Don’t be Fooled, Drafting Patents is Complicated



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5 comments so far.

  • [Avatar for MaxDrei]
    December 21, 2012 11:56 am

    Interesting comment at #4. Jennifer does your company ever adopt a two track approach, one for the USA and one (PCT) for ROW (rest of the world)? It might deprive you of some “fun”, but would that not ameliorate some of your drafting challenges?

  • [Avatar for Jennifer Warren]
    Jennifer Warren
    December 21, 2012 09:57 am

    I work in a multinational company. We file about half of our priority cases in Europe and about half in the US. Occasionally we find ourselves filing first in a country, such as Russia, when we have . We have great fun making certain that the prioirity documents will have have enough content and the right language for multiple countries. We have adopted an approach where we amend (or withdraw) at the PCT stage to save thousands per country in translation and prosecution at the individual country level.

    This does not apply only to big companies. Start-up companies should consider PCT as a second filing if they have any thoughts about offshoring their manufacture, or licensing to reach a bigger market. It creates a much more serious impression for angel investors who often along to fund patnet costs as part of a strategic business plan that includes people, equipment, and distribution.

  • [Avatar for Jodi]
    December 20, 2012 01:54 pm

    Like everything, it depends.

    I think this post applies to say 90% of the small inventors who are either too busy, or rather focus on the technical or business side.

    However, for the rest that are willing (or have already spent) the time&effort researching competitors, thinking through business plans, studied various standards and technical groups, performed patent searches and studied the dozen or so most relevant works – then I would say this article is less valuable. Once the engineer has spent that _THAT_ time&effort (we’re talking hundreds of hours or more) then they already know exactly what subtle nuance is valuable to patent. There is no way a patent attorney can understand and draft similar in ~40 hours. Absolutely no way. Now the pat attorney almost certainly can draft a better pat application, but the core concepts, the subtleties, the nuances, what is most valuable, what the future business plans are, how competitors tend to react and evolve over 10-20 years, etc… – are not what an engineer should use a pat attorney for.

    I’m not talking about how things are done in today’s world – I’m simply giving another option that I think is overlooked. In today’s world, engineers typically spend 2-20 hours copying-pasting pieces from design docs which are forwarded to the pat attorneys and a couple hours of followup interview. In other words, the technical stuff is heaved over the wall to the patent attorney. And what do we see as a result? …disappointments like the recent invalidation of Apple’s pinch-to-zoom patent. What a roller coaster.

  • [Avatar for EG]
    December 20, 2012 08:16 am

    “It’s not only prefessional drafting that counts. It’s also the Q and A between inventor and drafter that gets into the draft the stuff that matters.”


    Very true. I often tell my client/applicant to expect me to “question them to death” and to hope I ask more questions than the patent examiner who will be handling their patent application.

  • [Avatar for MaxDrei]
    December 20, 2012 08:07 am

    Of course, the switch to “First to File” makes it even more vital to get right the disclosure content of the patent application on the filing date, for that is what you will be rigorously held to, in any priority contest. Going forward, you really do get only one chance to get it right for the next 20 years.

    In the USA drafters are in thrall to litigators, it seems to me. Fair enough, until the point where the drafter thinks his highest duty to the client is to obscure the relationship between the technical features of an invention and the technical effects those features deliver. For such obscurity destroys the chances of getting effective patent protection, at least everywhere outside the USA. See the recent Pfizer silfenidin(?) case in Canada as an example.

    It’s not only prefessional drafting that counts. It’s also the Q and A between inventor and drafter that gets into the draft the stuff that matters. Usually, that Q and A stimulates the inventor to further embodiments. The inclusion of those extra embodiments will often make a vital difference to the scope of the claims that eventually issue.