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[litigation]

I am new to this interesting patent world. Can any one guide me about How to draft an effective patent. Suggestion can be related to any book or if any institute that conducts any online training programme for drafting. I am also looking for suggestion on practical aspect of drafting a patent.

[OMG IP]

start with Google and "how to draft a patent" -- you'll surely find 20-30 immediately useful links.

Back in the day I used a NOLO book -- I believe they have several on the topic, which range from novice to advanced type material.

An effective patent application needs to comply with the requisite statute(s).  All things being equal, my own opinion is that it is critical to think ahead to a 103 obvious rejection under the KSR legal standard.  Thus, get everything you can from the inventor as to why, how, what, who, where, etc. the invention is not obvious.  So to me, the most effective patent application can overcome a 103 rejection w/o creating any estoppel and/or losing scope of protection.

The most effective patent, which is a whole other question, is narrow enough to get around prior art, but broad enough to protect against would-be competitive infringement.  That's saying a lot in a nutshell.

[G8ZoST]

I found a book called "The Patent Writer" to be quite useful, since it gives more information about how to actually decide what to include, and about claims writing than the Nolo books. The latter tend to focus more on formal requirements. A combination of "The Patent Writer" and one of the Nolo books should give you a basis.

Additionally, I would recommend using one of the patent search engines (e.g. www.freepatensonline.com) to find some newer patents and published applications in your field and read these. It may be better to use ones that were filed for companies, as ones by independent inventors are often quirky and may not provide the best example. AFAIK you can freely copy entire passages from these patents, e.g. the disclaimers, since there is no copyright in patents, and you can of course model your own application on these.

[OMG IP]

 AFAIK you can freely copy entire passages from these patents, e.g. the disclaimers, since there is no copyright in patents, and you can of course model your own application on these.

I believe you are right in that patents by themselves are not copyright protected, but that does not mean the text and/or images in the patent are not copyrighted.  Be careful.

[af]

An excellent book that is reasonably priced, easy to read, and very accessible is "Invention Analysis and Claiming: A Patent Lawyer's Guide" by Ron Slusky. The emphasis of the book is on effective claims drafting and it is full of many very good examples. It also has some great information for effective specification writing strategies. There is some supplemental material on his website that you can use as you read through the book. Ron also gives two day trainings in various cities around the country. I attended one of his seminars in San Jose and found it to be excellent.

Another good book is How to Write a Patent Application by Jeffery Sheldon. This book is expensive, although sometimes you can find someone selling a recent edition on Amazon for a more reasonable price. You may also be able to get it on interlibrary loan from your public library. This volume is quite thick and a great reference but for me Slusky's book provides better training.

I hope you find this information helpful.
Alan

[patentsusa]

I am new to this interesting patent world. Can any one guide me about How to draft an effective patent. Suggestion can be related to any book or if any institute that conducts any online training programme for drafting. I am also looking for suggestion on practical aspect of drafting a patent.

I work with some contingency fee litigators.  Here is a list of some potential problems I look out for when evaluating the quality of a patent.  In general, it is best to write the patent claims first, then write the rest of the patent application based on the claims.

   1. Is the Title narrower than the broadest claims?  If the claims include both methods and apparatus, does the title have only one or the other?
   2. Is the Field section narrower (more specific) than the broadest claims?
   3. Does the  Background section characterize prior art, admit prior art, or suggest solutions to the problem?
   4. Is the Summary section narrower (more specific) than the broadest claims?
   5. Is the Abstract narrower (more specific) than the broadest claim?
   6. Are there features in the claims that are not shown in the drawings?
   7. Does the description of the views of the drawings not clarify that each figure is for a certain embodiment as opposed to being of the invention?
   8. Is there "patent profanity" in the Detailed Description (use of words such as "much," "necessary," "necessarily," "essential," "always," "required," "important" or  other similarly strong words).?
   9. Does the detailed description contain too much detail that is not needed to provide enablement or best mode for the claims?
  10. Is the description not sufficiently clear or detailed to enable someone of a low skill level to make and use the invention described in the claims?
  11. Is the broadest claim very long and full of terms that are difficult to understand?
  12. Are there only a few claims?
  13. Is there only one type of claim (all claims are method claims or all claims are apparatus claims)?  This is only a problem if there is only one patent for the invention.
  14. Do the claims only cover a small subcomponent of a sellable product?
  15. Are there terms in the claims that are not clearly understandable?
  16. Are there claims for features that are not described in the Detailed Description?

This list is not exhaustive, but should give you can idea of the complexities of patent law.  Litigators will not consider accepting a patent for contingency fee litigation unless it is well written and the file history does not contain too many errors leading to file wrapper estoppel.  Also, there will ideally be multiple patents and there is literal infringement.

If, after reading this, you are not sure you can draft and prosecute a claims-centric patent application to avoid these problems, hire competent help.

[af]

Deepak, that is a great list.

13. Is there only one type of claim (all claims are method claims or all claims are apparatus claims)?  This is only a problem if there is only one patent for the invention.

For me, I would modify #13: Does the invention setting of the claim target direct infringers?

 

9. Does the detailed description contain too much detail that is not needed to provide enablement or best mode for the claims?

I have taken over several applications during prosecution where there wasn't a lot of detail, making claims amendments challenging. I think there has to be a balance where there is enough detail to support meaningful fallback positions.

Alan

[JimIvey]

9. Does the detailed description contain too much detail that is not needed to provide enablement or best mode for the claims?

I have taken over several applications during prosecution where there wasn't a lot of detail, making claims amendments challenging. I think there has to be a balance where there is enough detail to support meaningful fallback positions.

I haven't read the list in detail, but I agree that this point requires a bit of clarification.

First, too much detail in the spec doesn't harm the patent legally while too little does.  Too much, and you bore people unnecessarily (or divulge stuff you didn't have to).  Too little, no claim and no enforceable rights.

Second, when you refer to what is "needed to provide enablement or best mode for the claims", it's important to realize that you're not referring to the claims as filed but rather the claims as you might amend them to overcome cited art and other rejections during prosecution.  So, don't just barely support the claims you have; support the claims you'll wish you had in a few years when you know more than you do now.

Regards.

[Wiscagent]

I'm not an attorney, but that list of 16 seems like things to consider, rather than justification to automatically reject a case. 
- - - - - - - - - - - - -
A few examples:

   8. Is there "patent profanity" in the Detailed Description (use of words such as "much," "necessary," "necessarily," "essential," "always," "required," "important" or  other similarly strong words).?

If the detailed description states that the gadget must not include XXX, or must include YYY, or something that effect, and  i) the claims that are being asserted and ii) the infringing item are consistent with that “patent profanity” - - then there shouldn’t be a problem in that regard.

  10. Is the description not sufficiently clear or detailed to enable someone of a low skill level to make and use the invention described in the claims?
  11. Is the broadest claim very long and full of terms that are difficult to understand?

Unfortunately, many areas of technology are difficult for the layman to understand, and many inventions require long claims.  That’s just the way it is.  So the attorney must decide whether or not to walk away from entire fields of technology.

  12. Are there only a few claims?
  13. Is there only one type of claim (all claims are method claims or all claims are apparatus claims)?  This is only a problem if there is only one patent for the invention.

If just one valid claim reads on the infringing article, that’s all that is needed.
- - - - - - - - - - - - -
That’s my two cents.

[khazzah]

  10. Is the description not sufficiently clear or detailed to enable someone of a low skill level to make and use the invention described in the claims?

Wonder what the thinking is here. Is this expressing a concern with invalidity due to lack of enablement? If so, "low skill level" is the wrong standard.

If the thinking is instead "how easy does the patent make it to explain the technology to a judge or jury" then I think that's the wrong question too. I don't do litigation, but I talk to people who do. And my sense is that it's the patent litigator's job to explain the technology to the fact finder, and they don't rely exclusively, or even mainly, on the patent itself to do this.

  11. Is the broadest claim very long and full of terms that are difficult to understand?
  15. Are there terms in the claims that are not clearly understandable?

"Very long" is a red herring. If you repeat "the plurality of the widgets" every time, your claim will be long even if it's not complicated. If you instead stick to "the widgets", the claim is automatically shorter. So what does length really measure?

And patents are chock full of difficult terms. But patent attorneys don't put terms like "azimuthally asymmetric" and "slidably disposed" in the claims just to make them hard to read. They choose terms like that in order to distinguish over the prior art and nothing but the prior art.

Litigators will not consider accepting a patent for contingency fee litigation unless it is well written and the file history does not contain too many errors leading to file wrapper estoppel. 

I disagree. I've read a number of patents asserted by NPEs -- the vast majority of which I assume are contingent fee -- and my impression is those patents don't read any better or worse than other patents I come across.