NOTE: In 1997, the Supreme Court redefined “invention” in a big way. Formerly, inventors were frequently tinkerers who were adept at recognizing problems in daily living and coming up with innovations that others wanted, the proverbial better mousetrap. Now, however, the court has discouraged patenting of inventions where market forces would drive a person of ordinary skill to come up with the invention, particularly where the elements in combination that make up the invention (such as system of sensors, transistors and solenoids, or of gears and pulleys) each behaves as it would when considered alone, and achieve in combination a predictable result therefrom. Thus the invention needs to be a concept in which a beneficial result arises in an unexpected way, a synergy not apparent from the individual components, an achievement that seems technically impossible according to conventional thinking, or a way of doing something that goes against the teachings of the prior art, and there needs to be evidence that this is so. Absent that evidence, the Court decided that most inventions are so obvious when they solve a known problem as to be unpatentable, and to overcome that presumption, the inventor will want to claim the invention in such a way that it is clear why the invention was not obvious. The legal nuances make this very difficult for an individual inventor, particularly in the areas of mechanical and electromechanical patents, to successfully write and prosecute an application. Highly unpredictable arts, such as chemistry, have been spared this burden so far, but the America Invents Act of 2011 continues to move the bar, making it difficult for the individual inventor to keep up.
Step Number 1. So, before we get into the details, please don’t try do it yourself – the savings are not worth it. Any patent agent or attorney would be happy to work with someone who wants to be involved in the process and you will be pleasantly surprised at cost if you shop around. For those inveterate DIY’s, caution: A poorly drafted or incomplete “Provisional” patent application irrevocably destroys any chance of a valid patent in Europe, and in the US, should you try to enforce a flawed patent, you could find yourself sued for Declaratory Judgment or false marking (and lose).
Step Number 2. Assemble your notes, any drawings and any data. Use the drawings to sketch out a story line that tells the how your invention works and what it does. Do a quick patent search at the US patent office, using keywords related to what your invention does, or the problem it solves. Note any patents or applications that seem relevant.
Step Number 3. With the help of a patent professional, preferably with a drawing package as a guide, write up a list of the key elements of the invention, defining them by their functional interrelationships, their functional effect, and their structure. Also create a list of elements of the invention that are already known. Modify the drawings if needed to better explain the invention. Write a picture claim; write concept claims. Write a draft claim set that differentiates the inventive structures from the prior art. Be sure you understand the concepts of invention novelty and obviousness so that you can put the inventive concepts in the best light for patentability.
CONGRATULATIONS: you’ve just written a first draft of the “Summary” of the invention.
The Summary is one section of what will be a finished application. The US Patent Office has laid out guidelines for the format and content of a patent application, and includes the following suggested sections:
Background of the Invention
Opening paragraph identifying the field or classification of the invention
Description of the related art (optional)
Brief Summary of the Invention
Brief Description of the Several Views of the Drawing(s)
Detailed Description of the Invention
Claim or Claims
Do not take their instructions absolutely literally. While the patent office is tasked to assist inventors, the process is also sometimes adversarial, and any instruction must be viewed in the light of your own best interests.
Step Number 4: Under a heading “Background”, write an introduction that lays out the problem(s) the invention addresses, and particularly any difficulties or failures that others have had in approaching the problem by conventional means, without discussing your solution. List the most relevant work by others that lays a foundation for your inventive contribution. Be careful about what you call prior art and do not describe the advantages of your invention in this section; the background should set the stage for the invention but should not describe it.
Step Number 5: Under the heading Summary, which you created earlier, write a transition or segue from the background that reveals how your invention arises from the needs and problems described in the background and the principal features of the invention that are a technical advance in the art. This transition is inserted above the draft claims written in Step 3.
Step Number 6: Stack the drawings in the order you plan to explain them. Consider how you would want to present each one and whether any additional drawings are still needed. List each Figure in numerical order, along with a one-sentence summary of what is shown in the figure. When this complete, the “Brief Description of the Drawings” is done.
Step Number 7: Using the drawings as a guide, explain the invention by reference to the drawings and to other sources. Where indicating parts of the invention, label the drawings with a corresponding number and an arrow to show each part. Alternate between description that is pictorial and description that is conceptual. Describe functions and structures that relate to patentability. Remember that patentable material includes not only devices and apparatus, but also methods and processes. Keep in mind that your invention may add value to another product and that a combination of your invention and that product could be a valuable source of royalties. Claim drafting is a skill that is refined by long practice and experience, where two heads are better than one. Work with a patent professional and modify the draft claims from time to time until everything is right.
Step Number 8: Put the draft away for two days, take a break, and then read it again. Edit it to improve the conciseness and detail of the language. Have someone else read it in confidence and discuss.
Step Number 9: Draft an “Abstract” that summarizes what is needed to quickly grasp what the invention is all about in one paragraph.
Step Number 10: Decide whether the application will be filed as a “Provisional Patent Application”; a “Non-Provisional Patent Application”; or a “PCT Application.” Note that the steps in preparing the application are no different. A patent professional can help you decide on the best choice for you. But a quick and dirty application to get a filing date is never a good idea. Prepare filing papers as required by the USPTO. The basic filing package required is described at the PTO website:
NOTE: If the drawings are “informal”, it might actually save money, and will definitely save time, to have them redone by a professional draftsperson before filing. Yes, patent applications get rejected for inadequate drawings (example: see file wrapper in PAIR for US20070194541). A detailed description of formal drawing requirements is listed at:
Since these requirements are specific and very rigid, even patent professionals will generally defer to specialists who draft patent drawings for the proper form.