A Practical Guide to Drafting Patents Gwilym Roberts Second Edition
2023
The moral rights of the author have been asserted. All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. © 2023 Gwilym Roberts. Second Edition. First published in 2006 by Sweet & Maxwell. Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20 – 23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk
ISBN 978-0-903932-73-8 Printed and bound by Hobbs the Printers Ltd – www.hobbs.uk.com
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Contents
Acknowledgments................................................................................................................iv Introduction.............................................................................................................................v Preface.................................................................................................................................... vii 1. Introductory comments.................................................................................................... 1 2. What is a patent, and who cares?.................................................................................3 3. Orientation..........................................................................................................................11 4. The legal requirements.................................................................................................. 17 5. Commercial considerations ........................................................................................ 47 6. The balance...................................................................................................................... 55 7. The description................................................................................................................59 8. The independent claims................................................................................................77 9. The dependent claims................................................................................................. 105 10. Tricks of the trade........................................................................................................ 113 11. Drafting in real life.......................................................................................................... 119 12. International considerations in drafting patents................................................. 131 13. Drafting in specific technical areas........................................................................ 145 14. Drafting for the qualifying examination................................................................. 159 15. Conclusion..................................................................................................................... 161 Biographies......................................................................................................................... 163 Index......................................................................................................................................167
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ACKNOWLEDGMENTS to the first edition The Intellectual Property Education Trust approached me asking if I would write a book of patents. I had been thinking about it but if it had not been for their unique blend of encouragement and patience I would not have got any further. Paul Chapman and Elizabeth Crooks provided the detailed guidance on biochemical and chemical drafting respectively. Various secretaries worked hard on my behalf, notably Liz Caffrey. I must also acknowledge the people who trained me, amongst them Peter Hale, Michael Maggs, Chris Palermo, Julian Bardo and Victor Nettleton.
ACKNOWLEDGMENTS to the second edition For the second edition I would like to thank my PA, Emma Ward, and my other colleagues at Kilburn & Strode who contributed to this edition: Jamie Atkins, Elizabeth Crooks and Daniel Jarrett. On top of these, the book would not have been completed without the wonderful input of Hannah Auger, Hirohito Katsunuma, Chulhee Lee, Michael Newton, Chris Palermo and Sarah Wang.
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INTRODUCTION Who better to draft A Practical Guide to Drafting Patents, published by the Chartered Institute of Patent Attorneys, than Gwilym Roberts? In theory one would expect that his long experience as a UK and European Patent Attorney would make him the ideal author, and it is fair to say that the comprehensive content of this 2nd Edition of the book does bear that out. However, it is the practicality of this work which is so impressive. It stands as a testament to another aspect of the author’s character – that is his great skill as a communicator. As well as chapters on the legal requirements of patent drafting and on the various component parts of the document (the claims, the description and so on) there are also illuminating chapters on commercial considerations, international aspects and even tricks of the trade. The work is a welcome and serious effort to demystify the exercise of drafting a patent and to offer concrete assistance to those with the job of describing in words something which may never have been described in words before, a wholly new and (hopefully) non-obvious invention. Drafting is not the most exciting exercise at the best of times but drafting patents in particular may be thought to be less than glamorous. Gwilym has put a great deal of time and effort, as well as his considerable expertise, at the disposal of the patent profession as a whole. He deserves our thanks for that. The Rt Hon Sir Colin Birss, January 2023
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PREFACE to the first edition A patent is the most challenging and demanding legal document that anyone will ever have to produce. It may not have the complexity of a detailed contract nor the bulk of documentation in a mergers and acquisitions deal, but drafting a patent document requires far more true intellectual energy than either of these. There are two reasons for this. First of all it must, by definition, be different from all patent documents that have gone before it. In other words, it must relate to an invention. Secondly, it is impossible to add subsequently to the content of a patent even though many creative minds may be applied to circumventing the patent during its lifetime. So it has to be completely future proof. Both of these constraints are in stark contrast with other legal documents. In the area of contracts, for example, most start with a core set of clauses which the drafter hopes will cover all eventualities. They never do, however, and all kinds of outcomes just aren’t contemplated. The next time round, therefore, the previous version is simply updated with additional clauses to cover all the things that went wrong the first time. Over many iterations the contract grows into the labyrinthine document that we see lawyers slap down on the table in the movies. In other words, the same document is used again and again, the only changes being reactive changes to problems with the previous versions. The patent drafter has none of these luxuries. Using an old patent will not do as there is a new invention to protect. And waiting for things to go wrong and then re-writing is not acceptable either. The patent attorney has to anticipate everything that could go wrong for the next 20 years and make sure that their document covers it. What other legal practitioner can boast that?
PREFACE to the second edition It’s 17 years since this book first appeared but even now occasionally someone says something nice about it so when lockdown came around it was either this or mastering sourdough. The exercise of doing a full update has been fascinating – I have learnt a little more but not as much as I’d hope, the law has changed but not as much as you’d think and best practice has barely moved. This slow rate of change is no bad thing; the patent system has had well over a century to mature and many thousands of great minds have contributed to its development. It hasn’t and must never reach steady state, but a lot of the review was affirmation and updates to case law (claims don’t change but the courts love rewriting the rules for interpreting them), plus a strip out of a host of oldschool gender assumptions; genuine apologies for any I missed. Gwilym Roberts
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1. INTRODUCTORY COMMENTS
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rafting is generally presented as the core skill of the patent attorney and yet there is remarkably little guidance in writing on how to do it. Traditionally, the patent attorney learns to draft by experience; drafting under supervision, learning from mistakes made and then honing their drafting capabilities over the years. There have been papers and training manuals dedicated to or at least touching upon the topic but these typically tell the reader what not to do. The statutes setting out the basic legal criteria tell you what to do but not how to do it. But after that you are on your own until you get to the case law, which tells you what you should have done. One of the main reasons there is so little dedicated literature is that drafting is a multifaceted skill that does not lend itself to easy definition. Most patent attorneys start in a position where they cannot draft and no one can explain to them how they should draft and then move smoothly to a position where they can draft but cannot explain to anyone else how they do it. This book is an attempt to provide some positive guidelines about what the patent attorney should be doing when drafting a patent application, based on over 20 years of lecturing and training by the A Practical Guide to Drafting Patents
author in this area and a personal caseload of hundreds of drafts spanning a range of technologies and client types and needs. A theme throughout the book is that drafting is not as difficult as it seems at the outset. There are a few core principles that have to be followed, around which are based many, many layers of practice. I outline what I view as all of those core principles in this book together with as many tricks of the trade as I have come across. It is the core principles that form the basis of the intuitive process used by most experienced drafters and which should be enough to allow a patent attorney to draft a good, safe, strong patent. The tricks of the trade are what seasoned practitioners pick up and will vary from person to person – to some extent they will differ because of areas of technology or client requirements and will always, in the end, be driven by experience. They can transform an acceptable patent into a good patent and provide many shortcuts that lessen the drafting burden. By highlighting some of these and the reasoning behind them, I hope I can at least accelerate the training process, and this is probably the best result the reader can expect from this book. Another aim is to demystify the process. 1
INTRODUCTORY COMMENTS
Too often, drafting an application is identified as the most difficult thing we do – which it is, and the work is put off as too taxing – which it need not be. Inventing is not slowing down, and increasingly patents are being viewed as commodities to be traded in the invention marketplace. So, the workload is going up and with that we have to accept drafting as a vital yet everyday part of our practice. Drafting is and always has been an international practice. A patent application prepared in one country could end up in many jurisdictions and languages, but is fettered by the fundamental and universal rule that you can’t add information to it. From decades of experience, this author has learnt a lot about practices across the globe and continues to marvel at just how unified the system really is. A patent drafted for the European Patent Office (‘EPO’) tends to meet with high regard around the world but there are always improvements available and they are touched on here where possible, together with short sections on practice points for the other ‘IP5’ jurisdictions – US, Korea, Japan and China – written by local specialists. As a result, this book should serve for European practitioners looking outward as well as Rest of World practitioners looking to factor in how we approach drafting here before the EPO. It would be impossible to learn drafting just from a hypothetical discussion such as this setting out how to do it. Practical experience has to be involved as the best way to learn the business. You will not start this book never having seen a patent and finish it being able to draft one but, with any luck, the point at which it becomes an intuitive skill will be brought a little closer.
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2. WHAT IS A PATENT, AND WHO CARES?
What is a patent? Nobody likes a monopoly except the person who owns it. Most developed economies are anti-monopoly and have various procompetition powers to undo the damage that monopolies are considered to inflict. One area where powerful monopolies are allowed is that of intellectual property. Even here, though, a monopoly does not flourish unchecked; various strict controls have been put in place to ensure that monopolies continue to be a precious and comparatively rare commodity. Probably the most powerful intellectual property right of all is the patent, and the checks and balances that have been put into place by the authorities largely determine the form that the patent has to take. Part of the power of a patent is that it is a ‘pure’ monopoly, meaning that a third party can transgress unwittingly, for example infringing without any knowledge that someone else has already made (and patented) the invention. The power is not limitless: it is important to remember that the patent is also purely an exclusive right. Although you can stop other people working your patented invention, you may not in fact have the right to work it yourself, and this is where some interesting cross-licensing possibilities open A Practical Guide to Drafting Patents
up. Even so, it is a powerful tool requiring monopoly-blunting measures to protect the public. In return for allowing the patentee to prevent other people performing the patented invention, two particular requirements have been put in place that must be met before a patent can be granted. First of all, the patent must tell the public what the invention is and how it is performed, i.e., it must be delimited and it must be ‘sufficient’. As a result, the store of human knowledge is increased. In something of a twist, however, the public are also informed what they cannot do: this is the scope of the claim defined in the patent. Because of the limited duration of the patent, long after the monopoly has ceased, the underlying new technical information continues to benefit the public, and, before that, at least they know where they stand. The second requirement for a patent to be granted is that it should only reward creativity. Originally, going back hundreds of years, patents were given as a favour or for payment in relation to areas of technology or commerce irrespective of whether they were new or old. The modern system, however, only rewards actual inventions with patents. In other words, the patentee must have added 3
3. ORIENTATION
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he approach taken in this book is to consider the legal and commercial considerations behind the patent system in some detail before discussing how this impacts on the practical exercise of drafting a patent. Although it is aimed principally at people who are within the patent system wishing to learn about or brush up their drafting, there may be some readers who are not familiar with the patent system in any detail either because they are completely new starters in the profession or because they are outsiders with curiosity. This chapter is designed to provide some background at a fairly general level to some of the concepts discussed later in the book. The chapter can also be used to a certain extent as a glossary of many of the terms that habitually appear in the patent. Despite the pedantry required to be a patent attorney, we have done our best not to favour precision of terminology here where it adversely affects comprehension. So, for example, the term ‘patent’ is used quite often even though sometimes ‘patent application’ is strictly meant, the term ‘description’ is used fairly broadly and so forth. If it is vital, the correct term is used, if it is less important then the
A Practical Guide to Drafting Patents
context should make clear exactly what is meant and if it is not important, well, it is not important.
THE PATENT A patent is a monopoly right typically lasting for 20 years allowing the patentee to stop infringers. Patents are granted country by country although there are some regional systems in place. A patent specification includes a description setting out the invention in detail together with claims that define the scope of protection. In most jurisdictions a patent application is examined in a ‘prosecution’ stage before it can be granted to test whether it is patentable in the light of the prior art, that is, information which was in the public domain before the application was filed. After grant, the patent can be used to stop infringers from copying the invention in the relevant jurisdiction but it can also be attacked by third parties on the basis, among other things, that it does not relate to a patentable invention. All of these aspects of the life of the patent need to be taken into account during the drafting process to make sure that the patent is resilient. 11
ORIENTATION
importing it and so forth. Typically, this will not be for free – for example a royalty may be paid by the third party to the patentee. A patent can also be a defensive asset and have an effect the patentee may not even be aware of; even though no infringers are making products including the invention, that may be because they had to find a way around the patent which will typically have required legal advice and design around costs, and if the patent is particularly useful, may still mean an inferior competing product. Bear in mind also that a patent often provides the first tangible value associated with an invention. Long before a product is being made embodying the invention a patent can add value – for example, it can be sold or it can be used as collateral or guarantee of monopoly to raise funds for a company intending to manufacture or sell the product. The possible commercial uses of the patent are as important in deciding what the claims look like as the issues of patentability. The patent claims should cover as many potential commercial implementations of the invention as possible. For example, the claims may cover not only the product but the way it is made and the way it might be used by the patentee or competitors. If there are multiple areas
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where the invention could be implemented then the claims may also reflect this, which will enhance its defensive properties and also its licensing potential. The exercise of making the patent claims commercially useful is limited only by the ambition of the patentee and the requirement that the claimed invention should be patentable.
CONCLUSION Becoming a patent attorney typically takes several years and things are not quite as simple as presented above. However, the guiding principles remain that the patent description should allow the invention to be put into effect and that the patent claims should define the scope of the monopoly as broadly as possible but without being so broad that they describe anything that cannot be considered to be inventive. Unfortunately, it is important to master the detailed legal and commercial considerations before being able to draft confidently even if, eventually, many of these considerations become intuitive and are seldom consciously addressed by the drafter when preparing the patent application. In other words, it is not a good idea to skip the next foundation chapters and go straight on to the practical ones!
4. THE LEGAL REQUIREMENTS
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espite efforts at regional and global harmonisation, the legal requirements for the form and content of patent applications continue to differ in varying degrees between jurisdictions, and to capture every subtle variation would be a daunting task. Fortunately, however, to a large extent the basic requirements are very similar and so here we examine the general legal requirements flagging some notable ones as we go. The best place to start is with a quick review of what the different ‘validity people’ look at, again bearing in mind that the point is to see how the drafting of a patent is affected by all of this. All of the different people look at slightly different things with some areas of significant overlap and some discrepancies, and it is useful to highlight these if only to glean some comfort that the set of legal requirements is a manageable one.
SUMMARY OF THE LEGAL REQUIREMENTS The Patent Offices Turning firstly to the Patent Offices and their examiners in the context of their role as granters of patents in an allowable form, the main requirements they look at are as follows: (1) Does the claim cover a patentable invention? (2) Is the description sufficient/enabling? (3) Are the claims supported by the description? (4) Has the specification been amended during or after prosecution to introduce subject matter not present at the date of filing (‘added matter’)? (5) Are the claims clear and concise? (6) Are the formal requirements met? (7) Are the claims in unity? Of these, some are more significant than others, and some merely have to be borne in mind during the drafting process in case future actions make them relevant. For example, it is clearly desirable to ensure that the patent relates to a patentable
A Practical Guide to Drafting Patents
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5. COMMERCIAL CONSIDERATIONS
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ooking at the business side of the patenting process, the goal is to carve out as much protection as is available for the patentee allowing exclusion or control of third-party activities over as broad a range as possible. As a result, it is not only necessary to define the core aspects of the invention, but the invention must also be covered in all of its forms. To claim the invention broadly, the essential features should be listed in the claim and each feature should individually be defined as broadly as possibly. To identify all of the forms in which the invention can be protected it is useful to look at the patentee’s activities and those of its competitors. What does the patentee sell? What does the patentee make? What aspect might the patentee want to license? What activities might third parties want to do?
APPARATUS (PRODUCT) AND METHOD (PROCESS) CLAIMS One of the fundamental distinctions is between apparatus (product) and method (process) claims. Very often, where the jurisdiction permits, a patent will have independent claims in both categories – for example an apparatus claim relating to A Practical Guide to Drafting Patents
the physical features of the product and a method claim relating to the way in which the product is used and/or the way in which the product is made as appropriate. Already the net is widening as a patent with claims in these categories allows control over parties selling the product, using the product and operating a process for making the product. These, in conjunction with typical legal definitions of infringing acts, create a powerful position. In addition, there are numerous specialist types of claims covering, for example, ways of using medicines or computer program products – all of which are part of the armoury of a patent attorney creating a commercially useful patent.
CLAIMING THE PRODUCT AT THE CORRECT LEVEL At another level the invention can be thought of as a hierarchy of components, the patent attorney having to work out where, in the hierarchy, to direct the claim. For example, a spark plug is part of an engine that, in turn, is part of a vehicle. If the invention lies in a new type of spark plug, then a claim to the spark plug, to the engine including the spark plug, or to a vehicle including the 47
THE BALANCE
invention in terms of its essential features, which should provide novelty. The advantages achieved by the invention should arise as an inevitable result of those features even though those advantages do not have to be expressed in the claim itself; the invention is not the result achieved but the manner in which it is achieved, and this should be reflected by the claim. Drafting of the main claim – which can often be only a few lines long – is the single most important skill of the patent attorney as it is within these few precious words that they have to satisfy patentability considerations, clarity considerations, and commercial considerations while maintaining semantic
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and grammatical elegance. The dependent claims are then additional, preferred or optional features to which the invention is not limited but to which it could be if it turned out that the broad expression in the main claim were not novel or not inventive in the light of prior art.
CONCLUSION We have seen how the principal parts of the patent document are driven by law, practice and commercial requirements. The only thing that remains to be explained after all of this, is how to draft a patent and the next chapters provide a practical guide.
7. THE DESCRIPTION
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he development of the various components of the description has been driven partly by the law and partly by custom, largely sensibly into a reasonably strict and universally applicable structure even if it does not avail itself of modern technology as discussed later in this book. The differences that remain arise for various reasons. For example, different countries have slight variations in their approaches and, because drafting a patent tends to be a fairly solitary and, during postqualification, a largely unsupervised process, different individuals undoubtedly develop their own idiosyncrasies. However, it is usually the case that a patent drafted in one jurisdiction will meet all of the substantive and most of the formal requirements in most other jurisdictions and so here we talk about a basic template. It is particularly important to be aware that the form of a patent application differs much more significantly between different types of technology, with the difference between, say, a patent in the area of chemistry and that of mechanical engineering being noticeable. Here we deal with the more traditional form of patent specification found in technologies such as mechanical
A Practical Guide to Drafting Patents
engineering for various reasons. Firstly, many of the drafting examinations are based around inventions of this nature. Secondly, patenting in relation to most technologies has developed along the same lines as those in mechanical engineering drafting. Thirdly, the principles applied in this field are highly transferable to other areas such that it provides the best foundation. A brief discussion of other technologies is found in later. In summary, the principal components of the description can be separated into a first half comprising an introduction and a second half comprising a specific description.
THE INTRODUCTION The introduction is structured like this: • • • • • • •
Title Field of the invention Discussion of prior art features Discussion of prior art problems or disadvantages Statement of invention – recitation of the features of the claims Explanation why these features solve the problems with the prior art Recitation of the drawings captions. 59
8. THE INDEPENDENT CLAIMS
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he claims are the trickiest bit of all. Typically, the new starter in the profession cannot draft claims and cannot understand how anyone ever could. After a while, they find that they can just about do it, but they cannot explain to anyone else how to do it. Eventually they can do it intuitively and fail to understand how anyone ever could not. As a result, the teaching of claim drafting is enormously difficult other than as a process of providing plenty of experience and supervision and, in particular, correcting errors. Indeed, what teaching there is usually centres around what one should not do rather than what one should do.
The difficulty of claiming Funnily enough people tend to worry more about whether they can spot an invention at all from the wealth of information provided to them by the inventor, rather than whether they can subsequently claim it. Yet spotting the invention is often the easy part. Most non-specialists, when asked to identify the important part of a well-known invention, will immediately point to the same thing that a well-trained patent attorney would. The patent attorney’s skill lies in spotting every invention involved in the inventor’s A Practical Guide to Drafting Patents
new product or process and, even more importantly, claiming it correctly. Indeed, one of the facets that distinguishes the patent attorney who has come to grips with claiming inventions is the ability to think in ‘invention space’. Where the lay person might look at a new product – say a pedal dustbin – and see something which opens and closes smoothly, the patent attorney would be looking at a novel catch assembly, a distinctive pedal operation, a clever configuration for sealing against odour and so forth – each being an invention that happens to be embodied in the same product. Despite the difficulties inherent in learning how to define inventions using claims, once the legal and commercial ideas around the patent system as outlined in earlier chapters are understood, merely formulating a claim for an invention should be straightforward, because all it has to do is strike the balance. In particular, if an understanding of validity and infringement considerations is brought to bear, then all the appropriate requirements of the claim can be met. Obviously, it’s not quite that simple, and in practice as we’ve seen, it is not validity or infringement that tends to be most difficult for the drafter, it is the third and effectively only other requirement of the 77
9. THE DEPENDENT CLAIMS
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ust as the form of an independent claim has developed over generations of practice, the nature of dependent claims has also spawned its own requirements and idiosyncrasies. As a result, patent attorneys can argue long into the night about how to structure patent claims, whether multiple dependencies are a good thing or a bad thing and indeed whether there is any real point in having dependent claims at all. A quick look at the main reasons for dependent claims can at least put that last concern, and the arguing patent attorneys, to bed.
Why do we need dependent claims? The primary reason for providing dependent claims is to present optional or fallback features. They are considered not to be incorporated in (and hence limiting on) the main claim. Instead, they are features that generally would make the invention even more inventive, a little like the ‘inventive staircase’ discussed elsewhere. With any luck, this super-patentable claim will never be needed. But if, for example, all of the features of a main claim turn out to be unpatentable over prior art during prosecution, then it is common to see the main claim amended to A Practical Guide to Drafting Patents
incorporate the features of a dependent claim if those features are not found in the prior art. When writing dependent claims this is how they should be thought of. A claim set that includes one independent claim and one dependent claim could be considered as being effectively two separate independent claims one of the scope of the original independent claim and one ‘virtual independent claim’ comprising the original independent claim with the further limitation of the dependent claim. If one of these is knocked out by the prior art (i.e., the broader original independent claim) then the patentee can elect the other instead. As more and more dependent claims are added then more and more such virtual independent claim options are available to the patentee in the event of relevant prior art being cited. For each one the thought process can run: ‘imagine prior art were found disclosing all the features of the independent claim. If I amended to include this dependent claim would my novelty and inventive step position work?’ Given that subject matter can be taken from anywhere in a patent application and incorporated into an independent claim, as long as the added matter requirement is not violated, why do we specifically need 105
TRICKS OF THE TRADE
Legal terms Most of these are things like ‘hereinbefore’, ‘theretoinbetweenhenceforth’ and other fancy combinations that have no value whatsoever. We shall not discuss these any further.
something moves, a particularly useful term is ‘reciprocate’, which means move back and forth. There are many more, and perhaps this brief section will inspire someone to go off and write a full dictionary of patent terms.
Technical terms
CONCLUSION
Most of the confusing ones of these are standard and somewhat old-fashioned engineering terms. Part of elements are often described using terms like ‘distal’, ‘proximate’, ‘intermediate’ meaning ‘far end’, ‘near end’ and ‘middle’ respectively. There are also lots of useful engineering terms for certain formations, for example, flange (a projecting ledge), cantilever (a projecting member like a diving board), detent (anything that holds or catches something else) and so forth. When at a loss, using names of body parts to describe formations is quite useful, and one will see terms like ‘limb, neck, shoulder, member, finger, foot, nose’ and so on. Anything that is springy is described as ‘resilient’. When describing the positional relationship of features words such as ‘project, extend, depend’ can be useful. When describing how
This chapter can do no more than hint at the range of tricks available to the patent attorney and every patent attorney would probably come up with a completely different list of useful terms and tricks depending on what their specific practice was. In fact, one of the most difficult tricks of all is choosing the right name for a feature in a claim in the first place and it is at least reassuring to know that one does not have to refer to a lexicon of patentese to do this in most cases. As you can see in the next chapter, the most helpful person of all is the inventor.
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11. DRAFTING IN REAL LIFE
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hile this book is written at a practical rather than academic level, it has not yet addressed in any detail one of the most significant factors affecting the creation of a patent draft, namely the involvement of the inventor. Without them we would not have any patents and, perish the thought, we would not have any patent attorneys.
Dealing with the inventor The goal in meeting with or dealing with the inventor is to convert their innovative concept, in conjunction with their expertise in the relevant technical field, into the best patent available: one that is sufficient, broad but valid and that provides multiple fallbacks. In reality, unfortunately, the inventor may not be as co-operative – or more commonly – may not have as much time to be as co-operative as you would like. Usually, an inventor’s time will be limited by other commitments – such as a job. On the other hand, patent protection may nonetheless be important to them or their employers such that a compromise needs to be found between getting the information you need from the inventor and letting the inventor get along with the rest of their life. In other words, in real client/inventor A Practical Guide to Drafting Patents
management terms, it is helpful to develop an efficient practice in extracting the information you need.
The exchange of information An important first step, therefore, is to ensure that both parties to the information extraction process – the patent attorney and the inventor – understand their respective roles. The inventor’s job is to explain the invention, think about how third parties might develop or design around that concept and provide the basic information for various parts of the patent document – in particular the introduction, the specific description and the claims. The attorney’s job is to pin down the prior art that the inventor is aware of and to establish why the invention is different from it, to extract as much information as is required to put together a specific description and to identify an appropriate scope and range of implementations for the claims. To make the patent as future proof as possible, bearing in mind that competitors have 20 years of ingenuity to get around it, a useful joint exercise is to put some thought into what third parties might do if they were seeking to avoid your patent. Often the patent attorney can contribute significantly to this part of 119
12. INTERNATIONAL CONSIDERATIONS IN DRAFTING PATENTS Chris Palermo (USA) Sarah Wang (China) Hirohito Katsunuma (Japan) Chulhee Lee (Republic of Korea)
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his book is written by a European practitioner based in London, UK and so inevitably reflects to some extent the influence of the European Patent Office (EPO) and UK practice on the form and content of patent applications. In many cases where examples of statutes are presented, the relevant wording is taken from the UK Patents Act or the European Patent Convention. However, these are principally selected as representative forms and corresponding provisions from the rest of the world could be used equally well. Although we have not yet seen the ratification of a substantive patent law treaty officially harmonising worldwide patent practice, in the arena of initial patent drafting we have de facto harmonisation and this has been in place for many years. In other words, almost any patent attorney
A Practical Guide to Drafting Patents
in the world would advocate a generally similar approach to the preparation and drafting of patent applications, and at the current level of this book, the teachings provided are enough not simply to prepare a draft patent application acceptable before the EPO, but which could progress in any jurisdiction in the world. Every patent application should indeed be written in the expectation that it could proceed before a Patent Office anywhere. Every jurisdiction has its quirks, but these are usually addressable as long as the basic work done in the initial draft patent application is enough.
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13. DRAFTING IN SPECIFIC TECHNICAL AREAS By Daniel Jarrett (Computer-related inventions) Elizabeth Crooks (Chemical inventions) Jamie Atkins and Michael Newton (Biotech inventions)
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hroughout this book, examples have been given in all areas of technology, but the bias is undoubtedly towards more ‘traditional’ area of mechanical engineering. This is where patenting started and the practices developed in this area apply equally to new technical areas that have arisen since. The purpose of this book is to develop good basic drafting skills and so a detailed discussion of specific practices in certain technological areas in any detail is beyond the scope of the present book. There are some areas of technology, however, where aspects of patent practice have developed to the point that a short discussion is worthwhile (and entire books possible). We focus on three areas: computer-related inventions, chemical inventions and biotechnology inventions. A Practical Guide to Drafting Patents
Computer-related inventions This term is used in the broadest possible sense, encompassing inventions relating to operating systems, interactions between computers such as those that occur in encryption or networking, and processes such as control processes implemented by computers. In other words, the discussion extends to any invention where the operation of the computer might form part of the claims. However, this is not the place to discuss computer-implemented inventions of the kind that give rise to objections of excluded subject matter in many jurisdictions, such as automated implementations of business or financial methods. In other words, we look here at technical improvements relating to computers. 145
Drafting patent applications is the foundation skill of the patent attorney and while every practitioner is critiqued and examined on the practice, there remains remarkably little positive written guidance on the topic. This book takes a highly practical approach to the art of creating a patent, starting by considering the various entities involved or affected, establishing the considerations relevant to each and then weighting and condensing the factors into a manageable set. These factors are then applied to a range of practical examples based on simple technology, guiding the attorney through the process of writing the various component parts of the patent. Focusing on the ‘practical’ aspect, two key areas addressed are the detailed description requirements, and the mysterious art of writing the claims. In both cases guidance is provided in the form of suggested structures and processes – again strangely lacking in the literature. The aim of the book is not to be an exam-passing tool, nor single-handedly to create a perfect drafter. It is designed to shed some light on this strange world for the external observer, and to accelerate the training and learning process for would-be attorneys. Every attorney will, in time, develop their own style and approach, but the lessons here may help them become the finished article more quickly and with the benefit of a broad view of why, and how, we draft.
‘A welcome and serious effort to demystify the exercise of drafting a patent and to offer concrete assistance to those with the job of describing in words something which may never have been described in words before, a wholly new and (hopefully) non-obvious invention.’ The Rt Hon Sir Colin Birss