How to Write a Patent Application in Five Easy Steps

How to Write a Patent Application in Five Easy Steps

Disclaimer: In no way is this article intended to suggest that anyone should self-file a patent application. Patent drafting is a profession and professionals will be able to fix up your work, file it and help you when you receive a patent office opinion. This article is intended for you to understand the basics and to help you to save money in building a patent portfolio. With practice, you will get better at writing your own patent applications but you should work with a professional at all times.

This article relates to software/hardware/mechanical arts inventions, not chemical arts inventions.

First Step:         Decide on only one feature that you think is new. 

Second Step:     Look in patent databases like Google Patents, Espacenet and Lens to see if that feature has been patented before.

Third Step:         If you think you are the first to invent that feature, write down other features that are not new, to give context to the new feature. Think of it this way: what would an infringer have to do to use your new feature?  Limit context features to those that an infringer must do to make, use or sell your new feature. That is, limit context features to as few as possible.

For example:     Your new feature is a device in a box that wirelessly connects computers together so that they can communicate with each other. The device is new but you need the features of at least two computers to help describe your new feature. Do not worry about including all possible context features such the housing for the box or the power source for the device, just add a few features that give the new feature some context. So now you can write claim 1:

1.     An electronic device, comprising:

electronic components configured to transmit and receive wireless signals wherein the wireless signals are suitable for wirelessly connecting two computers so that the two computers can communicate wirelessly.

Some key words in this claim are “configured to” and “suitable for”. The electronic components only need to be configured to provide the result. And the wireless signals only need to be suitable for carrying out a task. This way an infringer does not need to make, use or sell the computers, just the electronic device.

Try to connect the dots in a claim. Each feature should be tied to another feature in the claim. Your claim should not look like a laundry list. Each feature is there for a reason. Below we discuss dependent claims as you will need those too. Depending on the jurisdiction you are in, features are call "integers" or "elements". Use the same terminology throughout the claims and the description for consistency.

Fourth Step:      Now that you wrote a claim, the claim must be described in extreme detail in the body of the document. 

Step Five:           After you have written your claims (independent and dependent) and made some drawings, describe how the electronic device works in extreme detail. Make sure that every feature of the claim is described in detail in your Detailed Description. If software is used to drive the signal generator, make up some flow charts and/or circuit diagrams to show how that works. Maybe you can show aspects of the signals 107 and 109. For example, you can make up some mock signal strength diagrams. That is, you do not actually have to have built this device to get a patent on it. You just have to describe how it would work. If you have built it, all the better, but a prototype is not a requirement to get a patent. 

Tips: Try to envision the future so that you mention as many possible embodiments as you can think of. Here is where you make laundry lists of possibilities.  For example, one or both computers may be remote computers. A computer may be a mobile device and so on.  Also, in your description, do not use words like "must" or "required". Say "may be" or "can be". Also, do not call your invention, "the present invention", call it the "disclosed electronic device".  

So, the sections of your patent application are:

·       Title

·       Field – in which you just repeat the title.

·       Background – You can state a problem you are trying to overcome or make one up, like wires inhibit the free movement of devices.

·       Summary – Here you drop in your claims and say an object of the disclosed electronic device is to overcome the above-described problem(s) and/or otherwise apparent problems.

·       Brief Description of the Drawings – Fig. 1 depicts the disclosed electronic device and two computers, etc.

·       Detailed Description – Provide extreme detail of each feature of each claim.

·       Claims – Your claims define your intellectual property.  Once you have written your claims, then write your Detailed Description.

Your first claim, independent claim 1 can have dependent claims 2, 3, etc. that depend from claim 1. These dependent claims should not be trivial, like the box is blue, unless there is a real reason that is it blue. Dependent claims are used during prosecution of your patent application (or in litigation) if it turns out that you were wrong about the new feature of claim 1 actually being new.  Dependent claims can be incorporated into independent claims during prosecution. Because you defined a new feature in each of your dependent claims, your patent may still have value even if you do not get an allowance on your claim 1. For example, for claim 2 you might describe a new signal driver. For claim 3, you might describe a new signal receiver.  Write a lot of dependent claims, each one having one new feature. Also, you can actually write several independent claims for each patent application. For example, you can turn your device claim into a method claim. But do not get too carried away writing dependent claims as most jurisdictions only allow 20 claims per application before you have to pay more fees. If you have a lot of ideas for dependent claims, you can write those into the Detailed Description for use later. After you write your claims you probably want to run them by your patent professional before you start drafting the Detailed Description.

Again, make sure that all essential and context features are described in detail in the Detailed Description.  Beneficially, during prosecution, you can use information provided in your detailed description to “amend” your claims. So it is key that your Detailed Description is as detailed as possible.

A couple of words about defining a feature.  A feature can be really small. It does not have to be something revolutionary like WiFi (our example) or the wheel.  If it is revolutionary, you should write and file a number of patent applications to cover many aspects of it.  One client of mine had me write three completely different patent applications on the same feature to cover it from different angles. 

The new feature can be an improvement to an already existing technology. For example, changing an angle or curve, increasing a frequency or adding a new button to a user interface can be enough to get a patent.  The new feature can be a new combination of elements that have never been combined before.  For example, Jerry Lemelson patented the combination of a camera pointing at a conveyor belt. That way, products on the conveyor belt could be photographed, and those photos could be compared to an existing photo of a product for quality control. Another way you can think about your invention is that it can be defined as a means for accomplishing something. 

Also, do not forget that the new feature has to have been kept as a secret before filing the patent application. Remember, by making a public disclosure of the feature, you lose your right to patent it in most countries.

Think about whether a new feature of a dependent claim can be independent claim of yet another patent application. Think about whether you can approach your new feature from a different angle such as a different use, for example, a computer wirelessly in communication with another computer, connected by a device. This is how patent portfolios are built. The more patents you have, the more value each one has.

Finally, a word about patenting software. This is very tricky. If your invention is just moving content around, forget it. That is not patentable. However, if your software solves a technical problem and therefore generates a technical effect, there is a better chance it will overcome a “subject matter eligibility objection”. Making software run more quickly, transferring data more efficiently and taking up less data storage are technical effects. So think hard about whether your software invention provides a technical solution to a technical problem.

Happy patenting!

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