A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. The drafting of a patent application is the most critical aspect of the patenting process. A patent application is a techno-legal document that can be filed as a “provisional application” or as a non-provisional or “complete application” with the Patent Office. Mainly the provisional application is filed to secure a priority date and it will not examined until it is converted into a complete application later. The complete application is the main patent draft that can be filed directly or after the filing of the provisional application. Also, the complete application is examined by the examiners to accept or reject the patent application.

Significance of a patent application draft:

A complete application plays an important role in a Patent approval or rejection, it is important to understand the aspects of patent drafting a complete application. Mainly, a complete application consists of various parts such as Technical Field, Background, Summary, Drawings, Detailed Description, Claims, and Abstract. Out of these parts, claims are the heart of the patent applicant and further define the scope of the invention. More specifically, claims in a complete application characterize the novelty and inventive step of the invention to determine a boundary around the invention that can help in assessing a possible infringement. The claims must be well supported by the Detailed Description and the Drawings (if applicable) as disclosed in a complete application.

Also, as a Patent Application is a base for the approval and protection of a Patent, a patent application that is not well drafted may impact the patent approval and protection in at least the following ways:

  • Low protection – If claims are too broad or too narrow

As claims of a patent application define the scope of the legal protection for an invention, it is preferred to draft claims that are not too broad and not too narrow. If the claims of the patent application are too broad may attract more patentability-related objections as they may attract a wider range of prior arts. On the other hand, the claims that are too narrow tend to be easier to obtain and enforce, however they may allow competitors to gain easy access to the same market by producing products with only minor modifications to the patented product or service and therefore too narrow claims are also less useful as a business tool. 

Preferably the claims should be a mix of broad and narrow claims and should cover all aspects of the invention supported by the description of the patent application. The description of the patent application should clearly teach how to make and use the invention. Importantly, a set of well-drafted claims and a well-drafted complete technical disclosure of an invention combined with expertise aids in defending the invention under prosecution and increases the likelihood of a patent being granted.

  • Chances of rejections – If claims are not clear

The claims incorporated in a complete application of a Patent is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected, hence the patent claims define the main technical aspects and limitations of the invention for which protection is sought. It is of the utmost importance to draft the patent claims in a manner that they must be clear in the sense that they should not cause the reader to speculate about the scope of the claim. In case the patent claims are not clear, concise and succinct, the Patent Office may raise the clarity objection and refuse the Patent Grant. To avoid serious objections during the patent prosecution stage, it is important to draft the patent claims that must pertain to a single invention or a series of innovations connected together to constitute a single inventive concept, and that must be clear, short, and reasonably based on the content disclosed in the application. Claim definitions are also very important because they define the scope and set limits of patent rights.

  • Lack of protection – In case any important feature is missed to claim

A Patent application may include multiple features that are novel and inventive over the known arts in the relevant area. For better legal protection it is important to claim all the novel and inventive features of an invention that are disclosed in the description of the patent application. During patent prosecution stages, depending on the jurisdiction in which the Patent application is filed, the incorporation of the new claims from the description of the patent application may or may not be allowed. Therefore, it is important to access and claim all the important (i.e., novel and inventive) features of the invention at the patent application drafting stage. Moreover, the patent claims include the Main/Principal/Independent claims and dependent claims. The Main claim should be drafted in a manner that it must include at least one novel and inventive feature of the invention while the other important features and/or definitions may be included in the dependent claims.

  • Chances of rejection – In case claims are not supported by the description

Insufficient data in the description of the patent application can complicate patent application grants in events such as where the available data are insufficient to substantiate the scope of an application’s claims. The insufficient disclosure in the description makes it difficult to bring the patent claims to life. Proper and valid data must be effectively supplemented to the patent claims and the description in order to obtain effective protection.

  • Chances of rejections – In case of lack of written description enablement

The complete application of a patent application should fully and particularly describe the invention and the method by which it is to be performed i.e., the description of the method or the instructions for the working of the invention as contained in the complete application are by themselves should be sufficient, full and particular to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention. It is also essential that the best method for performing the invention, which is known to the applicant is disclosed in the complete application. In case these conditions are not met by a complete application of a patent application, such patent application may be rejected by the Examiner.

Technological innovations in Patent Drafting:

As Patent Drafting has a significant impact on patent protection, over the past few years several attempts have been made by innovators to develop Automated Patent Drafting Tools. These Automated Patent Drafting Tools may help a Patent Drafter in several ways and some of them are listed below:

  • Better time management – Time saved by the tools may be used for further enhancement of the patent application draft

A carefully prepared patent application creates valuable intellectual property and avoids the wastage of time and money on patent prosecution. Patent professionals mainly carry out the manual task of drafting a patent application, which is a time-consuming process. Nowadays Automated Patent Drafting Tools are available that patent professionals can use according to their client’s needs or jurisdictions. These tools can automatically generate various sections of a patent application and the patent professionals can further enhance these sections in lesser time hence a good quality patent application can be drafted in a minimum time frame.

  • Improved accuracy – Lesser human errors

If a patent application is not drafted carefully, the applicant may ultimately have his or her patent application rejected by the Patent Office. Also, the smallest of mistakes in the drafted patent application or patent claims can lead to serious problems further down the line. Therefore, the patent application should be carefully drafted to ensure that the patent draft meets the overall aspects from a technical and legal point of view.  However, due to the nature of the patent drafting work, errors can often be introduced accidentally by patent professionals. The patent professionals get assistance in drawing up high-quality applications and generally rely on word processors and writing tools (i.e., spelling and grammar checkers etc.). These word processors and writing tools may not be as efficient as the Automated Patent Drafting Tools. Automating tedious patent drafting tasks helps in avoiding errors introduced by manual drafting. For example, human errors in adjusting the claim numbers and dependencies, or incorporating details from claims in the summary or abstract section can be avoided by these tools.

  • Improved productivity

Patent drafting automation tools allow patent professionals to make their drafting practice more efficient. Using patent drafting automation tools, professionals can save time and effort and further this saved time and effort can be utilized to enhance productivity by drafting a large number of patent applications in lesser time.

  • Early preparation of the draft – Leading to claiming an earlier priority date

As patent drafting automation considerably reduces the preparation time of a patent draft and as the patent draft prepared using the automation techniques has lesser errors, a lesser time is required by the Applicants/Professionals to finalize and file the patent application. Therefore, the Applicant can claim an earlier priority date by filing the patent application earlier.

Conclusion: Keeping in mind the impact of Patent Drafting on patent protection, Patent Applicants / Inventors should be encouraged to learn the very basics of patent drafting. This will help them in checking the quality of the drafts provided by their patent attorneys or patent service providers. Also, to enhance the quality of the Patent Drafts, the patent attorneys or  patent service providers should be encouraged to take benefit from the Automated Patent Drafting Tools.

PatentPal offers language generation tools for patent drafting. The tools provided by PatentPal are simple and intuitive. Using these tools, a patent attorney or patent service provider can generate the specification and figures to support a set of claims in a patent application with one click. These generated drafts and drawings can also be exported into various formats. PatentPal also offers customization of generated phrases according to the patent attorney’s or patent service provider’s preferences. Additionally, in these offered tools the specification updates can be seen in real-time. One can have a look at some of the features of the tools offered by PatentPal by watching the demo here.

Disclaimer: The present article is intended to provide general guidance on the subject, and is not intended to be legal advice. Please consult us or a patent attorney of your choice with regard to your specific case.

Authors

  • Tarannum Bose

    Tarannum Bose is a Law student pursuing BBA LLB (Hons) from Amity Law School, Kolkata. She is proficient in deep and accurate research with a quick turnaround. She has prior experience in article writing and hopes to further develop her article writing finesse.

  • Tavleen Khurana

    Tavleen is an Intellectual Property Attorney. He specializes in the registration, maintenance and litigation of IP and related support practices. He has substantial experience in Patent Drafting, Office Action Response Documents Drafting, Patent Litigation, Patent Searching, Filing of Patent Applications, Patent Infringement Analysis, Handling Patent Based Queries, Coordination with Inventors, Fact-finding and Case-mapping relevant to subject matter for litigation through E-discovery. Tavleen regularly assists clients with patent-related strategies and also advises the clients on issues relating to different technologies. He has expertise in inventions related to electronics, software, telecommunication, Internet of Things (IoTs), artificial intelligence, machine learning, data science, cloud computing, data analytics, mechanical engineering, electrical engineering, general engineering and medical devices. Currently, tavleen is handling patents, designs, trademarks, and copyrights matters at Singhal Consultancy.