Getting to the point in drafting a patent application

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By David French

Inventors often aspire to draft their own patent applications. This is something that they can and should do. But they should never go through the process of filing a patent application without consulting with and using the services of a patent professional.

Nevertheless, if an inventor starts the process of drafting their own patent application, they will save money and have a better understanding of the nature of the exercise. This will help them appreciate whether the prospective patent that they may obtain will be worth the investment. It will also help them improve their own invention and, correspondingly, the value of any patent they might obtain.

It is not traditional for inventors to write their own patent applications. They usually go into an attorney’s office where they are interviewed and then receive back a document summarizing their ideas. The attorney, once the document is approved, will typically send it to a professional searcher to determine whether the ideas identified in the document are novel. This prefiling patent novelty search is useful to avoid wasting money on an application that will be hopeless. Having the attorney prepare the initial document based upon an interview is OK if you have lots of money. But it does fall short in one respect. Typically, the inventor does not understand the process and the objectives of patent drafting when they are paying someone else to do the job. If the inventor has the capability, it is highly advantageous for the inventor to try drafting their own invention disclosure document as an initial step.

The object is not to try and bypass the attorney. The purpose of drafting your own patent disclosure document is to understand what this process is all about. You will save money. The attorney will spend less time on the exercise. More advantageously, you will also be in a position to cancel the exercise if it does not look like it is going to be worthwhile. Many, many inventors miss out on this opportunity. This is true for private inventors. And this is true for inventors working in corporations.

Not all ideas are worth a patent

Researchers and engineers who consider themselves to be inventors should not assume that everything they do should be patented. Or more precisely, even if what they do is patentable (anything that is new and useful is patentable) researchers should not assume that their ideas are worth patenting.

Ironically, you cannot really tell whether what you have done is worth patenting until you appreciate its patentable aspects. The patentable aspects depend upon the points of novelty. Preparing a draft patent application according to proper patent disclosure requirements will help clarify this issue. Then you can ask the question: “Will my claims, and particularly claim 1, cover something that the world wants and that competitors will try to adopt or imitate?” If the answer is “yes” it is worthwhile proceeding with a patent application.

However, you still have to get over the hurdle of having a distinction over the prior art; the focal point of the invention has to be novel. This realistically requires that a prefiling patent novelty search be done. If you do decide to commission a professional searcher, then you will have to provide a description of the prospectively patentable invention to guide them in their search. Sending a draft patent disclosure document to a searcher is ideal. Accordingly, this is a multi-stage process that critically includes preparation of an initial disclosure of the prospective invention.

Don’t waste words

I see repeatedly how inventors make the process of preparing a patent application so complicated for themselves. They try to fill the application pages with everything they know. This is so self-defeating!

Inventors will do themselves a great benefit if they get clarity as to what should go into a properly-prepared patent application document.

The challenge is to distinguish what you can patent out of all of the things that you know. The answer is: You can only patent things that are novel. And you must identify a feature, a distinction over the prior art, that makes your overall invention new and different in order to go forward in any way. It’s a waste to include words in a patent document that go beyond this objective.

Further, that distinction or difference should make a difference. A patent should be directed to a feature or configuration that is really valuable. You can always get a patent on something that has little or no value, so long as there is an element of novelty involved. But that is a wasted effort. You should only be focusing on patenting things that are important. That is why commissioning at an early stage a professional search to establish the novelty of your idea is so important

And then there is the frustration of finding out from such a search that novelty restrictions prevent you from having full control over something that you now appreciate has value. It is painful to discover that you have thought of a good idea but that others have thought of it, and disclosed it, as well. At that stage, you may be driven to a fallback on some secondary feature that will give you minor or trivial protection.

It is not an easy game to play. But if we can simplify the issues, then we can get clarity at an early date. If you realize that you are not likely to get valuable, meaningful, patent rights in respect of a certain feature or arrangement, then it is time to think of patenting something else. That does not mean that you cannot still do experiments knowing that nothing of real value in terms of patents is likely to arise. But if you understand the principles properly, you will be able to recognize when that real value is suddenly present.

Getting that kind of clarity is worth the effort of trying to drafting an initial patent disclosure document yourself. But do not neglect to seek guidance and coaching from a professional patent agent or attorney even before you send instructions to a professional patent searcher to do a pre-filing patent novelty search.

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 e-mail him at SecondCounsel.com

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