This chapter describes some of the (sometimes counterintuitive) guidelines and good practice tips for drafting a patent application.
Below are general guidelines and approaches I have developed for preparing a patent application. These are not fixed rules—most have exceptions—nor are they designed to teach how to draft a patent application. They simply reflect my personal approach. Also included are answers to clients’ frequently asked questions after having reviewed a patent application that I have drafted for them.
Writing Tip #1: How to write an application with the broadest possible protection (without breaking the bank)
All my clients express a desire to get the most effective, broadest scope patent protection for their inventions. During consultations, a few inventors describe the invention in terms of overall goals and how the mechanisms of the invention can achieve them without describing how the invention actually works. They do this because they believe if they describe their invention generically, they can influence me to write a broad application and secure a broad patent. However, a broad patent does not describe an invention in generic terms without any details. To secure a broad patent, the claims should be drafted in generic terms, but the Detailed Description should include as many details related to the point of novelty as possible. The more detail that is included into the Detailed Description of the patent application, the better.
Why include details and specifics of the invention in the Detailed Description section of the application if the claims are what define the scope of the patent protection? An important reason to include the particulars of the invention is that by law, the Detailed Description section must provide a written description that support the full scope of the claim(s). Otherwise, a patent may be invalidated for failing to satisfy the written description requirement (see Chapter 10).
Furthermore, the inventor might not be able to secure patent protection for a generic version of the invention. The claims might be so broad that they encompass prior art devices. Information in the Detailed Description can be used to amend and narrow the rejected claims just enough to avoid the prior art (i.e., make them more specific and a little less broad so that they don’t encompass the prior art). Without the details of the invention included in the Detailed Description section at the time of filing, the claims cannot be amended since no new information can be added to the patent application after it is filed with the USPTO. Therefore, the slightly narrower invention that might have been allowed, if it had not been included, cannot then be claimed. The inventor could not therefore avoid the prior art by including more detail in the claim or shifting its focus because that detail would not be in the patent application and the claim could not be amended and would remain rejected.
The Detailed Description should include alternative embodiments, peripheral aspects related to the point of novelty, and different “genus- species” combinations. The Claim Set, by contrast, should include only the invention’s necessary components while the claims recite only the necessary elements directed to the point of novelty. This sets up the patent application to seek broad patent protection and allows the claims to be narrowed in the future during examination if necessary to secure the patent during examination.
Should the examiner find a prior art reference, which is directly on point to the broad concept of the invention, the inventor would have options for securing patent protection even if the protection is narrower than the inventor had initially hoped for.
This issue is illustrated in the case of Bimeda R & D Limited39 in which a drug formulation inventor appealed the examiner’s final rejection to the Federal Circuit. According to the application claims, the drug formulation excluded acriflavine, a type of antibiotic. Acriflavine was disclosed in the prior art reference cited by the examiner to reject the claims. To overcome the rejection, the inventor excluded it from the claims and argued the amended claims were patentable. Unfortunately for the inventor, the Detailed Description section of the patent only described a drug formulation that did not include antibiotics in general and the patent application did not exclude Acriflavine in particular. The Federal Court therefore held that the patent application did not support a claim specifically directed to an acriflavine-free formulation, and the inventor’s claim to the acriflavine-free formulation was not allowable for not being supported by the original specification. If Bimeda R & D Limited had included a description that the drug formulation was free of a specific type of antibiotic such as acriflavine in the patent application, the inventor could have sought a claim to the drug formulation that is free of that specific type of antibiotic. But the inventor did not do so and the claim was held invalid.
When drafting a patent application, include the particulars of the invention in the Detailed Description section. If it is necessary to rely on those details, the claims can be amended during examination to include those details in the independent or dependent claims, and the patent application may be salvaged.