Patent Drafting Mistakes – How to avoid them

Patent Drafting Mistakes – How to avoid them

Let us understand what is Patent drafting before we get into the common mistakes that one should avoid while application drafting.

Patent drafting is the process of writing patent specification that clearly and sufficiently describes an invention. It is a very crucial step in the process of patent filing.

Further, the chance of getting a patent grant depends largely on the quality of drafting of patent specification.

A complete patent application includes various sections that form the part of a patent specification. The Patent Office defines these sections and include Title of the invention, Field of the invention and Background of the invention. They also include Summary of the invention, Brief description of the drawings, Detailed description of the embodiments and Claims.

The claims are the most important part of the patent specification and define the scope of protection of the invention. In other words, the claim points out the novel and inventive aspects of the invention. That is, the aspects that makes the invention worthy of patent protection.

Also Read: Tips for Inventors/Startups Who Wish To Secure IP Protection For Their Inventions in A Low Budget

Patent drafting mistakes

Although a patent specification seems like a general document describing an invention in detail, it is much more than that.

A patent specification is a techno-legal document. Through this document, an invention and the scope of protection of the invention is identified. As the patent application is of such importance, it is not recommended to an inventor to draft their own patent specification.

In most cases, an inventor may not be aware of all the important rules and practices in drafting patent specification. Moreover, an inventor may not be aware about the consequences of drafting their specification in a broad or a narrow manner.

In view of the above, let’s check out some of the common mistakes that can occur while drafting patent specification.

Also Read: Complete Specification of Patents

Insufficiently describing the invention

Lack of disclosure of sufficient data in patent specification is one of the common mistakes. This happens when specification is drafted by an inventor himself or by an inexperienced patent agent. Also, this happens due to the assumption that the person reading the patent application will understand the invention properly with the provided details.

However, drafting the patent specification with that perspective leads to a poorly written patent specification. The patent law requires an applicant to provide a description that is easily comprehensible. By providing insufficient and vague description, the chances of getting rejection on the patent increases drastically.

Further, such patent specification fails to point out the novel and inventive features of the invention. Hence, it is important to cover every detail of the invention. Because, this ensures that a person having ordinary skill in the art may understand it.

Claiming the invention too broadly

This is another common mistake that a rookie in patent drafting performs. For the sake of broadening the scope of protection of their invention, most of the inventors try to claim their invention too broadly. The inventors usually do this to cover as much protection as possible from their patent application. However, claiming an invention too broadly can make the scope of protection of the invention indefinite. Moreover, claiming the invention too broadly also invites the chances of infringing another patent. One of the other reasons why inventors claim their invention in such a manner is because they are afraid of revealing their secrets or process. However, in order to receive a patent grant, it is important to explain the invention specifically and draft claims that are definite and concise.

Claiming the invention too specifically

For an inventor, the arrangement or method of performing their invention is always very clear. Due to this, it becomes rather difficult for the inventor to think about a broader version or an alternate embodiment of their invention. For example, if an inventor made a chair with four legs, then they may not usually think whether the same chair can work with three legs. Moreover, in the application drafted by the inventor, he may also end up including the dimensions of the chair. Drafting a claim in such a manner limits the scope of your invention to that specific count and dimension. Therefore, it is important to be able to draft a patent claim considering all the possible embodiments of the invention.

Using inconsistent terms

One of the necessities for writing a well drafted patent specification is the use of consistent terms. Claims containing inconsistent terms can cause unintended consequences in a patent litigation.

An example of inconsistent terms in a patent application may include the use of terms ‘container’ and ‘vessel’ to define the same thing. The use of both of the terms is normal in a published article.

However, in a patent specification, it is essential to be consistent with the terms.

An inventor who is unaware about the drafting rules may often commit this mistake of using two or more different terms to define the same thing.

Drafting claims without adhering to the drafting rules.

Patent claims are written in accordance with certain rules. Patent Offices define these rules and are important to follow for properly drafting the claims.

Failure to draft the claims in accordance with these rules raises the ground for objection.

Most of the rules are common in almost all of the jurisdictions. Some of the rules include:

  • The claim should be written in a single sentence.
  • The claim should include a preamble, a transition phrase and a body.
  • Each “new” element should be introduced using ‘a’ or ‘an’ for the first time, and then using ‘the’ or ‘said’ during subsequent usage.

Case study:

In a case between Chef America, Inc. vs. Lamb-Westin, Inc., the Federal Circuit gave a ruling of non-infringement because the patentee used the word “to” instead of word “at” in their claim language.

In the patent issued to Chef America – US Patent 4761290, the claim stated “heating the resulting batter-coated dough to a temperature in the range of about 400°F to 850°F”.

The district court said that according to the claim language, the dough itself is to be heated to the stated temperature.

However, the argument of the patentee was that the temperature is of an oven. That is, it is the temperature of oven in which the dough will be heated, and not of the dough itself. The patentee further reasoned that the former made little sense as heating the dough at that temperature will burn the dough itself.

The specification also provided an example of heating the dough “at” a certain temperature, but, in the claims, the applicant had written the word “to.” In view of the same, the Federal Circuit construed this as a conscious selection by the patentee to use the word “to” rather than “at” and gave the ruling of non-infringement.

Patent Drafting Mistakes: Final Thoughts

The above patent drafting mistakes shows how the patent filing process requires a thorough and careful examination. And, that this should be fool-proof.

This is a one-time process. That is, it is unchangeable after filing once.

That is the reason why it is crucial to get proper guidance from patent drafting experts.

Click here to know about our patent drafting services.

-Ronnie George (IPDFP) and The Editorial Team

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