1 Patent Application Preparation
Preparing a patent application is the first step toward obtaining a patent that clearly defines the scope of legal protection granted to the patent owner. In this regard, drafting a patent application differs significantly from writing a scientific or technical paper. Although a patent application contains technical subject matter and may resemble such a paper in some respects, scientific papers often emphasize the underlying theory, while a patent application tends to focus on the structural details of the invention and on the process for making and using it, although it is not typically required to be a blueprint in the literal sense. The issued patent may be reviewed over the years by various public officials, including patent examiners, appeal board members, and judges, as well as by business partners and competitors. Therefore, the patent application should be drafted with these audiences in mind.
A patent application typically includes the following elements:
- A request (referred to as an application form in some countries),
- A description,
- One or more claims,
- One or more drawings (where necessary for understanding the invention), and
- An abstract.
Although the patent drafter is unlikely to prepare the application in this exact order, it is common practice to begin with the claims. This is because the claims form the core of the patent application, and the content of the description is, in part, shaped by the content of the claims.
1. Preparing Patent Applications
The first question a patent drafter should ask upon receiving instructions to prepare a patent application is: *How soon does this application need to be filed?
Professional Tip
Always ask the client and the inventor when the patent application needs to be filed—but do not rely on their interpretation of the law. Verify the relevant facts yourself.
Each country’s patent law imposes strict rules regarding the timing of filing a patent application in relation to certain events. These events may include, for example, the first date of attempted commercial exploitation, the first date of export, or the first date of public disclosure. Therefore, the patent drafter must gather the following facts:
- In what territory or territories does the client want to protect the invention?
- Has anything already occurred that might impair the client’s ability to protect the invention in those specific territories?
- How soon does the client intend to take action that might jeopardize the ability to protect the invention in those territories?
Even in the absence of such time-sensitive issues, the patent drafter, like any professional, should strive to complete and file the patent application as quickly as possible. There is always a risk that a third party may file an application for a similar or identical invention, and any delay caused by the drafter could negatively affect the client’s position. Similarly, if prior art becomes publicly available (e.g., an article is published), it could be used against the client’s application if it has not been filed earlier.
Any professional patent drafter must recognize that their workload is largely driven by external deadlines beyond their control and may frequently need to adjust their schedule to accommodate urgent developments.
In principle, patent drafting is an iterative intellectual task shared between the patent drafter and the inventor. When there are multiple inventors, it is generally effective to designate a single “contact inventor” as the main point of communication. This individual should have a thorough understanding of the invention, be able to collect and relay information from the other inventors, and have sufficient time to collaborate effectively with the drafter.
When drafting a patent application, the key question the patent drafter must answer is: Am I able to draft claims that provide meaningful protection based on the inventor’s disclosure and my own professional skills?
Professional Tip
When filing a patent application with the patent office in hard copy via mail or another physical delivery method rather than electronically, it is essential to create a folder containing a copy of all submitted materials. This includes all completed forms and proof of any payments made. Be sure to include the original mail deposit receipt from the post office as evidence of the filing date.
When filing electronically, ensure that you save and possibly print the electronic confirmation generated by the patent office after submission. This confirmation is critical in the event that the patent office does not assign the correct filing date to the application. The filing date is a key element in determining priority rights and the client’s legal position. One day late is too late.
Example
Engineer X calls to ask about obtaining a patent for their invention in the United States. You ask some preliminary questions, but they are unable to speak in detail at the moment, so you agree to meet in two days. At the meeting, X provides you with a detailed document describing the invention. You begin to gather information about potential obstacles to patentability and ask the following questions:
- Has this invention been shown to anyone in the absence of a non-disclosure agreement (NDA)? (An NDA is a confidentiality agreement under which the parties agree not to use or disclose the subject of their communication.)
- Has the company sold or attempted to sell this invention? (This may constitute a time-bar event in some jurisdictions, such as the United States.)
- Have you or your company published anything about this invention?
- Have you told anyone outside your company or institution about this invention?
- Have you demonstrated the invention in any public forum, such as a trade show, conference, or on your website or social media?
Engineer X initially answers “no” to all of these questions. They are unsure when the company plans to begin selling the invention. Assuming no time-bar events have occurred, you continue to discuss the invention in detail.
Toward the end of the interview, X recalls that a co-worker displayed the invention at a scientific meeting “a couple of months or so ago.” When you ask for the exact date, they look through their calendar and finally exclaim: “Wow, that was last October so a year ago already!”
You know that, in the United States, a patent application must generally be filed within one year of the first public disclosure by the applicant in order to benefit from the grace period. You ask X to confirm the exact date. After consulting a colleague to verify, they finally confirm that today is indeed the one-year anniversary of the invention’s public disclosure.
It is 15:00.
You are aware that this public disclosure at the scientific meeting may not preclude patentability provided a patent application is submitted before midnight. However, it is impossible to prepare a comprehensive and complete patent application for the invention before the deadline.
Fortunately, U.S. law provides for provisional patent applications. A provisional patent application must disclose the invention, but it is not required to include patent claims. A provisional patent application will expire one year after its filing date and effectively serves as a placeholder if a regular utility patent application is filed within that one-year period.
You are aware that you should not incur legal expenses without prior approval. Therefore, you contact the president of the company (your contact person for patent matters) to explain the situation. She authorizes you over the phone to proceed. As a precautionary measure, you ensure that you follow up by sending an email to the company summarizing the agreement reached during the phone call, so that both parties have an additional written document confirming the authorization.
Fortunately, Engineer X provided you with a comprehensive invention disclosure and a technical document explaining the invention, and during your interview with them, you gained a solid understanding of the invention. You request an electronic copy of the document from X. You inform your colleagues that you need to postpone all other work for the remainder of the day to accommodate this urgent provisional application.
You devote the rest of the day to drafting the best possible provisional application within the limited time available.
After filing the application, you create a file for the provisional patent application.
Patent drafters must endeavor to safeguard their client’s patent rights. Sometimes, protecting the applicant’s rights simply involves ensuring that critical dates are observed. If the patent drafter in this example had neglected to inquire about potential statutory bar dates or had not pressed the engineer for precise information, they might have returned to the office and spent the subsequent two weeks drafting an impeccable legal document for an invention that could no longer be patented.
Simultaneously, the patent drafter must verify at an early stage whether the applicant intends to file in countries other than the one in which they and the drafter are located. Applicants from member states of the Paris Convention and the World Trade Organization (WTO) can claim priority under the Paris Convention if they file subsequent patent applications in those territories within 12 months of the filing date of the first application for the same invention (referred to as the priority date). Such priority based on the first application can also be claimed under the Patent Cooperation Treaty (PCT) when an international patent application is subsequently filed. The effect of a validly claimed priority is that the subsequent application will not be invalidated by disclosures or filings occurring between the priority date and the filing date of the subsequent application. For instance, if a third party files another application containing the same invention or discloses the same invention to the public between these two dates, those actions will not impact the patentability of the subsequent application claiming the priority of the first application.
The patent drafter should record the filing date of the first application and consult with the applicant well in advance of its first anniversary. Even if an applicant initially indicated no interest in foreign filing, they may have changed their mind a year later. It is also important to remember that it is not necessary to wait a full year before filing abroad. While nearly 180 countries are parties to the Paris Convention, the patent drafter should preferably determine before filing the priority application whether the applicant is interested in obtaining protection in a country that is not a signatory to the Paris Convention. If so, the patent drafter will need to investigate that country’s specific priority rules—although a patent drafter will likely not be permitted to directly represent their client before a foreign patent office.
1.1 Obtaining invention disclosures from inventors
Clients may possess varying levels of capability regarding the management of patent documents. Certain clients may maintain sophisticated administrative units capable of supplying completed invention disclosure packages to patent drafters, who can subsequently conduct a follow-up review as required. At the other end of the spectrum are clients lacking any intellectual property (IP) infrastructure, necessitating substantial guidance and assistance from the patent drafter.
The patent drafter is required to collect technical information and concepts regarding the invention from its inventors, as well as to gain insight into business considerations that may originate from other sources, such as the applicant’s managers or marketing executives. The technical information will primarily be submitted in written form, that is, in the form of invention disclosures, sketches, technical drawings, laboratory reports, manuscripts of unpublished papers, prototypes, etc.
Over time, the patent drafter will determine which approach yields optimal results for different client types. For certain clients, the patent drafter may prefer to supply a blank invention disclosure form and allow the inventor(s) to complete it independently. For other clients, the patent drafter may prefer or be required to obtain information regarding the invention by interviewing the inventor(s). Regardless of the circumstances, the patent drafter should always endeavor to hold at least one meeting with the inventors in person, via telephone, or through video conferencing. It is highly unlikely that, absent such interaction, an inventor will be able to provide a patent drafter with sufficient material to establish a clear understanding of the invention. Similarly, it is unlikely that the inventor will otherwise understand the legal context and the rationale for providing background information concerning their invention.
In an ideal scenario, the inventor will provide the patent drafter with an invention disclosure form and supporting documents well in advance of their meeting. The patent drafter will review the disclosure materials at the earliest opportunity thereafter and document any questions they may have, both technical (e.g., “How does A function with B?”) and legal (e.g., “Who else could be an inventor?”), as well as any areas in which additional disclosure would be beneficial.
Professional tip
You must always negotiate and discuss fees with your clients before incurring charges, particularly when the client is an individual.
During the meeting, the patent drafter will verify that they have a complete understanding of the invention, ensure that there is no additional disclosure information they should receive, identify the most commercially significant aspects of the invention, and confirm that there are no pending statutory bar dates (or verify any such dates).
The Secretariat of WIPO assumes no liability or responsibility with regard to the transformation or translation of the original content. World Intellectual Property Organization (WIPO) (2023). WIPO Patent Drafting Manual, Second edition. Geneva: WIPO. DOI: 10.34667/tind.44657