Five Ways Inventors Can Boost the Patent Drafting Process
If you’re looking for someone to say “Inventors should use ChatGPT,” it won’t be this post!
The journey from a groundbreaking idea to a granted patent is a marathon, not a sprint. It requires a collaborative effort between inventors and patent professionals, and like any well-oiled machine, efficiency is key. As an inventor, your deep understanding of the technology is invaluable. However, presenting that information in a way that facilitates a smooth and effective patent drafting process can significantly impact the quality of the patent application and even its ultimate success at the USPTO or courts.
For patent professionals, a well-prepared inventor is a dream. It means less time deciphering, more time strategizing, and a stronger foundation for building a robust patent. For inventors and IP owners, understanding how to best contribute can lead to lower costs, faster turnaround times, and a patent that truly captures the essence of their innovation.
Some blogs will tell inventors to keep a journal or notebook, but everyone’s process is different. One key commonality in recommendations for a valuable collaboration will likely be communicating well with counsel and not communicating the idea at all outside of that relationship.
Here are five ideas inventors can consider to help their patent attorney or agent draft a stellar patent application:
1. Guard Your Secret: The Perils of Premature Disclosure (Don’t Post It or Put It in a Public AI or Cloud Tool)
In the exhilarating moment of discovery, the urge to share your invention with the world can be overwhelming. You might be tempted to post about it on social media, discuss it in a public forum, present it at a conference without a non-disclosure agreement (NDA), or even leverage a publicly accessible AI or cloud-based tool to help refine or analyze your idea. Resist this urge at all costs.
The concept of "public use" and "public disclosure" is a cornerstone of patent law, and premature exposure can be an absolute bar to obtaining patent rights in many jurisdictions. In the United States, while there's a one-year grace period from the date of the first public disclosure or offer for sale to file a patent application, relying on this grace period is risky and many foreign countries have no such grace period. If you disclose your invention publicly before filing, you may immediately lose the ability to obtain patent protection outside the U.S.
Consider this:
Social Media & Online Forums: A detailed post on LinkedIn, a tweet, a Facebook status, or a discussion on a public Reddit thread can all likely constitute public disclosure. Even a seemingly innocuous mention can potentially start the clock ticking or, worse, forfeit your rights.
Conferences & Publications: Presenting your invention at a conference, publishing an article, or even distributing a detailed abstract without an NDA in place can be considered a public disclosure.
Public AI and Cloud Tools: This is a rapidly evolving area of concern. When you upload your invention details into a public AI model (like some free versions of large language models) or a cloud-based service with unclear terms of service regarding intellectual property, you risk that information becoming part of the public domain or being used in ways that could compromise your novelty. Always scrutinize the terms and conditions of any third-party tool, especially those offering "free" services, and err on the side of caution. Assume that information shared with such AI tools may not be confidential. Be wary that AI “co-inventing” with you might lead to forfeiting IP rights.
Sales and Offers for Sale: Commercially exploiting your invention or even offering it for sale before filing can also trigger the one-year bar in the U.S. and impact foreign rights.
What to do instead:
Maintain Confidentiality: Treat your invention like a closely guarded secret until a patent application is on file.
Use Non-Disclosure Agreements (NDAs): If you must discuss your invention with potential partners, investors, or collaborators before filing, ensure a robust NDA is in place.
Consult Your Patent Attorney Early: Before you even think about any form of disclosure, speak with your patent attorney. They can advise you on the safest course of action and the optimal timing for filing.
By keeping your invention secret, you preserve its confidentiality and give your patent professional the strongest possible starting point.
2. Focus on the "How," Not Just the "Wow": Technical Depth Over Marketing Hype (Alice/Mayo Framework Considerations)
You're understandably excited about your invention's market potential. You envision it revolutionizing an industry, solving a critical problem, and yes, generating significant revenue. While this enthusiasm is valuable, when it comes to the invention disclosure for patent drafting, the primary focus must be on the technical details and how the invention works, not just on its commercial advantages or aspirational goals.
Overly focusing on the commercial benefits, market size, or return on investment can make your disclosure sound more like a marketing brochure than a technical specification. This isn’t just a matter of style; it can have serious legal implications, particularly in light of the patent subject matter eligibility standards.
The Alice/Mayo framework, established by two Supreme Court decisions (Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc.), sets forth a two-step test for determining patent eligibility of claims, particularly for software, business methods, and diagnostic methods.
Step 1: Is the claim directed to a patent-ineligible concept? This includes abstract ideas, laws of nature, and natural phenomena.
Step 2: If yes, does the claim contain an "inventive concept" – an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself?
Inventors generally should leave this to the practitioners, but remember that a disclosure heavy on marketing and light on concrete technical details can inadvertently make an invention sound more abstract than it is. If the core innovation isn't clearly articulated with sufficient technical specificity showing how it achieves a result, it's harder for your patent attorney to draft claims that will withstand scrutiny under Alice/Mayo.
What to do instead:
Detail the Nuts and Bolts: Explain the structure, components, materials, and interconnections of your invention. How do the parts interact? What are their specific functions?
Describe the Process: If your invention is a method or process, break it down step-by-step. What actions are performed? In what sequence? What are the inputs and outputs of each step?
Explain the "Technical Solution" to a "Technical Problem": Clearly articulate the technical problem your invention solves and the specific technical means by which it achieves that solution. How does it improve upon existing technology from a technical standpoint?
For Software Inventions: Provide details about the algorithms, data structures, system architecture, and how the software interacts with hardware. Flowcharts and pseudo-code can be extremely helpful. Avoid simply describing the function (what the software does) without explaining how it does it in technical terms.
Quantify Where Possible: Include dimensions, operating parameters, material properties, and performance metrics if applicable.
By providing a wealth of technical information, you empower your patent attorney to draft an application that highlights the tangible, inventive aspects of your creation, thereby strengthening its position against potential challenges and clearly distinguishing it as a concrete technical solution.
3. A Clear Picture is Worth a Thousand Claims: Aim for USPTO-Friendly Drawings
Drawings are a critical component of a patent application. They illustrate the invention, clarify complex elements, and often form the basis for understanding the claims. While your patent attorney will almost certainly engage a professional draftsperson to prepare the final, formal drawings that meet the stringent United States Patent and Trademark Office (USPTO) requirements, the initial sketches and diagrams you provide are immensely important.
The clearer and more detailed your initial drawings, the easier it is for the draftsperson to create accurate formal drawings, and the less likely there will be misunderstandings or errors that could necessitate costly and time-consuming revisions.
You don't need to be a professional artist, but putting effort into your initial drawings pays dividends. The key is clarity and readability.
USPTO Drawing Requirements (General Pointers for Your Initial Sketches):
While the formal rules are extensive (covering paper size, margins, line thickness, shading, reference numerals, etc.), here’s what inventors should focus on for their initial submissions to their patent attorney:
Legibility is Paramount:
Properly Sized Fonts: If you're adding labels or reference numbers, ensure they are large enough to be easily read. Avoid tiny, cramped text.
Clear Lines: Use clear, distinct lines. Avoid faint or smudged lines.
Fit on a Page (Generally): While the draftsperson will handle final formatting, try to keep individual figures reasonably contained. If a system is complex, break it down into multiple figures showing different views or components (e.g., top, side, front, cross-sectional, isometric). Exploded views are excellent for showing how components fit together.
The draftsperson's role: Your patent attorney's draftsperson is skilled in taking inventor sketches and converting them into USPTO-compliant formal drawings. They will handle the specific requirements for margins, line types, hatching for materials, text height, and ensuring everything is in black and white (unless a color petition is granted). Your job is to give them unambiguous and easy-to-understand source material.
By providing clear, well-labeled, and reasonably organized initial drawings, you reduce the chance of errors, speed up the drafting process, and help ensure the final drawings accurately reflect your invention.
4. Know Your Landscape, But Don’t Get Lost In It: The Prior Art Balancing Act
Understanding the "state of the art"—that is, existing technology and information relevant to your invention—is crucial. You likely encountered existing solutions and identified their shortcomings before developing your own innovative approach. This knowledge is valuable.
The Duty of Disclosure:
Inventors, and their attorneys, have a duty of candor and good faith in dealing with the USPTO. This includes a duty to disclose all information known to be material to the patentability of an invention. This "material information" often includes prior art references such as patents, published patent applications, scientific articles, and publicly available products or processes that are relevant to the novelty and non-obviousness of your invention.
What Inventors Should Do:
Identify Known Relevant Art: If you are aware of specific patents, publications, or products that are close to your invention, or that your invention improves upon, you should absolutely bring these to your patent attorney's attention. Organize this information clearly. Provide copies if you have them, or at least full citation details.
Explain the Differences: Crucially, explain how your invention differs from and improves upon this known prior art. This helps your attorney understand the inventive step and craft arguments for patentability.
Focus on What You Know: The duty of disclosure applies to information you are aware of.
The "Don't Dig Too Deep" Citation Caveat:
Generally, while you need to disclose known relevant art, avoiding a prior art deep dive might be a good idea. It may seem counterintuitive but it has a practical basis. As always, defer to your patent professional.
Information Overload: Patent attorneys are skilled at searching and analyzing prior art. However, if an inventor undertakes an exhaustive, unfocused search and provides a massive, undigested list of hundreds of tangentially related references, it can significantly increase the attorney's workload (and costs) to review and assess each one for materiality. The sheer volume can obscure the truly important references.
No Obligation for Exhaustive Searching by the Inventor (for Disclosure Purposes): While understanding the prior art is beneficial for R&D and for your attorney's initial assessment, the duty of disclosure doesn't obligate the inventor to conduct a comprehensive professional-level patent search specifically for the purpose of fulfilling that duty. Your attorney will often recommend or conduct a professional search as part of their due diligence.
The Invention Disclosure is Not a Research Paper: Your invention disclosure document is meant to explain your invention. While it's helpful to distinguish it from the closest art you know, it doesn't require a line-by-line review citing every related paper or patent. Over-citation can sometimes inadvertently frame the invention in a way that makes it appear to be a minor increment over a vast body of existing work, even if that's not the case.
Typically, the key is a balanced approach. Provide the prior art you are genuinely aware of (with links, PDFs, and dates if you can), especially references that were influential in your invention process or that you know are particularly relevant. Discuss your searching efforts with your attorneys. They can guide you on whether further searching by you is helpful or if they will handle it. A Google search might be sufficient.
Your attorney's role is to assess the art you provide, conduct their own searches as needed, and then determine what needs to be formally submitted to the USPTO via an Information Disclosure Statement (IDS). Trust their expertise in navigating the legal process, but be sure to ask questions wherever you feel necessary.
5. Plain English, Please: Clarity Over "Patent-ese" in Your Disclosure
Patent documents are notorious for their specific, sometimes convoluted, legalistic language. Terms like "wherein," "said," "means for," and "comprising" have very particular meanings in patent law. While these terms are essential tools for a patent attorney crafting claims, they are not necessary or even helpful in your initial invention disclosure.
Attempting to write your disclosure in "patent-ese" can often lead to confusion, ambiguity, or an inaccurate description of your invention. Your primary goal when explaining your invention to your patent attorney is clarity and completeness in plain, straightforward language.
Why "Patent-ese" Can Be Problematic in an Inventor's Disclosure:
Misinterpretation: Using legal terms of art incorrectly can inadvertently limit or misrepresent your invention. For example, the difference between "comprising" (inclusive) and "consisting of" (exclusive) is critical in claim drafting but can be easily misused by a layperson.
Obscuring the Core Idea: Focusing on legal jargon can distract from clearly explaining the technical substance of the invention. If there ever was a time where patents were trying to hide the ball, those days are over.
Increased Attorney Time: If your attorney has to "translate" your attempted patent-ese back into a clear technical understanding before they can then re-translate it into proper legal language, it adds unnecessary (and expensive) time and potential for error.
What to Do Instead:
Explain it Simply: Describe your invention as if you were explaining it to a technically competent colleague who is unfamiliar with it. Use clear, concise, and unambiguous language.
Focus on the Technical Facts: What are the overall parts of the system? How do they connect and interact? Describe each key component, its structure, and its function. Detail each step in any process or method. What is done, how is it done, and what is the result of each step? If software is involved, explain the logic of the algorithm. Flowcharts or pseudocode are excellent.
Use Your Everyday Technical Vocabulary: Use the terminology that you and others in your field would normally use to describe such technology.
Define Acronyms and Unique Terms: If you use acronyms or specialized terms you've coined, define them clearly the first time you use them.
Provide Examples and Alternatives: If there are different ways a component can be structured, or different materials that can be used, or variations in a process step, describe these alternatives. This helps your attorney understand the potential scope of your invention.
Your patent attorney is an expert in translating clear technical descriptions into the precise language required for a strong patent application. Your role is to provide them with the most accurate and comprehensive raw material. Clear, straightforward English is the best way to do this. Leave the "whereins" and "saids" to the professionals.
A Partnership for Patent Success
The patent drafting process is a critical stage in protecting intellectual property. By remaining cognizant of these five factors—safeguarding your invention from premature disclosure, focusing on technical depth, providing clear initial drawings, managing prior art disclosure intelligently, and communicating your invention in plain English—inventors can significantly enhance the efficiency and effectiveness of their patent counsel. Involve your patent counsel early in the process and
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.