Common Mistakes by Investors in the Process of Drafting a Patent -Menteso IP
The process of drafting a patent
11 Mar, 2022 0 Menteso Editorial Team

Common Mistakes Made by Investors in the Process of Drafting a Patent

Patent drafting is the process of writing a patent specification that clearly and sufficiently describes an innovation. It is a very significant step in the process of patent filing.

The possibility of getting a patent grant relies largely on the quality of drafting of the patent specification.

A complete patent application includes numerous sections that form part of a patent specification. The Patent Office defines these sections and includes the Title of the invention, the Field of the invention, and the Background of the innovation. They also include a summary of the invention, a brief description of the drawings, a detailed description of the embodiments and Claims.

Patent Drafting Mistakes

A patent specification is a techno-legal document. Through this document, innovation and the scope of protection of the invention are identified. 

Check out some of the common mistakes that can occur while drafting patent specifications:

1. Insufficiently describing the innovation:

 Lack of disclosure of sufficient data in the patent specification is one of the common mistakes. This happens when the specification is drafted by an inventor himself or by an inexperienced patent agent. Likewise, this occurs because of the assumption that the person reading the patent application will comprehend the innovation properly with the provided details. The patent law requires a candidate to provide an easily understandable description. 

2. Claiming the innovation too broadly:

This is another mistake that a rookie in patent drafting performs. For the sake of broadening the scope of protection of their innovation, most of the innovators try to claim their innovation too broadly. They usually do this to cover as much protection as possible from their patent application. However, claiming an innovation too broadly can make the scope of protection of the innovation indefinite. 

3. Claiming the innovation too specifically:

For an innovator, the method of performing their innovation is always very clear. Due to this, it becomes rather hard for the innovator to think about a broader version or an alternate embodiment of their innovation. 

4. Utilizing inconsistent terms:

One of the necessities for writing a very much drafted patent specification is the utilization of consistent terms. Claims containing inconsistent terms can cause unintended results in patent litigation.

5. Drafting claims without adhering to the drafting rule:.

Patent claims are written under certain rules. Patent Offices define these rules and are essential to follow for properly drafting the claims. Failure to draft the claims following these rules raises the ground for rejection.

Some of the rules include:

  • The patent claim should be written in a single sentence.
  • The claim should include a preamble, a transitional phrase, and a body.
  • Each “new” component ought to be presented utilizing ‘a’ or ‘an’ for the first time and then utilizing ‘the’ or ‘said’ during subsequent usage.

6. Prioritizing ‘How’ before ‘What’ and ‘Why’: 

The biggest mistake that patent drafters often make is to portray the functionalities of the invention before making the basics of the invention. They invest most of their time in clarifying ‘How the invention works?’ rather than describing ‘What the invention is?’ and ‘Why it is created or what’s the purpose?’. It is essential to make the readers first aware of the innovation and then about its functionalities and operations. This will facilitate a better and clear comprehension of the innovation.

7. Framing ‘Actionable Information’ without comprehension ‘Legal Requirements’: 

This is also a very common mistake that happens when patent drafters tend to frame functionalities without the full knowledge about what and how much is legal to describe. Mistakes happen when the description of your innovation matches with the description of someone else’s application (filed earlier), unintentionally, maybe because both innovations fall under the same technology domain, structure, etc. It’s an absolute necessity to frame intelligently so as not to infringe any patent application which was filed before. 

8. Framing it ‘All with Specificity’ without focusing on avoiding ‘Ambiguity’: 

Describing functionalities with specific details is beneficial but it does not assure that the information is unambiguous. It is important to frame sentences in a manner that the reader can only get the idea of what the innovator meant to depict, not something other than that. It is necessary to check for ambiguity and then frame the sentences making it easier for the user to comprehend all its functionalities. 

9. Trying to depict ‘Specifications’ using ‘Generic’ terminologies: 

Sometimes, patent drafters try too hard to figure out ways to depict all specifications, while keeping it generalized at the same time. It is a good practice to portray functionalities in general terms to attract a large audience. But, expanding and explaining technicalities in a general way, sometimes changes the meaning which is intended by the innovator. 

10. Depicting details using ‘Common Abbreviations’: 

Mostly patent drafters try to depict more than one thing of the same type, using common abbreviations, such as ‘etc., or so on’. However, it’s wrong to depict things generally utilizing these, since it may or may not ask the reader to utilize his or her imagination to put anything in that place according to their understanding. It produces ambiguity and non-specificity to the presented information to have more than one literal meaning. It can be helpful if the readers are familiar with the terminology and jargon, which are intended by the innovator by the use of abbreviations. But, this sort of writing is not recommended as people unfamiliar with the dialects can interpret in a wrong way, which will eventually demolish the general purpose behind patent drafting.

Patent Drafting Mistakes: Final Thoughts

The above patent drafting mistakes show how the patent filing process requires a thorough and careful examination. 

This is a one-time process and unchangeable after filing once.

That is the reason why it is vital to get proper guidance from patent drafting specialists.