Mastering the Art of Patent Disclosure Drafting

Jun 23, 2020

Inventions are highly technical and scientific, but preparing a patent’s written description is as much an art as it is a science. Drafting a patent may seem intimidating at first, but it is not as difficult as you may think. With a little practice and a touch of patience, it is possible to draft a patent application that will sail through the examination process.

Understand and Explain the Invention Inside and Out

It goes without saying that every patent starts as an invention; your invention might be a new tangible item like a machine or a material, or your invention might cover a new method of manufacturing or even software. It is essential that you thoroughly understand your own invention. After all, if you struggle to explain your invention to someone assisting you with your application such as a patent agent or patent attorney, will he or she be successful in explaining it to the USPTO?

Your initial disclosure of the invention should be confidential. “Public disclosures” such as offering the invention for sale or describing it to others can act as a bar to any later patent rights. In many organizations, engineers and inventors first submit an internal confidential document called the “invention disclosure”. You may call it something else, but the invention disclosure should clearly explain the design, manufacture, operation, and novelty of the invention. The purpose of the patent disclosure is to describe the patent in such a way that anyone reading it can quickly identify what it is, what it does, how it works, and why it is unique.

At Global Patent Solutions, we have seen invention disclosures from thousands of inventors and organizations. A common mistake is to focus too much on the background. Rather than describing how earlier inventors solved a problem, focus your energy on describing your unique solution.

Leave the Legalese to the Experts

The patent statutes require specific sections (specifications, claims, drawings, title, and abstract) that meet minimum standards of disclosure (best mode and enablement). The invention disclosure serves as a very rough draft of the patent application and lays the groundwork for everything else to come. In some cases, it might be appropriate to submit the invention disclosure to the USPTO as a provisional patent application. Experienced inventors often take the invention disclosure a step farther by preparing an initial patent application with all the legally required sections.

The invention disclosure should be turned over to an experienced patent practitioner, such as a patent agent or patent attorney or other patent advisor for a final polish, review and/or completion. There is a certain amount of legal language you will want your patent application to include to protect the invention itself, but a patent practitioner’s greatest value is in preparing an application that is broad enough to protect your invention and hinder competitors from practicing your invention with only trivial modifications.

In patents, words and sentences matter. The positioning and choice of legal terminology can dramatically change the scope of your patent. Your patent practitioner can balance the “legalese” required to protect your patent down the road with the need to keep the description clear and easily understood.

Keep It Short and Concise

Patent drafting is not about writing a novel; it is about highlighting the reasons an invention is novel. Most patent applications spend less than 5 pages describing the substance of the invention. Remember, your goal is not to win over the market when you are submitting your patent application. The patent is intended to quickly inform the patent examiner (and the public) of the purpose of your product or service, the benefits it offers, the features you have included, and the unique position it will fill within the marketplace.  

One strategy you can adopt is to arrange your patent application like a table of contents. It is a short guide that is easy to navigate and tells the examiner everything they need to know about the book you have created.

Discuss Prior Art with Your Advisor

One factor that always comes up with patent disclosure drafting is the issue of prior art. After all, it is likely that you will need to provide a thorough description of the prior art you are improving upon. This will require addressing the deficiencies of prior art and the novel solutions you have made that make your product superior. While you have no doubt thought of these, your advisor may see it from a different angle. There may be superior definitions and less obvious advantages that an examiner would respond favorably to while reading the application.

Review, Review, Review

Always thoroughly review your patent disclosure prior to submission. Does it conclusively demonstrate the functions, operations, design, and construction of the product or service? Does it highlight the advantages offered and novelty of the invention? Last, does it properly and correctly explain the technical design and operational elements in a manner that protects you against both patent infringement claims and attempts at patent theft?

Contact Global Patent Solutions at (877) 414-6028 for more information about the patent disclosure drafting support our team offers. We will answer your questions and help you determine the most effective method of completing your finished draft for submission to the USPTO. 



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