Take this scenario. You’ve been working on an invention and it is finally at the stage where it can be patented. You also know that a patent is very important when it comes to protecting your innovation, and that getting a patent as quickly as possible helps to head off competitors.
At this stage, your primary requirement is a well-drafted patent application. This application is what your patent hinges on. It decides if your invention fulfils all the requirements set out by the patent office, and the ambit of protection your invention gets.
Why Is A Well-Drafted Patent Application Necessary?
The rate of grants for patent applications is roughly 50%. Which is to say that one in two applications submitted to the patent office will be refused. And of course, the value of your work-all the products using the technology, or the licensing of the technology, hinge upon getting the patent protection. How well your invention is protected is directly proportional to how well your application is drafted.
So what can you do to make sure that your patent application fulfils the requirements set out by the patent office? What must you pay attention to when reviewing it?
Here are 5 things you must pay attention to when drafting or reviewing a patent application.
#1: The NUNS Criteria
The first thing every potential patent applicant should keep in mind is what’s known as the NUNS criteria. NUNS stands for “Novelty, Utility, Non-Obviousness, and Subject Matter Eligibility.”
After you submit a patent application, it gets examined by the patent office. Almost all patent applications receive objections, and all of the substantial objections are made on the basis of one of these categories. If your patent gets rejected, chances are it’s because your application did not fulfil one or more of the NUNS requirements.
A key component of understanding the novelty and non-obviousness of your invention is the patentability search of the relevant prior art. A patentability search helps the inventor understand the current technology, and get a better understanding of the position of your invention in the potential market.
#2: The Scope of the Claims
The claims are the most important part of any patent application. The claims are a relatively short section at the end of your patent description which decide what exactly it is that you get protection on. Regardless of how detailed or sparse your patent description is, what ultimately decides on the scope of protection are your claims.
Claims must be carefully drafted, and a fine toothed comb must be run over every single word in this section. Even misplaced articles or commas can result in the protection you get being completely different from the one you want.
Additionally, they must neither be too broad, nor too narrow. An overly broad claim is very likely to be rejected, while a narrow claim may only protect your invention partially. A matter of a few words or a few lines can mean the difference between your application getting rejected or accepted.
Deciding the scope of the claims must be done while keeping in mind the NUNS criteria, as well as the potential competitors in the market. Patent drafting is a multi-faceted process where the drafter is constantly looking into a number of variables, all of which must be balanced if your final draft is to be successful.
#3: The Written Description
If your claims are what you can actually protect, your written description is the record of why and how your invention represents those claims. A claim that is not fully supported by the written description is liable to be rejected on the grounds of there being not enough information to show the application of the claims.
The enablement requirement for patent applications is this- the examiner, representing a person of ordinary skill in the art, must be able to reliably understand and use the invention described without having to do their own undue experimentation. This element ties in with the requirement of sufficient descriptions for patent claims as well, and both must be carefully considered for a well-drafted written description.
#4: The Patent Application Format
Each patent office in the world has specific requirements for how the text and the drawings are formatted and arranged, and not following the national or regional norms will result in an objection at the examination stage. While this is relatively minor and easily corrected, especially in comparison to the other elements I’ve listed, it can still cause undue delays.
Paying close attention to and cross-checking the formatting requirements can save you a lot of trouble in the examination stage, especially if you are scrambling to come up with detailed replies to the substantive rejections.
Takeaways
Patents can be very valuable, but they are not always easy to obtain. The most important tool any innovator has to get their patent granted is the patent application.
The application drafting process may seem pretty simple at first glance (describe your invention, and claim what you want to protect) but it can be very complex in practice. This is because of the many considerations and elements you have to simultaneously take care of to come up with an effective draft.
What I’ve listed here are four key elements of an effective draft, and I hope that gives you a better idea of what you should be aiming for the final application.
