Guidelines for Drafting Patent Applications ⋆ Tech Attorneys

Patent Drafting Process

Inventions including novel and inventive features are eligible for patent protection based on contents of patent claims. Fundamentally, a patent is an important asset for innovators. A patent helps innovators protect their invention from competition, while helping to establish the validity of that invention in the eyes of the patent office. Specifically, a patent helps innovators obtain protection for new and inventive ideas worldwide via international patent filing throughout the time that the idea is an idea for sale in the market.

Once an inventor obtains patent protection, the patent office will publish an application in the Patent Office. The patent application will include a description of the invention and claim. In addition, the patent office will publish a list of protected designs, accompanied by a description of each design. As part of this process, the patent examiner will determine if the patent should be granted and will issue a patent covering the claimed invention. If the patent applicant’s claims are found to be legally patentable, a certificate of the patent will be issued.

Drafting of Patent Applications

Patent Drafting is a crucial task for patent attorneys and an effective patent application requires careful assessment of novel and inventive features of the invention that are to be drafted via the patent claims. Scope of patent claims can majorly impact the enforcement of granted patent to stop patent infringement, be it a case of claiming priority from an earlier filed provisional patent application, or a PCT application intended to seek international patent protection.

In addition, patent prosecution further impacts the patent scope, as while responding to the objections raised by the patent examiner by way of patent office action, the prosecuting patent attorney needs to ensure that the requested priority claim is accurate and complete.

Patent Invalidation

During patent invalidation or patent revocation proceedings, third party can challenge the granted patent based on various grounds, including defective priority claim, prior art existing before the earliest priority date of the patent to be invalidated questioning the novelty and inventive step (non-obviousness) of the patent to be invalidated, etc.

Patent Portfolio

To create and manage a strong patent portfolio, a well-crafted strategy is required for patent drafting and writing patent claims for protection of innovations, at both national and international stage by way of pct patent filings. Generally, writing patent claims for inventions and ideas is a skillful art. In use, the patent claims should not define really narrow scope, otherwise the patent protection rights would be limited. In essence, writing patents claims is an art to balance the different aspects of the innovative product or technology. Inventors generally provide the patent attorney with element list to describe each element as illustrated in patent drawings along with their functions and advantages. Patent attorneys provide patent writing services by United States trained patent attorneys at fixed legal fees for International patents, Australian patents, Singapore patents, United States patents, European patents and Indian patents.

Patent Law Firm

As per the law firm structure, intellectual property law practice covers a broad range of technical fields, with a special focus on online healthcare management, mobile applications, electrical engineering, medical electronics, semiconductor devices, electro-mechanical devices, computer architecture and networks, mobile communication technology, industrial automation, biotechnology, medical devices, biochemistry, drug delivery, plant genetics, vaccines, blood controls, biotherapeutic agents, diagnostics, nutritional supplements, and pharmaceutical fields.

Drafting of Patent Claims

To implement best practices while preparing strong patent applications, patent attorneys should be thorough with the subject matter of the invention, and all the possible additional embodiments should be described in the detailed description of the invention. The goal should be to ensure that the patent claims are not directed to non-patentable subject matter, and the claimed elements of the primary independent patent claims and eligible for patent protection. Structural elements of the invention should be clearly stated in the patent claims and the problems addressed by the invention should be properly described as well. For upcoming technologies like Artificial Intelligence, Machine Learning, Blockchain and Cryptocurrency based inventions, a strong patent strategy is required that shall cover explaining in-depth implementation of the invention as compared to prior art, so that novel and non-obvious aspects of the invention are explicitly visible to a person of ordinary skill in the art.

Patent Drafting Process

Generally steps followed by the patent attorney for drafting patent applications begin with the retrieval of patent information from the inventors (clients) by way of invention disclosure form or a patent data sheet, which includes multiple questions covering title of the invention, existing solutions available, problems associated with the prior art, elements of the proposed invention, patent drawings or sketches, list of elements illustrated in the patent figures, advantages of the invention, etc. While conducting inventor interviews, patent attorneys ask logical questions while conducting to capture essence of invention.

Patent Prosecution

Once a patent application is drafted and filed with the patent office, patent prosecution plays a key role till the grant of patent as involves interaction between inventors, representative patent attorneys and the patent office, which usually cover highly complex technical and legal issues. The goal at this stage is to comply with all the relevant procedures and the potential pitfalls. Patent attorneys and patent law firms with comprehensive technical expertise are capable of handling patent matters belonging to various technologies, including, consumer electronics, telecommunications, medical devices, computer hardware, software, biotechnology etc.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter

Quoted in and contributed to 50+ national & international publications(Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

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