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Patent application drafting: A faster, cheaper, and less-painful approach

The structured patent-application drafting approach described below provides a faster, less-expensive, and reasonably-painless way of producing a high-quality application.

Phase 1: Sketch a resource-flow diagram

First, sketch one or more flow diagrams, like the one shown in the made-up example below, to show how to make and use the invention Here’s how:

• Identify a product or service that someone might actually pay for, and that’s made possible — or improved — by the invention.

EXAMPLE:  A SPICE RUB.  The made-up example below assumes that home cooks and restaurant owners might pay for a spice rub that reduces the time it takes to bake a potato.

• Diagram the flow of resources and processes that produces the product or service — in effect, the view from 50 feet up. Show additional details in lower-level diagrams as appropriate.

• Make notes directly on your diagram(s); this will help you later when you build a catalog of make-and use information in Phase 2.

EXAMPLE: Here’s such a diagram for our spice-rub invention, along with accompanying notes. Notice how processes are shown as circles, while process inputs and -outputs are shown in bold.

Software developers may recognize these diagrams as a variation on the well-known Yourdon-DeMarco data flow diagramming approach.

If the inventor and patent attorney are meeting in person, they can produce these drawings on paper or at the whiteboard. If they’re in different locations, they can do screen-sharing, for example with Skype or GoToMeeting, and use a drawing- or flowcharting program such as Visio, PowerPoint, SmartDraw, etc.

In figuring out just what to draw and what notes to make, it can help to keep asking the Five Whys questions, made famous by Toyota.

Phase 2: Systematically describe what you just drew

Next, methodically describe each resource and each process in your resource-flow diagram by providing standardized information for each, in complete sentences. The discipline of writing complete sentences as you go gets most of the editing done in real time and makes later review much easier.

Here’s a screen shot of a cataloging worksheet that has proved helpful — you can also download a Word-document template that I’ve posted.

Along the way, build a glossary of significant terms that aren’t covered in the catalog entries. It might turn out to be a useful resource in the jury room, among other places.

Phase 3: Draft at least some claims

It pays for the inventor and patent attorney to draft claims together, in real time. Doing this lets them tailor the claim language to what the inventor feels is the claim’s maximum scope, while avoiding whatever prior art the inventor knows about.

Real-time claim drafting also gives the inventor and attorney a chance to brainstorm about what types of claim would be useful for a licensing program, and/or for litigation against competitors.

[ADDED 2012-10-24:] For a useful approach to drafting claims, see this posting about gaming the Single-Sentence Rule.

Phase 4: Update the diagrams and description

It will usually be a good idea to revise the diagrams and catalog entries to match the claim language. Doing so will make it easier for future readers to figure out what’s going on.

Phase 5: Take the time to edit into conventional format?

Many patent attorneys will want to take the time to edit the worksheet’s complete sentences into a conventional-looking patent application before they file it. The editing work should be easy by that point, because most of the heavy lifting will be done.

But consider this: The resource-flow diagrams and catalog worksheets should contain all the information required by the law for a patent application. So, it might make sense to immediately file these materials and the initial claims “as is,” as a provisional patent application. Doing so would let the inventor quickly establish an early filing date, while buying time for the patent attorney to do additional editing and claim drafting for a non-provisional application.

Why fast filing could be important

The traditional approach to drafting a fileable patent application can be a slow and haphazard process. This is especially true when — as is often the case — the patent attorney is not as familiar with the technology as the inventor is.

Yet fast filing has become more important than ever, with the recent enactment of the America Invents Act.

The approach described above has worked quite well in several different technology areas. It evolved in the course of a number of patent-application projects for some significant R&D organizations. It’s proved to be quite popular with scientists and engineers, who seem greatly to prefer it to the traditional back-and-forth drafting and editing cycle.

PS: It goes without saying, of course, that you shouldn’t rely on the information above as a substitute for legal advice — ask your (patent) lawyer about your specific situation.

How to use this approach yourself

There are a couple of different ways you can use the approach described above:

1. You can ask your patent attorney to col­lab­orate with you in using this approach to create a complete draft patent application in a few intense hours of fairly-enjoyable work. This kind of collaborative drafting and its pre­cur­sors have proved to be extremely popular with scientist- and engineer inventors; client confidentiality precludes me from identi­fying them, but I can say that many of them work for companies that you’ve definitely heard of.

(You might enjoy a slide show I put together a couple of years ago to summarize a precursor to the approach described above — it illustrates, in pictures, some of the reasons that scientists and engineers tend to loathe the traditional patent-application drafting process.)

2. Alternatively, you can use the approach below on your own, to pro­duce a rough draft that will give your patent attorney a big head start.

[TEXT UPDATED 2012-12-10; DRAWING UPDATED 2012-02-23]

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