Firstly what is Patent Drafting?

Patent attorneys tend to use the expression patent drafting to refer to the process where they write the patent description and claims, which is the core of any patent application, and in due course, if allowed, of the granted patent specification. This is a creative and bespoke process where they turn the inventor’s ideas into a document that is designed to get the best patent possible.

Main goal in a patent application is to provide a full, clear, exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants protection to cover.

I suspect that most conscientious do-it-yourself inventors are attempting to precisely describe the invention in full, clear and exact terms, when they prepare and file a patent application. Understanding the legal requirements facing you is the first step, but translating that into actionable information that will allow you to meet and exceed that legal requirement is another thing entirely.

Perhaps the best way to try and understand what you need to do is to consider some of the common patent application mistakes that inventors make when attempting to describe their inventions and learn from them, that what you shouldn’t do.

Mistakes Committed by Inventor’s:

  • Focusing on explaining functionality not as helpful as you think-

It slices! It dices! Great, but what is “it” and how exactly does it do it?

One of the biggest mistake that inventors commit is, they give most of the time focusing on functionality of product they are getting patented and forget to put a lime light/describe on what exactly the product is and how does it deliver that function.

Explaining the functionality of invention or components of an invention is important, but only explaining something in terms of function leaves many questions and lead to a disclosure that is not terribly descriptive but a nightmare to a patent application.

-Removing ambiguity and describing components of invention:

Remember, describing function can be helpful to get the reader thinking in the right direction, but normally it does not bring the reader all the way to an unambiguous understanding of the invention. When drafting a patent application it is essential that you remove any ambiguity and specifically describe the components of the invention and how they are configured to achieve the structural invention. Then feel free to explain the functionality, but don’t assume functional description can be in place of structural descriptions.

  • If too specific than expand to general-

Many of the inventors make mistakes of only describing their invention. They are already light on specifics, which is extremely dangerous in itself. But what I’m discussing here is the other side of the coin, i.e. it’s important to be specific, but not just too specific.

The basic key is to say things as generic as possible to start, which will capture as much ground as possible, and then to specifically identify as many of the articles as possible. By pointing out the particulars you are specifically including those items in the disclosure and will have support for them in your original filing. By this you also expanding the scope of application and by explaining more you are not only explicitly disclosing more, but your implicit disclosure will also grow.

-Avoiding non-specific words like “etc.”:

Also never ever use etc. etc. while describing anything. It may seem to be a great way to expand the description but it’s a mistake. By using etc. you are asking the reader to use his/her imagination and fill up the gaps you left. This is real bad for reasons like- 1st, it allows ambiguity to enter your application and ambiguity is the worst enemy of patent drafting. 2nd, “etc.” itself is not a specific word, and using a non-specific catch like “etc.” is definitely not helpful.

-Using term of “art” for specific characterization:

It would be better off to continue the list and include some kind of specific characterization. For this you can use a term of art. Like “a breathable fabric” for cotton. By using term of art you have couple of choices. 1st, you could rely on someone of skill in the art would understand the term to mean. 2nd, you can define the term you use, which tends to be best practice. As Patentees are allowed to be their own lexicographer, which means you can define the term you use, which tends to be the best practice.

Notice, however, that in order to avoid common/everyday/non-specific language (i.e., “etc.”) we introduce a term that has a specific meaning. This is what makes drafting a patent so difficult. As you address one issue another pops up. The moral here is to be specific, but not only specific. Consider using general characteristics where appropriate, and if a term of art creeps into your writing best practice is to define it to remove ambiguity.