Patent attorneys work at the interface of science, law, and commerce. The fundamental prerequisites for a person to practice patent law are technical and legal qualifications. However, it is also critical to have an in-depth understanding of how products and services are commercialized in order to properly frame the patent specification and draft the claims, and so that the patent ultimately meets the applicant's commercial objectives. This is no small task.
Patent specifications are complex to draft, even where the inventive concept has already been crystallized and a client's commercial objectives have already been given deep consideration, let alone in cases in which the inventive concept is still its initial stages and the scope of it is more 'nebulous'. Indeed, Courts have marveled at how difficult it is to draft a patent application. For example, the US Supreme Court explained that drafting of "[t]he specification and claims of a patent... constitute[s] one of the most difficult legal instruments to draw with accuracy."1 Further complicating matters is that the patent is usually drafted under a tight timeframe.
Why are patent applications complex to draft?
The inventive concept is still a work in progress
There are probably a handful of reasons why some patent specifications are complex to draft. As alluded to above, in some cases the inventive concept has not yet crystallised and is somewhat of an unfinished idea, in which case the attorney finds themselves in the position of having to foreshadow many embodiments and alternatives to cover as much ground as possible around that 'preliminary' inventive concept, resulting in a somewhat unfocussed patent specification. Whilst this is not ideal, it is one of the realities of preparing a patent specification, and is made more challenging when there is an imminent disclosure and the specification needs to be drafted and filed quickly.
Shifting sands of the inventive concept
In some cases, the inventor thinks the inventive concept relates to, for example, a particular relationship between components of a composition, and the specification is drafted accordingly. However, with the passage of time, and with more experimental data generated, it becomes apparent that the inventive concept actually relates to some other relationship. A shift in the understanding of the inventive concept will necessarily cause a shift in the focus of the patent specification, and sometimes a mix of different terminology is used. From a practical perspective it is sometimes easier to recast the specification rather than starting from scratch, and whilst the resulting specification is still fit for purpose, it can appear disjointed. Again, this is one of the practical realities patent attorneys face on a daily basis.
A solution in search of a problem
In other cases, the inventor may have developed something interesting, but may not have a clear problem in mind that is being solved, which makes the drafting difficult as the attorney needs to look into their 'crystal ball' and contemplate what problems could be applicable. Alternatively, inventors create a solution for a very specific purpose, and have not really considered whether the solution could be applied to other fields, in which case the attorney again must contemplate other possibilities. Accordingly, a good measure of creativity is required by the attorney drafting the patent specification, especially as a patent specification can also serve the purpose of being a 'sales' document.
Sometimes, there may be insufficient data at the time the patent application needs to be filed to support the entire breadth of the claims, in which case drafting the specification is especially difficult as the attorney needs to balance what is exemplified with what claim breadth can be reasonably supported. If the claims are drafted too broadly, and only something narrower will survive prosecution (closer to what is actually exemplified), the surrendered claim scope is effectively given away and can prevent protection of the surrendered claim scope in the future, despite there being future experimental support for it.
The "detailed description" section of the specification should provide a sufficient disclosure of the invention that a skilled person in the relevant field could make and understand the invention, and should breathe life into the claims. However, it can be challenging when the inventor wishes to protect a concept they believe is inventive but have no enablement, in which case the attorney must understand the common general knowledge and the skill set of the skilled person and, as a stop gap measure, undertake some reasonable 'thought experiments' to provide the necessary enablement – so-called 'prophetic examples' (to be confirmed by real experiments in the coming months). These kinds of examples might be perfectly reasonable in the predictable arts (e.g., simple mechanics) but inadequate in non-predictable arts (e.g., biotechnology). In yet other cases, where an inventor has something novel and commercially valuable, but the inventiveness of it is arguable, drafting the specification and claims can be a challenge.
Drafting to 'survive' prosecution
During the drafting process, the patent attorney must reasonably consider how the patent may be prosecuted before a patent office and what objections could be raised during the examination phase, and therefore what additional information may need to be included into the specification to assist in addressing those objections. Claims, for example, may need to be amended for a number of reasons: to clarify terminology, to overcome relevant prior art, to overcome other rejections cited by the examiner, to better fit with the eventual marketed product, to better represent the invention as it matures, to encompass an infringing product, or to survive an opposition. By way of example, a definition for the key terms used in the claims may need to be included, especially if those terms are being used in a non-standard way. Where generalities are used in the claims the attorney must think through the specifics that fall within that generality and should preferably include them. Also, because some jurisdictions have strict amendment laws, to avoid an 'added subject matter' objection the specification should drafted to include as many perceivably different fallback embodiments as possible (i.e. narrower embodiments of the invention), as one can never be certain what prior art will be raised during prosecution and therefore what (supportable) claims amendments may be required to navigate around that prior art. If a fallback embodiment is not available, then the applicant may need to resort to unnecessarily narrow claims.
Choice of claim language
Patents are not drafted with the lay person in mind. They are usually aimed at either a technical person or a patent examiner – people who know the technical field and understand the technical terms, and often understand the writing style of a patent specification. The attorney must therefore put themselves into the position of that skilled person and draft the specification accordingly. There is a great responsibility in the choice of words that is used, as the difference between one word and another in the drafting of a patent claim can mean the difference between a valuable and a voidable patent.
Drafting for simplicity
It's been said: "Any darn fool can make something complex; it takes a genius to make something simple." The same can be said for drafting a patent claim. It is not easy to draft a claim that is simple to understand and concisely isolates the invention, which is primarily because claims by their very nature tend to describe complex concepts. But it is because the concepts are difficult that the claim language needs to be easy to understand and the claim itself should not be unnecessarily prolix. Attorneys spend considerable time rationalizing complex language into something that is simple, clear, concise, and is readily comprehendible. Indeed, a well-drafted claim has a certain 'beauty' to it. It can take a significant portion of the total time taken to draft the specification just in rationalizing complex technical language into something that is simple, clear, and elegant.
It is critical to have an understanding of the Applicant's commercial objectives prior to drafting the specification. Understanding these objectives will inform how the specification is drafted, and especially the claims. For example, understanding whether the claims should be directed to the apparatus, the method, the use of it in certain circumstances, or a kit of parts, a system, a composition of matter, or combinations of these. It can also be important to protect the 'supply chain'. For example, the upstream supplier of a part supplied to for the invention, and the downstream user (i.e., to capture the context of its use, how is it used, and how it might it be modified, etc.). The attorney needs to think like a potential competitor trying to avoid the patent, and draft the claims to avoid this situation. Also, if possible, claims should cover competing products, and therefore the attorney should understand what competitors are doing in the marketplace, or what they may do. Further, claim 1 must have no inessential features—if it does, a competitor could simply copy claim 1 without that inessential feature and would not infringe the patent. A patent attorney must be creative in order to obtain the maximum possible protection for its client.
A patent application is a legal document
A patent specification, although it covers technical subject matter, is a legal document. Writing a high-quality patent application is important because it sets out the terms by which the patent owner and others will be bound. In this sense it is different from writing a scientific paper. The patent application will be reviewed over the years by public officials such as patent examiners, judges, and business partners. The patent attorney should therefore be drafting the application with these important audiences in mind, all the while considering the rules and requirements of each major jurisdiction in which the patent application will be filed, and ensuring that is meets the legal tests in those jurisdictions.
The easiest patents to write are those in which the applicant has a clear problem they are solving, and clearly understand the inventive concept and the advantages it provides over the prior art, and how it is particularly suited to address that problem. It is also highly advantageous for the inventor to have all the required experimental data that supports the full width of the claims. Further, from a commercial perspective, it is ideal if the Applicant has some understanding of how the product will be commercialized, so the claims can be tailored to suit the commercial objectives.
Financial resources can and do provide a real impediment to moving forward with any business opportunity, but a well-drafted patent specification should be considered as an investment, especially as the cost is quite minor in comparison to the amount of money required to create, market, and distribute the product embodying the invention.
Outlined in this article are some of the complexities involved in drafting a patent specification. When a patent is an important commercial asset, it is important to choose the right attorney who has the experience to navigate these kinds of complexities, and has genuine technical expertise and an excellent understanding of the practicalities of bringing products and services to market. At Spruson & Ferguson, we have a number of highly experienced attorneys who can assist in drafting this important intellectual asset.
The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.
1 Topliff v. Topliff, 145 U.S. 156 (1892)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.