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A Few Pointers on How to Review a Patent Application

For the uninitiated, the typical patent application is a very verbose and sometimes awkwardly written document that appears to describe an invention. Each section has its own particular necessary purpose and content. Some of the reasons for the content and wording are legacies from court cases, rulings by the Patent Office, and just plain old habit and preferences of the drafter.

In general, the drafter intends to put the invention in its best light, highlighting the essential elements of the invention while not limiting the invention to the exact description shown. Remember, that the patent may be enforced 15 years later when technology has developed in unexpected and unanticipated ways.

One of the difficulties of writing a patent application is that the invention is rarely fully understood, especially by the inventor. In many cases, the inventor sees the invention as solving an immediate problem. The patent drafter should see the invention in terms of its component elements that solve the problem, but then try to evaluate every alternative of the element and every application of the invention.

As the invention is dissected into its element parts, the drafter must ask if each part is necessary and what forms it could take to accomplish the task. This often leads to fresh insights into the invention and different embodiments and applications for the invention. If I were writing a patent application for a mousetrap and I were discussing a spring mechanism, I would probably show an embodiment with a standard torsion spring. While I thought through the invention, I would consider every type of spring possible, such as extension springs, constant force springs, leaf springs, compression springs, Belleville washers, etc. When each of the different springs are considered, the embodiment may change appearance, but may still have the essential elements.

Each one of the different embodiments may spark a new way of looking at the invention or a new variation of the invention. This process is similar to many of the brainstorming tools infrequently used in engineering groups to determine many different possibilities for a product idea.

Some inventors are blinded by their closeness to the problem they are solving to recognize alternative configurations or different applications of their invention. In many cases, an alternative application of the technology in a field outside the company’s main focus may be another revenue stream if the patent were licensed.

As a client reviewing a patent application before it is filed, ask a few questions. The first and foremost question is whether the drafter understood the invention, and does that come through in the written application. Next, ask if the writing is easy to read and makes sense. Verbose, jargon laced, run on sentences that are difficult for the inventor to understand will be all but impossible for a patent examiner to decipher, let alone a judge or jury.

Thirdly, ask if the drafter has clearly defined the important elements of the invention and has explored each element thoroughly. Variations and alternative constructions of each element are important in the breadth of protection after issue as well as giving room to maneuver during prosecution.

Lastly, take the time to read and understand the claims. This is the heart and soul of the patent application and the bounds of any patent protection. Claims are the hardest thing to draft and equally hard to read. Take the time to work through the elements of the invention and ask yourself if one or more of the elements could be removed from the claim and still have it operate and be unique.

Take the time to discuss any comments or issues you see before the patent application is filed. Once the application is filed, you are pretty much committed to that text for time immemorial. It is always best to make sure the application is as perfect as you and the drafter can make it before it is filed. The patent drafter should be able to give a credible and simple explanation for each section of the document and why the particular wording was selected. Don’t be afraid to ask why and expect a logical answer.