Patent drafting

General Information

Purpose of a patent application filing is to get the patent for an invention / utility model that will be valid in the country / region of your interest and will grant patent protection according to national legislation. Ideally, patent application must pass through all stages of registration in the short period: pass the examination successfully without additional requests, followed by patent grant and payments of annuity fees until patent expires, or until client terminates the patent. While drafting the application, patent attorney should consider many factors to achieve this result.

FIRST TASK IS

To get patent protection for product / technology.

The object described in the patent application must correspond to product / technology that will enter the market. If patent claims features differ from characteristics of final product / technology, it can be considered that patent does not protect this product. To avoid this situation, cooperation and understanding of client and patent attorney is necessary: the detailed analysis of all features of product / technology and goals of the client, interaction of technical specialists of both parties, etc. The result should be claims and description of application to support claims, characterize product / technology of the client by correct and clear technical terms.

SECOND TASK IS

To provide the client with the monopoly.

It is necessary to prevent new competitive products on the market. Patent holder has exclusive right to keep competitors from using, producing, offering for sale, selling, and importing the claimed invention. Thus, the scope of rights depends on the claims content and skills of the patent attorney who drafts the claims. Positive solution is achieved by drafting claims for the specific area / niche, without unnecessary narrowing scope of rights. There is a need to foresee as much as possible and predict all changes that can be made to the product / technology in order to “circumvent” patent. The result should be the widest monopoly for the client.

THIRD TASK IS

To consider requirements of national patent legislation. 

Depending on country, there may be differences in: objects that can be protected, objects for patenting as inventions / utility models, conditions of inventions / utility models patentability, requirements for claims, description, abstract and drawings structure, requirements for technical problem and technical effect, invention disclosure in description and necessary information to support the claims and much more. Approaches to application examination and patent search may also vary (if the search is performed by the Office). The result should be the patent grant in every country/region of the client’s interest.

Why you should think about Office Actions before filing?

As shows our practise, the international extension of the patent to several countries with just one variant of application leads to additional problems at the examination stage and is often unsuccessful. To increase the chances of registration under the national procedure, it is necessary to make appropriate changes in the application for each country. Changes can be made before application filing (adaptation of application), or at the examination stage (response to Office Action).   As a rule, response to Office Action is associated with a large investment of time and money and can complicate the patent registration procedure. Therefore, our strategy, depending on the specifics of the application, is to reduce the chance of receiving an Office Action, or to increase the chances of a positive response to the Office Action.   Office Action is sent if the application does not meet certain requirements. Preparing the response involves work and time costs that depend on complexity of Office Action. In particular, work includes the analysis of request (if necessary, translation), analysis of the country’s legislation, analysis of application materials taking into account this information, preparation of response (if necessary, translation, and filing of response by prescribed procedure in paper or electronic form.   Following should also be taken into account:

  • Depending on situation, one response to Office Action may not be sufficient, and therefore second Office Action may follow, which prolongs registration procedure and increases costs.
  • Office Action, and even more, repeated Office Actions and correspondence with expert can set expert to refuse an application.

  Thus, one of the important directions in protection strategy, is maximum work to adapt application to national requirements before application filing, to avoid Office Actions and speed up application examination, as well as to prevent additional costs.