Monday, 25 November 2013

Top 10 Signs of a Well-Drafted Patent Application

This is drafted from the perspective of a European Patent Attorney working in the biotech/pharma areas.  However clearly many of the points listed below apply generally.

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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