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Quality Patent-Drafting
There Is No Forest Without The Trees

What Is a "Well-Drafted" Application?

An invention is an idea, a concept for something new and useful. One role of a patent application is to convey the essence of the invention, the core features which are novel and non-obvious. A concept (and a system or method) can often be artfully captured in few sentences, and that is in fact one of the goals of claims drafting.










However, as sole disclosure (the written description of the invention), that same "handful of sentences" alone may have difficulty distinguishing over prior art, especially under the withering scrutiny of a patent examiner or a court of law. A well-drafted application replies on details to flesh-out and support the essential concept. A thorough patent application may include:

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Detailed background, to provide context for the novelty of the invention.

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Detailed operational context, describing the larger technical environment in which an invention operates. Especially essentially if the invention is integrally linked to supporting or enhancing that environment.

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Redundancy: Thorough discussion of enabling features may sometimes include explaining a given element, or a functionally related group of elements, in more than one way. Should one explanation be deemed (rightly or wrongly) as incomplete, unclear, or inadequate, an alternative explanation may fill the gap.

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Alternative embodiments, both major and minor variations. Helps establish broader claim scope. Helps provide material for claim amendments if the prior art is at all "close."

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Ambiguity avoidance: Ensuring the all terms and all features can be understood without vagueness. This often entails defining even terms which may be generally known or understood in the art. The goal is to ensure the terms are understood—in the context of your invention—as best serves the needs of the invention and the application.

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Concrete example(s) of general methods. Describe, and preferably illustrate, specific examples of how the invention functions, whether it's how the invention works with specific input to arrive at specific output, how the invention interacts with the user, or how the invention interacts with its environment. This is especially helpful for software applications, but may apply in other contexts as well.

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Layers of methods: If a method could be explained, in outline, with one flowchart, but will be explained in greater depth with two or three, use two or three. Often, methods have layers of detail, steps within steps. It's time saving to illustrate only the highest or broadest level in a flowchart, and explain the rest in text. It is clearer and more effective to flow-chart the additional layers or details.

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Drawings: If something can be explained strictly in text without a drawing, but a drawing would likely contribute to easy comprehension, include the drawing.
 

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A carefully crafted patent application is not just "more of everything." A strong application has a narrative. The narrative helps an Examiner, a judge, or a jury understand the reasons for the invention: why the invention was needed and how it stands out from a crowd of apparently similar art. Part of narrative is simply good organization, but there is an element of story-telling to effective patent drafting. It's an art.  

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Cost-Benefit Tradeoffs: A more detailed patent application of course takes longer to write, and this may result in higher drafting fees. Each client has to weight the potential long-term benefits of thoroughness against the realities of current budgets.

Inventions vs. Products, and Your Patent Strategy

You may have a product, a particular item your company is introducing on the market, which is inventive.  Or your new product may fall in a well-known category, but with a novel, inventive feature for which you seek protection.

You could file an application on the product only, or file a patent application on the novel feature as it works with that one product. But from a long-term view of protecting the full scope of your intellectual territory, and from the view of future transactional value, your invention is more than just your product.

Your invention is an idea for an improvement, as applied across as a large a technical context as can be reasonably claimed.

This is why, to get the full benefit of your application, multiple embodiments should be disclosed in some detail.

One Fortune 50 tech corporation used to have a minimalist policy on patents, each application covering just the bare bones of the invention. They've were successful at it for decades. This very large company preferred to save their IP money on the front end. That strategy is not suitable for every company.

The alternative is to file top quality patent applications up front for most inventions, or for selected, key inventions. A thorough, well-drafted patent application has an improved chance (compared to a "bare bones" application) of providing foundations for arguments over prior art, and also has more extensive bases for claim amendments if needed.

Alternative embodiments may also provide a strong foundation for filing continuations and divisionals. Preparing continuations and divisionals is typically less expensive than preparing an entirely new application (since the disclosure and drawings are in place already - the new applications mainly entail just new claims).

Potential Benefits (there are no guarantees...)

The goals of filing a strong patent application include:

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Making life easier for both the Examiner and for the attorney(s) who prosecute the application.

 

The Examiner knows nothing about the invention to start, and has limited time to review and write Office Actions. The more cues the application provides, the easier will be her/his job.

 

Due to the years-long delays between filings and a first Office Action, the attorney who prosecutes may not be the same attorney who wrote the application. The more complete and clear the application, the easier it will be for later attorneys to get up to speed and understand how to prosecute the application.

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Facilitating prosecution, potentially resulting in fewer rounds of Office Actions.

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Provide transactional attorneys with a stronger product and more leverage.

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Provide litigators with more material, and stronger material, to argue on behalf of a patent (or patent application).

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Potentially More Robust IP Protection: An issued patent is at it's most valuable if it tends to dissuade challenges, stands up to challenges, has the widest possible scope consistent with the actual invention, and further has potential transactional value.

The Pursuit of Real IP Value

A thorough application takes more time to draft. Working with a sole proprietor helps lower overhead costs. The goals are to have reduced rounds of prosecution (and prosecution costs), get a patent issued, and avoid litigation or minimize litigation costs if they arise. 

In the past decade, especially since the financial shudders of the housing market collapse (circa 2009), there have been pressures on budgets in all areas of business. One affected area is patent drafting, where patent applications have come to be viewed as commodities. This has caused even the most skilled, dedicated patent practitioners to experience pressure to keep patent application "short and sweet". 

But patents are legal documents Each application (and issued patent) provides the framework within which the novelty and non-obviousness of an invention is assessed relative to carefully identified and selected prior art. Brevity is not always consistent with quality.

Spending more money up front for a subjective work product always entails calculated risks and cost/benefit analysis which can only be made by you, the client. But careful, deliberate patent drafting, leading to a stronger application, may provide a shorter, more promising route to issuance, issuance as quickly as possible, sustainable issuance, and breadth of protection.

No Guarantees and No Warranties

Every invention is unique, and every patent application is unique. The potential prior art is also highly idiosyncratic from one application to another. As such, experienced companies, inventors, and IP professionals realize that no assurance can be made that a patent will actually issue from any application. Even if a patent issues, there is also no assurance that the patent will be sustained under post-grant review or litigation.

Sometimes even an idea that required stunning cleverness (and often hard work!) by the inventors, and entailed no notion on their part of similar prior developments, still proves in the end to have been anticipated, or rendered obvious, by prior art. Sometimes it may be a close call; the determinations of patent examiners and/or the rulings of administrative judges, juries, and/or courts may come out in ways that are other than hoped for.

Oppenheimer Patents cannot and does not provide any assurances, guarantees or warrantees as to results in terms of patent issuance; sustainability under challenge; patent value in terms of protection against competing products or infringers; sustainability under charges of infringement; or patent value in transactional terms (potential sale or licensing of IP, potential assignment of IP, potential enhancement of assignee company value, etc.).

 

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