In our previous posting, we addressed the issue of getting to the point in drafting a patent application. I suggested that inventors would be well-served if they did make the attempt to draft their own patent disclosure document. I strongly recommended against proceeding without the support of a patent professional. But at the same time, I emphasized the advantages of understanding the patenting process by trying to do part of the work yourself.
The challenge in patenting is to identify a feature that is different from what has been done before and to focus a patent disclosure document on that feature. This requires understanding what is patentable and exercising the discipline to stay focused. Too many inventors trying to write their own patent applications think that the more words they use, the better. They respond to the impulse to show off how much they know. They think that longer makes a patent disclosure document better. This could not be further from the truth.
I had one very competent engineer send me a long proof for a mathematical formula relating to a spiral clutch. He proved that for a certain type of spiral, when the inner part of the clutch rotated with respect to the outer part of the clutch, the gap between the two parts was constant around the circle. This allowed the clutch to tightly clasp a set of some dozen roller bearings, clasping each bearing with an equal load. I suggested to him that we not include his proof in the patent disclosure; if the conclusion was true then we need merely state the conclusion. But, no, he wanted his entire proof included because he spent so long developing it. Well, he was the client/boss so the proof stayed in the patent document.
In this example no real harm was done other than the wasted ink. But it shows a lack of focus on what is important in a patent application document. A patent disclosure is not a place to show off everything you know. In fact, it is possible to produce a patent disclosure document which is very compressed. Here is an example:
PATENT DISCLOSURE – The basics
The key document to be filed in a patent application is the primary disclosure or “specification.” It is called a specification because it includes a stipulation as to the scope of monopoly which the applicant claims he or she is entitled to receive. The stipulations identifying the exclusive rights associated with the patent are set-out in the “claims.” This specification document must also describe how to build a working example of the invention so that others can enjoy its benefits once the patent expires. This is the “enablement” part of a patent disclosure. The only remaining principle to keep in mind is that the claims have to be focused on something that is new in order for the claims to be valid. This document can be quite simple in its layout:
Title – must be easily understood; 5-12 words
Field of the invention – two sentences only to classify the invention
Background to the invention – sets out the problem to be solved or advantages to be achieved. Note: you should not disclose the invention in this portion! This section need not be long.
Review of prior art/under background – how others have addressed the problem or come close to the invention, but failed. This section need not be long and should focus on key references. This section is desirable but not essential. The examiner will try and locate relevant prior art himself.
Summary of the invention – a number of paragraphs that identify the features of structure that make the invention new. This section should parallel the “claims,” which conclude the specification.
Listing of figures or drawings – any figures or drawings which help explain how to build embodiments of your invention.
Description of preferred embodiments – the how-to-build-it portion, referring to the figures or drawings — this section can be many pages long. At a preliminary stage this section could contain many details and variations of the invention as a record of what the inventor has conceived. Patent novelty searches may show that many of these details lack the required novelty. In such case, they can be subsequently deleted from the final document.
Claims – a series of single sentences repeatedly listing characteristics of things that collectively are new. The claims define the monopoly right of the patentee. Only one claim is needed. Claims can refer back to an earlier claim, adopting its limitations. Such claims are “dependent” and add embellishments on the earlier claim. Dependent claims are narrower in scope than earlier claims.
Abstract – a 150 word summary that is supposed to be more readable than the claims.
PATENT DISCLOSURE – A nutty example
Title – A tool for cracking nuts
Field – a device for a breaking the shell of a nut so you can get at the meat inside.
Background – people have been striking nuts with stones to break them open. This doesn’t work very well. They hit their fingers. As other prior art, they have also tried to use sticks, but sticks are not heavy enough.
Summary – the new idea is to fasten a stone at the end of the stick. This can be done by finding a stick that is forked and tying the stone in place with leather sinew.
Drawing – Figure 1 – A tool for cracking nuts shows a stone tied to the end of a forked stick with sinew.
Description – In Figure 1 we see stone (1) positioned between two forks (2a), (2b) at the end of the stick (3). Sinew (4) holds the stone (1) in place.
Claim – I claim exclusive rights in a stone tied into the forked end of a forked stick by sinew.
[End of draft sample patent disclosure]
It’s like riding a bicycle: it’s not as complicated as it may seem once you know how. If filed at an early enough date, e.g. 100,000 BCE, this specification will meet patent novelty requirements. But is it the best application that could have been filed? Will it serve the interests of the patent owner? That is the topic of a separate discussion.
This is an example of how an inventor can sit down to analyze his/her invention for its patentable features. This kind of exercise will eventually make an inventor “patent smart.” The payoff will be for inventors to make better patentable inventions and avoid spending money on attorneys which will not represent a good investment.
While drafting your own initial patent disclosure document is something that inventors can and should do, they should never go through the process of filing a patent application without consulting with and using the services of a patent professional. But by starting the process of drafting your own patent application, you will save money and have a better understanding of the nature of the exercise. This will help you understand your own invention better, at least in its patentable aspects, and based on the results of the patent novelty search allow you to make improvements and extend the scope of your eventual patent rights. Correspondingly, following this procedure will increase the value of any patent that might be obtained.
David French is the CEO of Second Counsel Services in Ottawa. He is interested in organizing a small workshop entitled: “Advanced patent claim appreciation seminar”. Those who might be interested in participating in such an exercise are invited to send e-mails to him at SecondCounsel.com