Patent Drafting Tips

Module 7: Patent Administration and Management
Patent Drafting
Karl Rackette
Freiburg, Germany
2006@rackette.de
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)
He who asks
questions,
cannot avoid the
answers.
Cameroon Proverb
Patent Drafting
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II) 2
Basic Idea underlying the Patent System
• In exchange for a limited-term right to exclude
others from making, using or selling an invention in a
country,
• the patent applicant must provide according to the
laws of that country
• a complete and accurate public description of the
invention and
• define in a set of valid claims the scope of protection
requested.
• This provides others with the ability to use that
information to invent further, thus pushing technology
forward for the benefit of society.
Patent Drafting
Patents
Patents reward disclosure rather than secrecy.
Patent Drafting
Where do inventions come from and go to?
• Where do inventions come from?
– single inventors alone or in cooperation
– production and service companies of all sizes
– private and public research laboratories
– University research laboratories
• Where do inventions go to?
– „down the drain“ (published too early or abandoned)
– kept as secret know-how (sometimes best strategy)
– disclosed to at least one patent office in order to apply
for exclusive patent protection
– enter the market as new products
Patent Drafting
Patent Drafting as the Important Step
Failure?
Success?
Enforcement
Commercialization
Grant and publication of the patent
Prosecution of the patent application
Drafting and filing of a patent application
Crystallizing the idea behind the invention
Finding a solution for a technical problem
Patent Drafting
For drafting patent applications it is important
• To understand the invention

• Find the gist of the invention
• Find the right embodiments
• Find the right words, terminology and sentences to
describe the invention (WORDS are POWER)
• Have imagination how competitors could avoid the
claimed invention but still take advantage of its
teachings (foreseeing the future)
Patent Drafting
Claiming an invention
• What is the new invention?
• Claims must contain the technical features essential

for solving a particular objective problem
• What is the desired scope of protection?
• (Where is the protection needed?)
Patent Drafting
Patent application (1)
• The first step in securing a patent is the filing of a

patent application.
• The patent application generally contains
– the title of the invention, as well as
– an indication of its technical field; it must include
– the background and
– a description of the invention, in clear language
and enough detail that an individual with an
average understanding of the field could use or
reproduce the invention.
Patent Drafting
Patent application (2)
• Descriptions are usually accompanied by visual
materials such as drawings, plans, or diagrams to
better describe the invention.
• The application also contains various "claims",

that is, information which determines the extent of
protection granted by the patent.
• Abstract
• Other formalities (request, fees, designation of

inventor ...)
Patent Drafting
Disclosing an invention to a patent office
in view of patent protection requires:
• Spotting the invention or inventions
• Generalizing each (new and promising) invention
• Finding the right words to define each novel
generalized invention
=> claims
• Describing in detail each invention (with words and
drawings) in such a way that the reader skilled in the
field to which the invention belongs could copy and
make use of the invention
=> description, drawings, abstract
Patent Drafting
The 10 steps involved in patent drafting
1 Spotting the invention
2 Generalizing the invention
3 Drawing one or more figures showing the invention
4 Arranging the figures of the drawing in a sequence
5 Deciding on the terminology to describe the invention
6 Drafting the claims
7 Drafting the detailed description (reference numerals)
8 Inserting the reference numerals in the claims
9 Writing the introductory part of the description
10 Writing the abstract using the reference numerals
Patent Drafting
Hair Dryer with Travel Iron
Step 1 and Step 2
Spotting and Generalizing the Invention
What is the invention?
Patent Drafting
Hair dryer with travel iron
(prior art)
Patent Drafting
Hair dryer with travel iron
(prior art)
Patent Drafting
Inventor‘s travel iron (perspective view)
Patent Drafting
Attachment (perspective view)
Patent Drafting
Attachment (top view)
Patent Drafting
Attachment (bottom view)
Patent Drafting
Attachment (side view)
Patent Drafting
Step 1: Spotting the invention
• Before taking the steps necessary to protect a

particular invention, you need to find that particular
invention.
• What the inventor brings to you is only an example
(embodiment) of his/her invention.
• The inventor generally does not really know what the
invention is – usually the inventor thinks the
prototype/embodiment is the invention, but it is not!
• If you are to protect his/her invention, you need first
to identify what that invention is about.
• It is not uncommon for there to be more than one
invention within a single prototype/embodiment .
Patent Drafting
Step 1: What is the invention?
• What are the differences between the closest prior art

and the invention that you can spot?
(or catch, detect, determine, discern, discover, distinguish, find,
isolate, identify, notice, make out, locate, perceive, pick out,
recognize, single out etc.)
• What are the technical effects of the differences
identified?
• Which specific difference has the technical effect that
seems to be the most important one?
(most significant, most substantial or most unexpected one)?
Patent Drafting
Step 1: How to spot the invention.
• If there is a novel invention

(only novel inventions are worth considering),
it must involve at least one feature which
distinguishes the prototype (embodiment,
example) from what is already publicly known.
• But not every new feature in the example is
useful to define the invention. You need to
identify the new feature(s) or combination of
features which provide the “trick” of the invention
(inventive step requirement).
Patent Drafting
Step 1: How to spot an invention.
• Find a sole new feature
• Find a new combination of known features

– the hard part is deciding which few elements of the
combination are needed to get the desired benefit.
– Note: If A, B, & C are all already known in the art but

have previously only been used individually, the
combination A+B+C is novel.
• Identify what problem did the inventor intend to

solve and what problem he did objectively solve.
Patent Drafting
Step 1: Look for the trick of the invention.
• What is the “trick” of the invention – how would you

summarize the invention in one or two sentences?
• The “trick” or “gist” of the invention is related to the
technical effect, advantage or benefit which the
invention provides over the closest prior art.
• Identify the most commercially important advantage(s)
of the invention?
• What needs to be there to achieve that advantage.
• It is sometimes helpful to use a finger to show where

in the drawing (picture) the important feature of the
invention can be seen.
Patent Drafting
Step 1: What provides the benefit or trick?
• Generally the person drafting the patent

application has to analyze the prototype to see
which of its features work together to provide the
benefit. You need to consider carefully the
accuracy of what the inventor says.
• If there is more than one advantage you need to
consider if they are due to the same distinct set
of features.
• If different advantages come from some quite
distinct sets of features, then they are likely to
belong to separate inventions.
Patent Drafting
Step 2: Generalizing the embodiment
of the invention
• Once we have spotted the specific feature or
combination of features important for the invention we
are still not quite ready to draft our main claim.
• We need to generalize the important feature(s) and
crystallize what we think the general idea underlying
the invention is.
• This can be done once a narrow main claim has been
drafted and is reviewed (several times).
• It is important to generalize the concept of the
invention by concentrating on the essential features,
by using broad technical concepts, broad language
and by avoiding unnecessary limitations.
Patent Drafting
Patent Drafting
Side view of the travel iron
with one plate 2a (1rst embodiment)
Patent Drafting
Side view of the travel iron
with two plates 2a and 42 (2nd embodiment)
Patent Drafting
Bottom view of the attachment
Patent Drafting
Top view of the attachment
Patent Drafting
Steps 3 and 4: Drawings
• Drawings are required when they are necessary for

the understanding of the invention.
• To make patent drafting easier, it is good to have a
sensibly ordered set of drawings which move from a
broad overview, via intermediate drawings to those
that show the details of the invention.
• Flow sheets and diagrams are considered drawings.
Patent Drafting
Hanger
Spotting and Generalizing the Invention
What is the invention?
Patent Drafting
Hanger (Prior art 1)
Patent Drafting
Hanger (Prior art 2)
Patent Drafting
Hanger (invention)
Patent Drafting
Hanger (invention)
Patent Drafting
Hanger (invention)
Patent Drafting
Hanger (invention)
Patent Drafting
Hanger (invention)
Patent Drafting
Exercise to
spot and generalize (identify)
an invention
in order to prepare the
drafting of
broad claims
for a patent application
A Tea pot ?
EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

Tea pot with one spout
Patent Drafting
Questions to the inventor in view of the
identification of the invention (1)
• Did you or anyone else make a written or oral

publication or disclosure regarding any aspects of
the? (prior publication may destroy novelty)
• Did you test the invention?
• Can you tell me what you have invented?
• Do you have a photo or drawing of your invention?
Patent Drafting
Tea pot with two spouts and two cups
Patent Drafting
Tea pot with two spouts ???
Patent Drafting
• What prior art does exist concerning the invention?
Patent Drafting
Tea pot 1
Patent Drafting
Tea pot 2
Patent Drafting
Tea pot 3
Patent Drafting
• What single piece of prior art is the closest to the

invention?
Patent Drafting
Tea pot 1 Tea pot 2 Tea pot 3
Tea pot of the

inventor
Patent Drafting
• Why tea pot 2?
Patent Drafting
• What is the difference between the closest prior art
and the invention? (Novelty?)
• Could you explain your invention?
• How is it constructed?
• How does it function?
• How is it used?
Patent Drafting
• What arguments do we have
in favor of inventive step?
• Are there any other applications of the invention?
• What is the aim of the invention?
• What technical problem was solved by the

invention?
Patent Drafting
• How does the invention solve that problem?
• Due to what technical feature the problem underlying

the invention is solved?
• What are the technical effects caused by the

invention?
Patent Drafting
• Is there another way to arrive a the technical effect
caused by the invention?
• What are the advantages of the invention in

comparison to the prior art?
• What are the important and/or critical features of the

invention?
Patent Drafting
• How was the problem solved in the past?
• What is it that you want your competitors not to be

allowed to do? (Strategic defense)
• How could a competitor design around the

contemplated patent claims? (Strategic defense)
Patent Drafting
Questions to the Inventor for
Identifying the Invention (10)
• Do you intend to use the invention in your own

business? (Revenue generation)
• Are you planning to sell or license your invention?

(Revenue generation)
• Where do you want to get a patent? (Filing)
Patent Drafting
Patent Drafting
Patent Drafting
Patent Drafting
Patent Drafting
Patent Drafting
Step 5: Deciding on the terminology to
describe the invention
• When writing the description it can be helpful to have a set of
drawings to hand which you have labeled with the names of the
parts shown in the drawings.
• Write down (together with the inventor) next to the figures of
drawings what they show
• Write down next to each element shown in each of the figures
how these elements are called by the specialist and how they
could be named in broad terms
(e.g. instead of copper wire it might be electrical conductor)
• Use dictionaries and/or published patent documents
downloaded from the internet
Patent Drafting
Patent Drafting
Step 6: The Claims
The claim or claims shall define the matter for which

protection is sought.
Claims shall be clear and concise.
They shall be fully supported by the description.
Patent Drafting
Claims
A series of numbered statements
in a patent specification, usually following the
description, that
define the invention
and
establish the scope of the monopoly conferred
by the patent.
Each claim consists of one sentence starting

with a capital letter and ending with a full stop.
Patent Drafting
Independent Claims
• At least one such statement (usually the first) will be

self contained - this is known as an independent
claim.
• The first independent claim may be called the main

claim
Patent Drafting
Dependent Claims
Claims that refer to previous claims

using wording such as
”... as claimed in (or as defined by, or according to)

claim 1 or claim 2...”
- these are known as dependent claims.
Patent Drafting
The Claims
• The number of the claims shall be reasonable in

consideration of the nature of the invention claimed.
• If there are several claims, they shall be numbered

consecutively in Arabic numerals.
Patent Drafting
The Claims
Claims shall not, except where absolutely necessary,

rely, in respect of the technical features of the
invention, on references to the description or
drawings.
In particular, they shall not rely on such references as:

"as described in part ... of the description," or "as
illustrated in figure ... of the drawings."
Patent Drafting
The Claims
Where the patent application contains drawings, the

technical features mentioned in the claims shall
preferably be followed by the reference signs relating
to such features.
(they may be inserted later after having drafted the detailed
description)
When used, the reference signs shall preferably be

placed between parentheses. If inclusion of reference
signs does not particularly facilitate quicker
understanding of a claim, it should not be made.
Patent Drafting
Manner of Claiming
The definition of the matter for which protection is

sought shall be in terms of the technical features of
the invention.
Patent Drafting
Manner of Claiming
Whenever appropriate, claims shall contain:
(i) a statement (preamble) indicating those

technical features of the invention which are
necessary for the definition of the claimed subject
matter but which, in combination, are part of the
prior art,
and
(ii) a characterizing portion.
Patent Drafting
The characterizing portion of a claim
• is preceded by the words

"characterized in that," "characterized by," "wherein
the improvement comprises," or any other words to
the same effect—
• and states concisely the technical features which, in

combination with the features stated in the preamble,
it is desired to protect.
Patent Drafting
Dependent Claims
• Any claim stating the essential features of an invention

may be followed by one or more claims concerning
particular embodiments of that invention
• Any claim which includes all the features of one or
more other claims shall do so by a reference, if
possible at the beginning, to the other claim or claims
and shall then state the additional features claimed.
Patent Drafting
Dependent Claims
• Any dependent claim shall be construed as including

all the limitations contained in the claim to which it
refers or, if the dependent claim is a multiple
dependent claim, all the limitations contained in the
particular claim in relation to which it is considered.
• All dependent claims referring back to a single
previous claim, and all dependent claims referring
back to several previous claims, shall be grouped
together to the extent and in the most practical way
possible.
Patent Drafting
Patent Drafting
Step 7: Purpose of the description.
• to disclose and teach the invention;

• to support the claims;
• to provide the basis for interpretation of the
claims;
• to provide a context within which to view the
claims; and
• to provide basis for future amendment of the
claims (during prosecution or litigation).
Patent Drafting
The description
• shall disclose the invention in a manner sufficiently

clear and complete for the invention to be carried out
by a person skilled in the art.
• describe in detail at least one way of carrying out the
invention claimed;
• this shall be done using examples where appropriate
and with reference to the drawings, if any
Patent Drafting
Reference signs (numerals)
• When drafting the detailed description with reference
to the figures in the drawings it is good practice to
compile a parts list making sure that for each feature
shown in the figures always the same reference
numeral and same terminology is used.
(The terminology might be based on the notes made earlier on
the drawing copies or on the claims cf. Step 5)
• Later reading of the description is made easier if each
feature when mentioned for the first time in the
description gets a higher number
• It is possible to start with a number higher than the
highest figure number and use only odd or only even
numerals (in case features were overlooked)
Patent Drafting
The description
• In order to make it easier to describe the invention

and in order to facilitate understanding, set out your
material as though you were telling a story.
• Start with the big picture and work into the detail of
the invention.
• This means that you should describe the context of
the invention, then the main structure, before you
start to describe small details of the invention or a
particular embodiment.
Patent Drafting
The description
• When you describe the invention, ensure that you give

its context. Start with the big picture and work into the
detail of the invention.
• Do not throw the reader right into the heart of the

invention - lead the reader progressively along a
logical path with no sudden changes of direction.
Patent Drafting
Support
• When you are drafting a patent remember that this

is the only chance to put information into the
description.
• Now is the time to add basis for later claim
amendments as well as support for the claims as they
are first written.
• If you want to get broad claims granted and for them
to be enforceable, disclose the invention across the
whole scope of your claims. If you have broad
independent claims, bear this firmly in mind.
Patent Drafting
Alternatives.
• When writing the description, you should

describe a concrete embodiment (e.g. what
is shown in a drawing).
• Describe what is shown and only then refer to
alternatives, rather than doing this while
notionally describing what is shown.
• The description should, however, be written
so as to be intelligible without looking at the
drawings.
Patent Drafting
No matter can be added after filing
• The effective scope of the claims will also be

influenced by what you have said, especially in your
introduction.
• What you say in your description, not just the
introduction, will influence the patent office examiner
and the prosecution of the application.
• The description is the source of all allowable
amendments during prosecution of the patent
application – no matter can be added after filing. So
what you say right at the start of the patenting process
is very important.
Patent Drafting
Patent Drafting
Step 8: Inserting the reference numerals
in the claims
• When the detailed description is finished it takes only
a little time to insert the reference signs or reference
numerals into the claims drafted earlier.
• The parts list made during the drafting of the
description can help to avoid errors or omissions
Patent Drafting
Patent Drafting
Step 9: Introductory part of the description
• The description shall first state the title of the invention
• specify the technical field to which the invention relates;
• indicate the background art which, as far as known to the

applicant, can be regarded as useful for the understanding,
searching and examination of the invention, and, preferably,
cite the documents reflecting such art;
Patent Drafting
The introductory part of the description
• disclose the invention, as claimed, in such terms that

the technical problem (even if not expressly stated
as such) and its solution can be understood, and
state the advantageous effects, if any, of the
invention with reference to the background art;
• briefly describe the figures in the drawings, if any;
Patent Drafting
Technical field.
• This and the title should be consistent with the
preamble of the independent claim.
• If you make this narrow, you will similarly limit the
independent claim (at least in Court) possibly to
less than the claim seems to cover.
• If you make this broad, you will not broaden the
claims beyond what they seem to cover, but the
patent office should search across the entire field -
exposing you to more prior art during examination.
Patent Drafting
Background or prior art discussion.
• The way in which you describe the problems with the
prior art influences the way in which the invention will
be understood.
• If you identify problems in the prior art, the
assumption is that your invention solves them all.
• Consequently, something which does not solve all
the problems may be considered not to be covered
by the claims of the patent. So, make it clear if the
invention only solves some of the problems. It is
often better not to mention problems which remain
unsolved.
• If you reduce a problem but don’t (always) eliminate
it, make this clear.
Patent Drafting
Advantages of the invention
• The identification in the description of advantages

of the invention can be very helpful in showing
the invention in a good light.
• You should not suggest that the invention always
provides all the advantages, unless you want to
restrict the protection of the patent to things
which do this.
• Associate the advantage(s) with the features
which give that advantage(s).
Patent Drafting
Patent Drafting
Step 10: The abstract
• Intended to help searchers know what the

patent is about.
• 150 words maximum.
• Often based on the main claim, but this is not
always helpful.
• Unlike the other parts of an application, does
not contribute to the disclosure of the
invention.
Patent Drafting
Following Step 10: Review
• When you have finished your specification

(complete description, claims, drawings,
abstract) review it, particularly with reference to
the language of the claims.
• Are all the features mentioned in the claims also
present in the description?
• Have you explained how the embodiments or
elements of the invention interact or can be used
together?
Patent Drafting
Cake Cutter
Exercise
Patent Drafting
Cake made of several layers
Patent Drafting
Cutting a cake into horizontal slices
Patent Drafting
Prior art
Prior art 1:
Using a string or a knife to cut horizontal slices
Prior art 2:
A cake cutter comprising
- a single straight thin metal wire adapted for cutting
horizontally through a freshly baked cake
- an inverted U shaped metal frame made out of a thick
wire and being provided with a handle in the middle
- the frame having two legs with notches near its
free ends for engagement with connector
provided at the ends the thin wire
Patent Drafting
Invention as explained by inventor:
Cake cutter with two wires cutting through cake
Patent Drafting
Cutting through the cake
Patent Drafting
Three slices before using whipped cream
Patent Drafting
Drawing made by the inventor
Patent Drafting
Photo: twisted cutting wire
Patent Drafting
Photo showing
connector of lower cutting wire and
cap on end of one of the legs of the frame
Patent Drafting
Photo: cutting wire section
Patent Drafting
Capture your thoughts.
• When “invention spotting” it is a very good idea to

capture your thoughts as they occur to you.
• Use a piece of paper (flip chart, whiteboard,

blackboard or laptop) to capture your thoughts
before you test them. You can see patterns in your
collected thoughts that you would not see if you
filtered your thoughts before you capture them.
Patent Drafting
What did we find?
• What are our choices?
• What can we reject?
• Which of the ideas looks most promising?
Patent Drafting
Please prepare:
– Some drawings useful to explain the invention
– One independent claim defining the invention
– Several dependent claims defining fall back
positions
– An introductory part to the detailed description
• explaining the background and the prior art,
• the problem to be solved by the claimed
invention,
• the inventive solution of the problem and
• the advantages of the claimed invention
– A detailed description explaining the drawings
Patent Drafting
Thank you for your attention!
What are Your

Questions?
Patent Drafting

Patent Drafting Tips

Încărcat de

Informații document

Descriere originală:

Drepturi de autor

Formate disponibile

Partajați acest document

Partajați sau inserați document

Opțiuni de partajare

Vi se pare util acest document?

Este necorespunzător acest conținut?

Drepturi de autor:

Formate disponibile

Patent Drafting Tips

Încărcat de

Drepturi de autor:

Formate disponibile

Module 7: Patent Administration and Management

Patents reward disclosure rather than secrecy.

• To understand the invention

• What is the new invention?

• Claims must contain the technical features essential

• What is the desired scope of protection?

• (Where is the protection needed?)

• The first step in securing a patent is the filing of a

• The application also contains various "claims",

• Other formalities (request, fees, designation of

What is the invention?

• Before taking the steps necessary to protect a

• What are the differences between the closest prior art

• If there is a novel invention

• Find a new combination of known features

– Note: If A, B, & C are all already known in the art but

• Identify what problem did the inventor intend to

• What is the “trick” of the invention – how would you

• It is sometimes helpful to use a finger to show where

• Generally the person drafting the patent

• Drawings are required when they are necessary for

What is the invention?

EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP II)

• Did you or anyone else make a written or oral

• Did you test the invention?

• Can you tell me what you have invented?

• Do you have a photo or drawing of your invention?

• What prior art does exist concerning the invention?

• What single piece of prior art is the closest to the

Tea pot of the

• Why tea pot 2?

• Could you explain your invention?

• How does it function?

• Are there any other applications of the invention?

• What is the aim of the invention?

• What technical problem was solved by the

• How does the invention solve that problem?

• Due to what technical feature the problem underlying

• What are the technical effects caused by the

• What are the advantages of the invention in

• What are the important and/or critical features of the

• How was the problem solved in the past?

• What is it that you want your competitors not to be

• How could a competitor design around the

• Do you intend to use the invention in your own

• Are you planning to sell or license your invention?

• Where do you want to get a patent? (Filing)

The claim or claims shall define the matter for which

Each claim consists of one sentence starting

• At least one such statement (usually the first) will be

• The first independent claim may be called the main

Claims that refer to previous claims

”... as claimed in (or as defined by, or according to)

- these are known as dependent claims.

• The number of the claims shall be reasonable in

• If there are several claims, they shall be numbered

Claims shall not, except where absolutely necessary,

In particular, they shall not rely on such references as:

Where the patent application contains drawings, the

When used, the reference signs shall preferably be

The definition of the matter for which protection is

(i) a statement (preamble) indicating those

(ii) a characterizing portion.