1. The Inventions is
Well-Presented
The overall impression from the patent application should be
of a distinct well-presented invention, where it is relatively easy to see why
it is clever and/or impressive. When
drafting a case it is easy to lose sight of the overall impression which it
gives to the reader. For example claim 1 can describe the invention as a list
of features, but that will sound less impressive than if you are also able to
reflect the problem which is solved and the advantages which are provided (An X
ray machine which provides higher definition pictures…).
2. Be Consistent
Be careful about being consistent. For example the degree of extrapolation from
the Examples to the claims should be consistent with the contribution over the
prior art. For example if you have
identified specific mutations which are difficult to find then you should be
wary of trying to claim equivalent mutations that have not yet been identified.
3. Avoid Repetition
Everything in the application should contribute something. Clearly there should be counterparts of the
claims in the description, but apart from this repetition will serve no purpose
other than increasing page fees and translation costs.
4. The Summary Should Show the Contribution
The Examiner will try to assess what the contribution is
over the prior art. He/she is more
likely to come to a favourable view of this if an actual contribution is
provided in the ‘Summary of the Invention’.
The Summary should reflect the extrapolation which the Applicant is
making from the Examples, and if necessary should justify the extrapolation. However the Summary clearly also needs to be
written in a way which accommodates the problem being solved changing during
examination.
5. Reasonable Claims which are Prima Facie Clear
The claims should give the impression of having a reasonable
scope and if possible unclear terms should be avoided in claim 1. The Examiner is more likely to be persuaded
if the patent application comes across as being reasonable, even if it is
ambitious in the claim scope which is being pursued.
6. Provide the
Correct Perspective with which to See the Invention
The entire patent application should be drafted from a
perspective which directs the Examiner to see it in the way you wish it to be
seen. Therefore the ‘Background to the
Invention’, the ‘Summary of the Invention’ and the claims should together allow
the Examiner to see how the invention happened in an objective way. Giving that overall perspective will make it
more likely that the Examiner will view the invention favourably when he/she
first reads it.
7. Don’t Lose Credibility
Make sure everything in the patent application is credible.
It is pointless to present something as novel if it is not. Having discovered that a supposedly novel
product is not novel, the Examiner might then assume there is nothing else in
the application which makes a contribution to the art.
8. Show the Significance
of Modest Contributions
You must recognise when the invention is modest and make
sure in that situation that the patent application shows the significance of
the contribution that is made by the invention.
It is better to avoid an inventive step objection being raised than
having to deal with it once it is.
9. All the Claims Should
Contribute Something
Whilst the independent claims are the most important, the
dependent claims should be thought about carefully. Dependent claims can be directed to commercial
embodiments, be drafted to cover additional infringers or reflect additional technical
effects.
10. Pay Attention to
Detail
Make sure there are no errors in claim 1 and try to ensure
there are no spelling mistakes or grammatical errors in the application. Making corrections after filing will add to
costs. In addition it should be
remembered that a published patent application could be used to showcase the
invention to potential investors.
You may also be interested in the related articles 10 TopTips for Patent Drafting and Top 10 Reasons For Filing A Biotech PatentApplication.
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