Best Practices while drafting a patent application

1. Usually, when an invention is to be drafted as a patent application, there are a lot of parameters that are essentially to be considered.

Pre-requisites before drafting a patent application:

1. Identify a potential patent drafter who is skilled to draft the patent application in the relevant technology as that of the Invention;
2. Have a thorough Inventor meeting to understand the technicalities of the Invention. Be prepared to the meeting and ask questions, even if it is basic; and
3. Perform a quick patent search in the relevant field of technology as that of the Invention to understand the latest filed patents, competitors, market scope and so on.

While drafting a patent application, consider the following parameters:

1. Subject matter-The actual pain point lies in converting non-technical idea to a technical idea to seem patent eligible. This can only be done if IP Professionals have a complete knowledge starting from patent drafting to patent prosecution stages to bring in value-add to a patent application. Most of the time, the drafting IP professional may not have the complete knowledge on objections raised by the patent office during patent prosecution stage and hence fail to draft the patent application to comply with the patent law. Therefore, being aware of the law rules and regulations is an absolute need while drafting the patent application.

2. Broad/Narrow Protection-another pain point while drafting a patent application lies in obtaining maximum broad protection to the invention in a crowded technology area. This is required to block competition. This is yet again a challenging task and requires a minimum knowledge on current trend in the market for that technology, upcoming competitors, patents being granted, Standard Essential Patents and so on.

3. Understanding Business Strategy and the Product- Most patent drafts fail to adapt to business strategy of the clients and even to the product for which the patent is drafted. Hence, it is of utmost importance to understand the business strategy of clients and thoroughly understand the product to bring out the best in a patent draft.

4. Content/Enablement of patent claims-Most patent drafts fail to enable the patent claims written in the patent application which invites trouble during patent prosecution. It is always a best strategy to enable the patent claims completely in the patent specification. The content of the patent specification matters throughout the patent lifecycle and hence needs to be drafted cautiously.??

I have written down some of the parameters which are key while drafting patent applications, while there could be lot more. Patent drafting is a skill and requires huge amount of effort to bring out the best in a patent draft.

I have tried writing an article for the first time based on my experience. Please do let me know if you have liked it and found it useful via the comment below.

Thank you all,