“I make more mistakes than anyone else I know, and sooner or later, I patent most of them.” Thomas Edison – inventor with 2332 patents
Understanding the Purpose
Those new to the innovation industry can often think that just gaining a patent for their invention will set them up for success. What needs to be appreciated is that a patent is a business tool, not a tick-the-box legal document or the holy grail to riches.
An analytical approach is needed to look at what the business is trying to achieve and how or if a patent can help that. This needs to be understood by both the patent attorney and the patentee.
Amongst the considerations are budget, timing and resource. It needs to be appreciated that while a patent attorney can craft the ultimate patent specification, practically it can be tempered by these considerations.
Clear communication between the patent attorney and patentee about the purpose of the patent before drafting is critical.
Patent drafting is a complex art and science, the end goal of which is to have a robust legal document that clearly defines the patentee’s rights and can withstand the scrutiny of the Courts when tested.
Patentees can sometimes consider their patent attorney to be primarily there for legal and technical requirements rather than integrating their work into the bigger business picture. This is particularly so when drafting patent specifications, where the attorneys, from their perspective, rightly concentrate on the technical details of the invention, as do the inventors/patentees.
However, taking the time to understand the business context behind the invention can result in patent drafting that not only better serves the patentee but also demonstrates how a patent aligns with their broader goals. This requires a level of communication between the two parties that is perhaps fuller than often thought necessary.
If an IP strategy or just a patent strategy has been prepared before patent specifications have been drafted, then that helps both parties understand better what is needed for next level patent drafting.
Drafting Considerations
The following are some of the reasons a business may wish to obtain a patent along with how the patent specification can be drafted to support those aims as well as showcasing the invention to other parties. These are often pulled out when crafting an IP strategy.
Attracting investors
Ideally the patentee has researched likely investors they wish to target. The general description in the patent specification can then include an example or two of how the invention can be used in a field that the investor is interested in – hopefully encouraging investment!
Deterrent to competitors
Sometimes a business needs time to gain traction in the marketplace. A broadly drafted patent specification can act as a deterrent causing hesitancy in competitors until the final form of the claims are realised. This can be the key to market dominance by the patentee, particularly where the invention is in a niche market.
Controlling manufacturers
Patents are an excellent tool to control manufacturers of a product, particularly when manufacture is offshore and “over-runs” are viewed as a legitimate way for locals to profit. Often patent specifications do not include detailed manufacturing parameters with a tactical decision being made to have some details kept as a trade secret – particularly those deemed not essential to perform the invention as claimed.
However, in some circumstances, including in the patent specification manufacturing guidelines can reinforce the manufacturing relationship – noting that manufacturing agreements can reference patents.
Leverage for negotiations
Sometimes collaboration with other parties is required to fully commercialise an invention. The general description and possibly some of the claims can include examples of how the invention can be integrated into other technologies and/or processes.
Licensing to get royalties
The value of an invention can be worth proportionally far more than its price. A small component in a greater system can be the element that gives the competitive edge. Patent claims can be crafted not only for the core invention, but for the greater technology into which it is incorporated. While there are limits to how broad a patent can validly be, it can be strategically worthwhile to push for the broadest scope possible.
Royalties can be negotiated for the broader use of an invention more easily if the bigger picture is reflected in the patent specification.
Property for sale
Similar considerations around drafting for investors also apply for purchasers. A difference can be to view where the patent can fit within a greater portfolio. Often the range of technologies and timings of patents filed within a portfolio can paint a picture of the value of a purchase.
Litigation against infringers
For many, litigation is the last resort – being stressful, expensive and time-consuming. For some, litigation is the business model, rather than building up a business that manufactures and sells an invention.
Therefore, drafting the patent specification can be directed to more speculative inventions designed to block others and extract punitive remedies.
Escrow to secure ideas
A Patent Office is an independent body where information in the form of a patent specification can be date-stamped and stored.
This facility can be used to create a verifiable record of the possession of information prior to meeting with an outside party. Therefore, if there was a dispute over who contributed what, the Patent Office record can be used to resolve matters.
In this case, the patent attorney probably does not need to craft a patent specification to usual standards and can just facilitate the filing of pure information.
The Core Functions of a Patent Specification
The format of a patent specification and the functional reasons behind that format need to be appreciated.
A patent specification has two key parts. The patent claims that define the scope of the legal monopoly being sought, and the body of the specification which supports the patent claims.
The claims define the legal boundaries of the patent protection. The claims must be clear, precise, and specific to ensure that the scope of the invention is properly outlined. They are crucial because they determine what is legally protected and what can be infringed upon. Nearly all the scrutiny of a patent examiner or the Courts is directed to interpreting the scope and validity of the patent claims.
The body of the patent specification must clearly describe the invention so that a person skilled in the relevant technical field can understand how to make and use the invention. The detailed description and the examples provided in the specification must support the claims. The claims should not cover more than what is disclosed in the specification, ensuring that the patent does not extend beyond what has been invented.
In addition, the specification often includes a background art section that discusses prior technology or solutions as a way of highlighting the problem the invention is solving. This helps differentiate the invention from prior developments and justify its novelty and inventiveness – aka patentability.
Once a patent attorney understands the background technology and the current invention, then they can draft a highly credible patent specification which fulfils its function as a legal document as described above.
If the patent attorney also has had the benefit of knowing the additional drafting considerations then they can craft a patent specification which meets not only the legal considerations but also the commercial ones.
Final thoughts
A well-thought-out intellectual property strategy which looks at the purpose of a patent can help shape the drafting of a patent specification. This specification can be far more than just a legal document and add considerable commercial value – assisting an organisation to meet its commercial goals..
