Key facets to be considered prior to writing claims and description to draft a valuable patent application

Invention document form (IDF) analysis and Inventor Interview are important steps of a patent drafting process which IP professionals are aware of. However, is it only about understanding the invention and conducting a discussion with corresponding inventor(s) to draft a good patent application? In Evalueserve after drafting and prosecuting many patent applications for Fortune 500 technology giants, it has been observed that there are many facets any IP professional should be cognizant of to draft a good patent application.

Understanding perspective of R&D Inventors and Key Innovators

Prior to understanding an invention and conducting the discussion with inventors, it’s important to first understand the perspective of R&D inventors and key innovators (like scientist and engineers). They primarily focus on research, development, and productization which generally motivate them to innovate. It has been observed that different organizations also set key performance indicators (KPIs), due to which inventors are certainly obligated to submit information about their innovations and research, via a predefined IDF template, on a portal or on innovation tools designated by the organization. In certain situations, due to inventor’s writing preferences, paucity of time, lack of knowledge about patent processes, and/or intent to only meet the set KPI, the inventors may not spend an appropriate time to write the IDF document in effective manner. Though, IP managers certainly support R&D people for the preparation of the IDF documents, nonetheless, a huge responsibility lies with a patent drafter to appropriately gauge the received IDF document, before initiating a draft of a patent application, rather than sightlessly relying on the submitted IDF. Here, facilitating the ease of writing the invention disclosure enables the inventors to continue focusing on their inventions and their values, without being unduly encumbered by the process. Therefore, a properly structured and populated IDF may aid the inventor by providing a framework against which with the invention can be expressed. For inventors, it can be hard to fill a blank page but far easier to answer relevant questions included in the structured IDF document. Further, the structured IDF may express the potential differentiating inventive concepts so it can be effectively evaluated for potential value and further optimizes the harvesting of values of the inventions and time of the inventors. 

Alignment between invention and key innovation strategies

While evaluating an invention mentioned in corresponding IDF, the drafter must evaluate whether the invention is really aligned with key innovation strategies of the corresponding organization. The strategies may be related to one or more focus areas of R&D teams, business growth opportunities, and current/future market technology/product trends, etc. For example, patentable whitespaces, identified from technical intelligence studies conducted in past by the organization, may be helpful to identify key directions where the innovations must be submitted by a particular set of inventors or from a particular R&D department. Awareness of such innovation strategies may eventually benefit the drafter to rightly evaluate the IDF document. Furthermore, understanding “why” a patent would be filed from a strategic point of view informs and economizes the prosecution process in near future. This all correspond to a directed prosecution i.e., prosecution directed at a specific goal have better results in terms of granting strategically valuable claims at lower cost and higher speed than a non-directed twin.

Evaluation of invention directed to patentable subject matter

Further, while understanding the IDF document, the drafter must evaluate whether the submitted invention corresponds to an Abstract Idea or not (is directed to patentable subject matter). The Abstract idea can be a human activity or may not provide a significant improvement in respective field of technology. Such evaluation is usually performed by the patent Examiners (especially at USPTO in form of 35 U.S.C 101 rejections, for example, for software patents) during the prosecution stages. Thus, an early consideration of such criteria and timely alerting the inventors/IP managers (i.e., to add sufficient details or to re-evaluate the Abstract invention), plays an important role to facilitate the innovators to timely save drafting and prosecution costs. Subject matters in different technology domains which are found patent eligible or ineligible over Abstract Ideas by USPTO can be referred at these links:

https://www.uspto.gov/sites/default/files/documents/101_examples_1to36.pdf

https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_20190107.pdf

Expressing technical Flow of an Invention

In addition, the patent drafter should be competent enough to understand the complete invention in form of a technical flow and express details for each step of the flow. In other words, the patent drafter may be sufficiently fluent in the subject matter and IP to understand and express the invention. For example, for a process-related invention, the technical flow should appropriately convey a relationship and transformation between a set of inputs and a set of outputs corresponding to the invention. Such understanding may further facilitate the inventor to recognize and add missing information about different steps in the IDF document. This may further enable the drafter to validate, for which step(s) the inventor relies on known information and which step(s) demonstrate a point of novelty of the invention. It has been observed that sometime the inventors (i.e., after doing years of research), may not comprehensively write the IDF document describing each step of the invention, but rely on experimental data as a proof of concept for the invention. In such cases, for the inventor interview, the drafter should make himself knowledgeable enough (i.e., to a certain extent about the technology), to rightly requests the inventors to provide details of each step/embodiment of the invention. Therefore, a clear, concise, and definite understanding and focused discussion with the inventor(s) enables the drafter to write a high-quality patent application, which will be interpreted throughout the patent cycle (i.e., during the prosecution, litigation, and licensing) in a manner which the inventors or Assignee always intended to during invention’s submission stage.

Significance of novelty of Invention over known prior arts

Moreover, during the inventor interview, occasionally a distress is observed at inventor’s end, especially when the prior arts substantially anticipate or render the invention as obvious. In such a situation, does the drafter should hide such prior-art result(s) from the inventors, to keep them pleased and help them to easily leverage the benefits of their innovation KPIs? It’s important to explain, a significance of novelty, the aspects of prosecution and its high cost, and consequences of a patent in terms of licensing and monetization to the inventors. This may inspire the inventors to further brainstorm the invention with respect to the prior arts, to finally feed a novel innovation into an engine of patent preparation and prosecution. Therefore, important points for an inventor interview can be around

1) What is the invention?

2) Why/How it is different?

3) What is the objective or advantage the invention will provide?

Hence, an appropriate discussion around the prior-arts may provide direction towards the actual novelty or may further guide the inventors to invent towards white space or to circumvent prior-art, to focus technology developments on valuable directions, especially aligned with company strategy.

Examination of the invention from different angles

Furthermore, with a motive of creating a high-quality patent application and to provide it a healthy competitiveness against Examiner-cited prior-art results during the patent prosecution, it’s crucial to examine the invention from different viewpoints and situations. For example, if the invention is related to content rendering and inventor only provides the examples of visual content rendering in the IDF, then during the interview, the drafter should attempt to discuss other ways of content rendering (like audio-based or text-based) and evaluate whether other viewpoints are also applicable to the solutions provided by the invention. In another example, if the invention in the IDF is related to a training of a neural network, then the drafter may seek inputs related to practical situations where the trained network can be deployed, to further comprehend a wider training dataset to enhance an accuracy of the trained network. Therefore, different means (i.e., to achieve solutions for all viewpoints of the invention) can be considered as potential embodiments to be claimed in the patent application. All such potential embodiments (if claimed) may provide a patent prosecutor enough ammunitions to use against the patent examiners, achieve an early grant of the patent, and certainly save prosecution-related costs. 

In contrast, writing dependent claims with conventional concepts (just for a sake of accomplishing 20 claims), may not enforce a right burden on the examiner to search prior arts, but may help them to form rejections easily and lengthen the prosecution time/cost. Therefore, to increase the monetary value of the patent, consideration of different viewpoints of the invention may assist the drafter to scope a broader claim-set. Such broader claim-set may further support the inventors/organization to enforce the patent on a wider set of infringing products/services, which eventually increase the value of the patent. In addition to the broader claim-set for a particular patent application, the drafter must coordinate with the inventors to write multiple aspects of the claimed invention in the detailed description (if possible). This may eventually allow the IP professionals to expand the portfolio and the value of same invention in future by submitting a range of family members (for example continuation applications) relying on the already submitted detailed description. The best practices of claiming the invention and specification writing will be included in upcoming blogs.

Hence, there are various facets which an IP professional should be cognizant of, before initiating a patent application. Integrating above considerations keeps the inventors focused on inventing, best extracts value from inventions, and aligns it to strategy for optimal patent application and efficacy. 

If you want to learn how your company can build a quality patent application with significant consideration given to prosecution and licensing aspects as well, do not hesitate to contact us.

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Atish Gupta - Evalueserve Group Manager
Atish Gupta
Group Manager, IP and R&D Solutions Posts

Atish began his career in the software development field and further evolved as an IP professional. He is currently in charge of a patent drafting service for various client innovations across different technical domains. In addition, he works with multiple prosecution experts to provide IP rights for various innovations. He is passionate about analyzing innovations, their IP generation, and exploring various knowledge management tools to generate meaningful IP. He is fascinated by the augmentation of the automation and knowledge management in the field of IP drafting and prosecution.

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