1. Drafting a description, drawings and an abstract
When preparing a patent application, it is crucial to consider all its intended audiences. While patent examiners and judges are the most evident recipients, the client and the inventor also form part of the audience. The patent drafter must ensure that the inventor fully comprehends their own patent application. Additionally, competitors, potential infringers, and investors represent other significant audiences. Notably, many investors conduct a thorough review of a technology company's patent portfolio before committing to an investment.
As previously discussed, the description section of a patent application is typically organized into distinct subsections. The precise titles for these subsections can vary slightly depending on the jurisdiction. Therefore, before preparing the description, the patent drafter must consult and adhere to the specific format required by the jurisdiction in which patent protection is being sought.
For example, the descriptions in international applications under the Patent Cooperation Treaty (PCT) are to be headed thus:
- “Title of invention”
- “Technical field”
- “Background art”
- “Summary of invention” or “Disclosure of invention”
- “Brief description of drawings”
- “Best mode for carrying out the invention,” “Mode(s) for carrying out the invention” or “Description of embodiments”
- “Industrial applicability” (if relevant)
- “Sequence listing” (if relevant)
- “Sequence listing free text” (if relevant)
International applications filed under the Patent Cooperation Treaty (PCT) are generally expected to follow a standardized format. However, exceptions may be made if the nature of the invention benefits from an alternative approach that aids in its construction or presents its substance more economically.
Professional Tip
It is essential to remember that the way in which the description, or any part thereof, is drafted can influence the interpretation of the patent claims. Furthermore, the rules governing the presentation of the description are not uniform across all jurisdictions. Therefore, it is crucial to thoroughly investigate the specific requirements and customary practices for each section of the description in the relevant jurisdiction(s) for your client.
2. Drafting Order of a Patent Application
Before commencing the drafting of a patent application, the patent drafter must have a clear understanding of the invention and its inventive features in contrast to the existing prior art. This clarity is essential to determine the necessary embodiments, examples, and/or drawings required to adequately support the claimed invention. A comprehensive, holistic approach ensures consistency throughout the application, which is vital for its interpretation. For instance, if a term is used in the claims and the same term appears in the detailed description, readers will understand it to refer to the same technical concept in both instances.
While there is no single "correct" method or order for drafting a patent application, and jurisdictions may mandate variations in the sequence of sections, applications are rarely drafted in a strictly sequential manner. The following reflects a preferred order among experienced patent drafters; however, other approaches may prove equally effective depending on the context. Some practitioners, for example, might opt to present items (ii) and (iii) in a different order.
- Drafting first the broadest main claim(s) reciting the inventive features is an efficient way of formulating the essential inventive concept (see also Module VI, section 1). Although it can be tempting to do so, drafting the background art section first may not be the best approach because there is a risk that it will end up being far too long and detailed; instead, the patent drafter should spend their (necessarily limited) time on other, more important, parts of the patent application that provide sufficient disclosure of the claimed invention, such as the detailed description of embodiments, drawings and a summary of the invention.
- After drafting the claims, it is logical to draft the first part of the description that is, the title, technical field, background art and summary of invention although the last of these may equally effectively be drafted later, when the patent drafter has completed the description of embodiments and revised the claims.
- Next will be the second part of the description that is, the brief description of figures, the detailed description of embodiments and the drawings. Since these sections are interrelated, they are drafted as a group.
- Once they have drafted the description and drawings, the patent drafter should revisit the claims: it is likely that writing the description has brought them to a clearer understanding of the invention. For example, they will now be in a better position to spot extraneous elements in the claims that could be a barrier to the broadest possible claim coverage. The patent drafter may now see that the claims do not describe the invention as accurately as they could or may even have had new ideas for claims.
- Once the claims are completed, the patent drafter needs to check the drawings and description to verify that the claim terms have been appropriately disclosed and supported, as well as that there is consistency of terms and meaning. Suppose the patent drafter has used a highly abstract term such as “floor-engaging member” to mean a chair leg. The patent drafter may then opt to define this abstract term in the description, for example “The seat piece is attached to the first chair leg, which is but one example of a floor-engaging member suitable for use in an embodiment of the invention.”
3. Drafting the Sections of a Patent Description
This section delves into the specifics of drafting each component of a patent application's description. Although we will proceed in the order outlined in Section 1, Section 2 has highlighted that this sequence may not reflect the actual order in which a patent drafter prepares the application.
3.1 Title of Invention
The title of an invention should provide a broad yet concise description of the invention's subject matter. In certain jurisdictions, such as the United Kingdom, the title is published shortly after the application is filed, with the rest of the patent specification typically published 18 months from the filing or priority date. Consequently, many patent drafters choose a broad title.
While it is advisable to avoid an overly narrow title that could unduly restrict the implied scope of the invention, the title must still sufficiently indicate the subject matter. Occasionally, a patent examiner may raise an objection if the title is deemed insufficiently descriptive of the invention.
Conversely, although the title should appropriately describe the claimed invention, it typically cannot fully characterize the invention itself within the allowed word count. For instance, if a claimed invention pertains to a "semiconductor device" and a "method for fabricating a semiconductor device" with novel features, a common title would be "SEMICONDUCTOR DEVICE AND METHOD FOR FABRICATING THEREOF."
In some jurisdictions, like the United States, the heading "Title" is favored over "Title of Invention." This preference stems from the concern that including the word "invention" in the heading might risk narrowing the interpretation of the claims.
3.2 Technical Field
The "Technical Field" section identifies the general area of technology to which the invention belongs. This section is typically brief, usually consisting of one or two short paragraphs (two to three sentences). Its purpose is to state the broad technical domain in which the reader is expected to possess some level of expertise, often referred to as "the art." This section helps to provide a general classification for the invention.
For instance, if the invention relates to an improvement in a fuel system for an internal combustion engine, the technical field section might read: "The present invention relates to a fuel system for an internal combustion engine. More particularly, it relates to an electronically controlled fuel injection system for use with internal combustion engines."
Similar to the title, the technical field section should not identify the specific claimed invention itself, meaning it should not disclose the inventive concept or unique features of the invention.
3.3 Background Art
The "Background Art" section establishes the context for the invention. It briefly outlines the existing state of the art in the field relevant to the invention. More importantly, this section identifies the problem that the invention aims to address, highlighting the shortcomings or deficiencies of existing technologies. The prior art cited here should be the closest publicly accessible prior art known to the inventor before the filing date.
When drafting this section, patent drafters must verify that the cited prior art was publicly accessible before the application's filing date. Inventors sometimes mistakenly present information as prior art that does not legally qualify as such, perhaps due to an assumption that an idea or technology that seems obvious to them must already be part of the prior art. The prior art included in the description should be limited to published materials that are directly relevant to understanding the invention and the problem it solves.
Professional Tip
To draft a focused introduction to the background art, concentrate on the specific problem the invention solves. This approach helps avoid lengthy historical accounts of the technology. Be cautious when using modifiers like "well-known" or "common," as they make assumptions about the prior art and the audience's familiarity with it.
In some jurisdictions, including the United States, art disclosed in the background section may be considered "applicant admitted prior art" by the examiner. While it's possible to contest this characterization, it's generally advisable to avoid such discussions with examiners. If art is mistakenly classified as prior art, it can be difficult to amend or delete this characterization, and a patent examiner may lawfully reject the applicant's claims.
A crucial consideration for the background art section is to prevent the disclosure of the invention's solution. If the invention's novelty lies in a "new understanding" of the prior art, describing this new understanding in the background section could lead to the novel elements of the invention being deemed present in the prior art. Therefore, the background art section must be written to disclose only the problem, not the solution the invention provides. The solution should be detailed later in the "Detailed Description" section.
If the invention's core is the recognition of a problem (i.e., the problem itself is considered new), the background art section should emphasize its absence in the prior art, rather than merely identifying the problem.
Professional Tip:
Don't invest excessive time in preparing the background section. In contemporary patent drafting, it's common practice to include only a brief acknowledgment that describes the prior art at a very high level.
A concise background section should set the stage for the technical disclosure in the detailed description. It may conclude with a brief statement on the shortcomings of the prior art, crafted to pique the reader's curiosity about how the outlined problem could possibly be solved.
Some older patent applications include "objects of the invention" paragraphs, either in the background or summary sections. It is generally best to avoid these. If a jurisdiction legally requires such a statement, ensure it is no more than a statement of the problem the invention seeks to overcome or alleviate, as identified in the background prior art. Such statements risk limiting the invention. For example, stating "the object of the invention is to provide improved safety" when lower cost is also an objective, could allow a competitor in the US to argue non-infringement if their product addresses a different goal. Furthermore, these statements can fuel "fraud" arguments; for instance, claiming an "object of the invention is to cure cancer" might be inaccurate if the invention only aims to alleviate symptoms of a specific type of cancer.
Citation of Prior Art References
While some jurisdictions do not generally require the description and listing of specific prior art references in the background section, others, like Japan, mandate that applicants describe and list at least one prior art reference known to the inventor or applicant before filing. According to the Common Application Format (CAF), a list citing specific prior art documents does not need to be part of the background art section but can be included within the description.
Before drafting the background art section, it helps to know exactly which prior art references are closest to the invention and truly need to be cited. WOIPS' AI-powered prior art search can help identify the most relevant existing patents and publications up front, so the background section only cites references that genuinely shape the reader's understanding of the problem. Try a free search to see the closest prior art for your own invention before you start drafting.
Frequently Asked Questions
In what order should a patent application actually be drafted?
Most experienced drafters start with the broadest main claims, then draft the title, technical field, background art, and summary, then move to the detailed description and drawings together since they're closely linked, and finally revisit the claims once the description has clarified the invention. It's rarely a strictly linear process, and some steps naturally get revisited more than once.
Why shouldn't the background art section be written first?
Drafting background art first risks making it too long and too detailed, at the expense of time better spent on the parts of the application that actually support the claimed invention, such as the detailed description, drawings, and summary. Most drafters find it more efficient to establish the claims and core invention first, then return to background art afterward.
Can the background art section accidentally undermine an invention's novelty?
Yes. If the background section describes the invention's own "new understanding" of an existing problem, that description can end up being treated as if it were already part of the prior art. The background section should disclose only the problem the invention addresses, not the solution, which belongs in the detailed description instead.
Why do US applications sometimes use "Title" instead of "Title of Invention" as a heading?
Some drafters avoid the word "invention" in headings like the title, out of concern that it could be used to narrow how a court later interprets the scope of the claims. This is a jurisdiction-specific practice rather than a universal rule.
Do all countries require citing specific prior art documents in the background section?
No. Requirements vary by jurisdiction: some, like Japan, require at least one specific prior art reference to be listed, while others don't require this in the background section at all. Before drafting the background art section, it helps to know exactly which prior art references are actually the closest and most relevant to the invention. WOIPS' AI-powered prior art search can help identify these upfront. Try a free search to see the closest prior art for your own invention before you start drafting.
This article draws on publicly available WIPO materials and real-world patent case studies for illustrative purposes; content has been adapted and is not an official WIPO publication.