a novel process, which may be patentable.
Drawings such as block diagram, schematic, flowcharts, and timing diagrams are usually very helpful. To help orient the Patent Attorney, the detail of the diagrams can be layered. The “big picture” view of the invention may be expressed as three or four interconnected blocks. More detailed views will then make more sense in the context of the simple block diagram.
In the case of a corporate applicant, the corporation may have a policy either encouraging or discouraging the inventor from engaging in prior art searching. If so, the inventor should follow that policy.
Generally, the inventor is under no obligation to the Patent and Trademark Office (PTO) to perform any kind of search. On the other hand, if the inventor knows of relevant prior art, they have an obligation to make that art known to the PTO.
While opinions differ on the subject, it is probably better to know what prior art is out there, than to be ignorant and just hope that the invention is novel.
Due to the “blackout” period between the time when an application is filed, and the time it is published (or issued), it may be impossible to determine the current state of rapidly progressing technologies.
The PTO maintains their own website (patft.uspto.gov) for searching issued patents and publications (patents applications in progress). However, the Google Patents site (https://patents.google.com) is a more effective search engine. Professional patent search organizations also exist, at a cost in the range of $500 to $1000. There are advantages to both professional and inventor searches.
The professional is more familiar with searching techniques, while the inventor may know of particular databases related to the invention subject matter.
Further, while the professional is time constrained, the inventor may be more motivated. Searches are typically based upon the use of keywords, which may be joined by a connector such as “AND” or “OR”, in a manner similar to a conventional Google search.
Prior art refers to information that is publicly available before the date on which a patent application is filed. Typically, the information is in the form of a printed (paper) or digital medium.
Some examples of prior art include US Utility patents, foreign patents and Patent Cooperation Treaty (PCT) publications, patent publications, scholarly papers, magazine articles, textbooks, sales brochures, product application notes, and product specifications to name a few examples.
Prior art can also include publication and patents authored by the inventor. As mentioned above, prior art can be material that provides a general background to the invention subject material.
It can also be material that shares some common characteristics with the invention, or (hopefully not) material that exactly matches the invention subject matter.
In summary, the Patent Attorney is working at a steep hourly rate, and the price of the application may be significantly reduced if the Attorney does not need to do a significant amount of research in attempting to understand the prior art and the subject of the invention.
In other words, you want to give the Attorney a map that both paints a broad picture, and points to technical details that can be pursued, before you press the switch that starts his hourly rate clock.
Writing the Application
Claims: One of the punishments for writing a poor disclosure is having to spend a lot of time meeting, talking, and corresponding with the Patent Attorney.
If the disclosure is well written, the Attorney may be able to begin the process with simple phone call, just to check if everything important made it into the disclosure, or if there are new developments.
Although the disclosure may provide the basis for the specification and drawings, the “heavy lifting” for both the Attorney and inventor comes in the writing of the claims. The claims are the mechanism for defining the boundaries of the invention.
More specifically, the claims define the products or processes that can’t be made by the public without the inventor’s (applicant’s) permission. A claim is a peculiar form of the English language that summarizes the invention is a single sentence.
A typical claim includes a preamble, which introduces the subject matter of the claim, and a list of necessary elements. To cover as large a field as possible, the elements are described as broadly as possible. An application claim may describe just one of the elements with sufficient specificity to be distinguished from the prior art.
One goal in writing claims is to minimize the number of elements in the base claim. If the claim describes a device, then only the “primary” elements needed to support the basic function of the device need be described in the base claims.
Additional device elements can be added in the dependent claims (claims depending from the base claim). Further, additional details of the primary elements can be added in dependent claims.
For example, the inventor has come up with a novel invention called a chair.
Their most practical design includes 4 legs and back support. However, the inventor acknowledges that the chair would work with only 3 legs, and without the back support. Therefore, the base claim may read as follows:
1. A portable sitting device comprising: a seat with top and bottom surfaces; and, three legs, orthogonally mounted from the seat bottom surface.
Claim 2 may depend from claim 1 and introduce a fourth leg. The patent application is claiming 2 types of chairs, with the chair of claim 2 being a narrower aspect of the invention (because it includes more limitations or claim elements). In a sense, each claim is a separate invention.
Claim 3 may depend from claim1 and introduce the back support. Claim 4 may describe the legs as having a particular length or shape.
This kind of “layered detail” claiming is practiced for a number of reasons. There may be multiple variations of the invention. Ideally, the base claim can be written to describe all variations, while the variation details can be presented in the dependent claims. Further, the dependent claims can be seen as “fall-back” positions. Using the above example, if the PTO examiner finds prior art for a three-legged stool, then a patent may still be obtained for a four-legged chair.
There are different philosophies for claim writing. One method is to write a set of device or system claims that describe the invention as a collection of connected electromechanical parts (nouns), while another set of method claims describe to invention as a process (verbs). The description of a device or circuit as a process may initially appear to be artificial, but at a minimum, it “forces” an understanding of how the device elements work together. Ideally, a method claim can describe the operation of device without necessarily naming every electromechanical part.
If the functions are adequately identified, the method claim may open the door to the broad coverage of the invention by more than one technology. A method claim may help identify the most important element in the device, and so aid in the drafting of well-focused device claim.
The device or system claims may attempt to describe the invention by listing and connecting the primary elements. Ideally, the device claims are written without “functional language”. Functional language explains the purpose of a claim element.
In theory, function language is not given and a patentable weight by the PTO, and a device claim written without functional language should stand up more securely in the event of subsequent litigation.
The best practice in writing the claims is the one that takes the most time, as the inventor and Attorney review each other’s work over the course of a number of iterations. After reading the disclosure, the Patent Attorney must determine the best way to structure the claims of the invention.
In the case of a simple electrical circuit or chemical process, the structure may be obvious. Other times, the Attorney must determine if the invention is best described as a system, a component of the system, a method of fabricating the system or component, a method of using the system or component, or a combination of these structures.
Once a structure is determined, the Attorney writes some initial claims for review by the inventor. A majority of the energy is directed to the base or most general claim.
As the Attorney may struggle understanding the invention technology, the inventor may struggle in following the unique form of English language that is the claim.
Further, while the Attorney struggles to capture the point of novelty in the invention in its most general form, the inventor may wonder why the claim does not exactly match their engineering schematics. Once the base claim is agreed upon, details of the invention are added using the dependent claims.
The issue here may be in determining which details are important, and how many claims are required. Filing more than 20 claims incurs extra filing fee costs.
Background: Optionally, the patent application may include a description of the prior art. Even if the inventor has not researched potential prior art, or hired a professional search to be performed, the inventor’s disclosure should at least provide some general context for the invention and the kind of problems the invention is designed to solve.
This information should be included in the Background Section, and can be helpful to the Patent Attorney and PTO examiner, as well as to a judge in an Appeal or in litigation. More specifically, it can be helpful to use the Background Section to explain how seemingly similar prior art references can be distinguished from the invention.
Summary of the Invention: The Summary explains at least the base (independent) the claims in plain English, without all the details provided in the Detailed Description Section (see below). Often times the Summary is presented to a jury if the patent is litigated. Further, a portion of Summary is often used as the Abstract Section.
The Abstract appears on the cover of an issued patent or patent publication, and is limited to 150 words. The Abstract is often the portion of a patent that is returned in response to patent searches.
Detailed Description: The Detailed Description includes the specification and drawings. Once the claims are written, the specification is prepared, tailored to expressly describe the claims, including examples, definition of terms, and a clarification of how the limitations and phrases in the claims should be interpreted.
Once explicit support for the claims is created, additional details from the inventor’s disclosure can be added. Ideally, the disclosure adds examples and supporting scientific principles. Although the added disclosure details can be somewhat redundant, they may describe the invention using slightly different, but non-contradictory language.
For example, the added details may have more of an engineering perspective. This more detailed perspective may help convince the PTO examiner of the legitimacy of the invention.
Good and plentiful drawings are important, as the old adage about a picture being worth a thousand words is true. In fact, good drawings have been known to “save” a patent application when a complete supporting written description is lacking.
It is a PTO requirement that every element of the claimed invention be depicted in a drawing. The drawings may be block diagrams, schematics, flowcharts, or perspective views of the invention. As in engineering documentation, the drawings may be layered to bore down from the general to the very specific.
“The information and opinions expressed here are not intended to constitute legal advice, but are presented for informational and educational use.”