[Updated 2018-07-11] “Painful.” That was the most-common description of the process of drafting and revising a patent application, in an informal survey of inventors that the author took some years ago. In contrast, the structured drafting approach described below provides a faster, less-expensive, and even enjoyable way of producing a high-quality patent application.
Phase 1: Sketch a resource-flow diagram
First, sketch one or more flow diagrams, like the one shown in the made-up example below, to show how to make and use the invention Here’s how:
• Identify a product or service that someone might actually pay for, and that’s made possible — or improved — by the invention.
EXAMPLE: A SPICE RUB. The made-up example below assumes that home cooks and restaurant owners might pay for a spice rub that reduces the time it takes to bake a potato.
• Diagram the flow of resources and processes that produces the product or service — in effect, the view from 50 feet up. Show additional details in lower-level diagrams as appropriate.
• Make notes directly on your diagram(s); this will help you later when you answer the four standard questions in Phase 2.
EXAMPLE: Here’s such a diagram for our spice-rub invention, along with accompanying notes. Notice how processes are shown as circles, while process inputs and -outputs are shown in bold.
Software developers might recognize these diagrams as a simplified variation on well-known data flow diagramming techniques (or business-process modeling).
If the inventor and patent attorney are meeting in person, they can produce these drawings on paper or at the whiteboard. If they’re in different locations, they can do screen-sharing, for example with Zoom, GoToMeeting, or Skype, and use a drawing- or flowcharting program such as PowerPoint, SmartDraw, Visio, etc.
In figuring out just what to draw and what notes to make, it can help to keep asking the Five Whys questions, made famous by Toyota.
Phase 2: Answer four standard questions
for each resource and process in the diagram
Next, methodically describe each resource and each process in your resource-flow diagram by answering four standard questions for each, in complete sentences. This will get you started on providing an “enabling disclosure” of how to make and use the claimed invention, which is required by title 35, section 112(a) of the United States Code.
The discipline of writing complete sentences, as you go along, gets most of the editing done in real time and thus makes later review much easier.
The four standardized questions are shown in the following example description of items from the spice-rub diagram above:
[BEGIN EXAMPLE]
Resource: Powdered unicorn horn (102)
(a) How exactly did you obtain this resource? We looked along a nearby unicorn trail to find a cast-off unicorn horn. We ground up the horn using a grinding wheel.
[Footnote: If necessary, add intermediate resource- and/or process steps to the diagram and explain them in the same manner.]
(b) Can you think of any possible alternatives that might have worked? We could have ground up the unicorn horn using a fingernail file; a vegetable grater; etc.
[Footnote: This helps to broaden the possible scope of the patent claims and to reduce the chance that an imitator could avoid infringement by making minor changes. IMPORTANT: If you’re just predicting possible alternatives that you haven’t actually tried, be sure to make that clear.]
(c) In your personal opinion, is there one particular “best” approach for this resource? We had good results when we ground the unicorn horn to powder size F100 (FEPA).
[Footnote: This helps to identify possible best-mode points as required by title 35, section 112(a) of the United States Code.]
(d) Any other notes of potential interest concerning this resource? We think that an enzyme in the unicorn horn helps to break down proteins in the potato, which helps to speed up the baking process.
Resource: Vinegar (104)
(a) How exactly did you obtain this resource? We bought white vinegar at a nearby grocery store.
(b) Can you think of any possible alternatives that might have worked? We think that red wine vinegar, balsamic vinegar, etc., would have worked just as well (but might add different flavors).
(c) In your personal opinion, is there one particular “best” approach for this resource? We prefer white vinegar because it’s flavor-neutral.
(d) Any other notes of potential interest concerning this resource? We think the vinegar’s acetic acid activates an enzyme in the powdered unicorn horn 102.
Process: Mix well (108)
(a) How exactly did you cause this process to happen? We poured the vinegar 104 and the pepper 106 into a small bowl and mixed them using a whisk.
(b) Can you think of any possible alternatives that might have worked? We could have mixed the ingredients with a hand- or bowl mixer.
(c) In your personal opinion, was there one particular “best” approach for this process? No.
(d) Any other notes of potential interest concerning this process? None at the moment.
Process: Dry the mixture (110)
(a) How exactly did you cause this process to happen? We let the mixture (of powdered unicorn horn and vinegar) dry overnight at room temperature.
[DCT note: Again, if necessary for detailed explanation, add intermediate steps to the resource-flow diagram and explain them in the same manner.]
(b) Can you think of any possible alternatives that might have worked? We could have heat-dried the mixture.
(c) In your personal opinion, is there one particular “best” approach for this process? The temperature of the mixture should not be allowed to exceed 140°F to avoid denaturing the unicorn-horn enzyme.
(d) Any other notes of potential interest concerning this process? None at the moment.
[END EXAMPLE]
Along the way, consider building a glossary of significant terms — it might turn out to be a useful resource in the jury room, among other places.
Phase 3: Draft at least some claims
It pays for the inventor and patent attorney to draft at least some claims together in real time. Doing this lets them tailor the claim language to what the inventor feels is the claim’s maximum scope, while avoiding whatever prior art the inventor knows about.
Real-time claim drafting also gives the inventor and attorney a chance to brainstorm about what types of claim would be useful for a licensing program, and/or for litigation against competitors.
TIP: For a useful approach to drafting claims, see this step-by-step approach, as well as this posting about gaming the Single-Sentence Rule.
Phase 4: Update the diagrams and description
It will usually be a good idea to revise the diagrams and description to match the claim language. Doing so will make it easier for future readers to figure out what’s going on.
Phase 5: Edit into conventional format?
Many patent attorneys will want to take the time to edit the worksheet’s complete sentences into a conventional-looking patent application before they file it. The editing work should be easy by that point, because most of the heavy lifting will be done.
But consider this: The resource-flow diagrams and the answers to the four questions should contain all the information required by the law for a patent application. So, it might make sense to immediately file these materials and the initial claims “as is,” as a provisional patent application. Doing so would let the inventor quickly establish an early filing date, while buying time for the patent attorney to do additional editing and claim drafting for a traditional non-provisional application.
Why fast filing could be important
The traditional approach to drafting a fileable patent application can be a slow and haphazard process. This is especially true when — as is often the case — the patent attorney is not as familiar with the technology as the inventor is.
Yet fast filing has become more important than ever, with the enactment of the America Invents Act — under that legislation, if two inventors independently file patent applications that claim the same subject matter, then the patent will go to the one who filed first, not the one who invented first.
How to use this approach yourself
The structured approach described above has worked quite well in several different technology areas. It evolved in the course of a number of patent-application projects for some significant R&D organizations. It’s proved to be quite popular with scientists and engineers, who seem greatly to prefer it to the traditional back-and-forth drafting and editing cycle.
There are a couple of different ways you can use the approach described above:
[Footnote: It goes without saying, of course, that you shouldn’t rely on this article as a substitute for legal advice — ask your (patent) lawyer about your specific situation.]
1. You can ask your patent attorney to collaborate with you in using this approach to create a complete draft patent application in a few intense hours of fairly-enjoyable work. This kind of collaborative drafting and its precursors have proved to be extremely popular with scientist- and engineer inventors; client confidentiality precludes me from identifying them, but I can say that many of them work for companies that you’ve definitely heard of.
(You might enjoy a slide show I put together a couple of years ago to summarize a precursor to the approach described above — it illustrates, in pictures, some of the reasons that scientists and engineers tend to loathe the traditional patent-application drafting process.)
2. Alternatively, you can use the approach below on your own, to produce a rough draft that will give your patent attorney a big head start.
[TEXT UPDATED 2018-07-11; DRAWING UPDATED 2012-02-23]
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