Patent Drafting: What is the Patentable Feature?

Over the years I have had the opportunity to work with many inventors. In fact, over the years I have worked with or advised literally thousands of inventors, the overwhelming majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. I have found that those who are serious are capable of meaningfully participating in the preparation of their own patent applications. Such inventors are highly motivated, but they just don’t know what to do, or exactly how to do it. Frequently they are afraid to mess things up by trying to do something themselves that is over their head, not because they are not smart enough, but rather because this “patent stuff” is quite complicated.

The patent rules at times seem arbitrary (because they are) and show little evidence of an overall thoughtful consideration. For example, why would you ever set up a regime where there are different time frames for completing various mandatory responses for free, but also having the ability to obtain automatic extensions of time of varying length? For example, you will have 3 months to respond to an Office Action issued by an examiner, but that can be extended for another 3 months. But if you get a Notice of Missing Parts you will get 2 months to respond, but that could be extended up to 5 months. Talk about arbitrary lunacy! How is an independent inventor supposed to navigate such a mindless maze?

It almost seems that some rules have been created for the purpose of tripping up users of the system. That being the case, should inventors be going solo and trying to protect their own inventions? No, at least not if you can afford to hire a patent attorney. Going solo through this patent maze would be similar to trying to remove your own appendix. If you can get to a hospital you should not be removing your own appendix! It is that simple. Of course, if you are lost in the woods and you are facing certain death if you don’t act, then acting seems a lot more reasonable. Similarly, if you have any options you should be pursuing those options and not blissfully filing and prosecuting your own patent application. Going it alone really should be done when the choice is between not pursuing the invention or trying to move forward on your own. If you can afford a patent attorney that is going to lead to the strongest rights, but many inventors simply cannot afford to hire an attorney.

All too often, however, inventors feel that the assistance of a patent attorney is really not necessary. This is a mistake. Do not confuse the meaning of the word “necessary” in your own mind. Can you proceed without a patent attorney representing you? Yes. Should you proceed without a patent attorney representing you? No, not if you can afford to hire an attorney and are interested in obtaining the broadest, strongest rights possible.

Never forget that the job of the patent examiner is to examine what you present, not to help you obtain the broadest protection possible, or even protection that would be at all useful. On top of that, there are many things that can be hopelessly compromised at the outset of the patent application process, which will make it impossible to obtain a patent of any kind, or at the very least force you to file another patent application to correct the deficiencies present. If you do have to re-file you will then be giving up your original filing date, which can prove fatal, particularly now that the United States is a first-inventor-to-file system. So if you are going to proceed on your own you really need to do so with your eyes open. That should mean reading as much as you possibly can to educate yourself. For starters see:

• Patent Drafting: Drilling Down on Variations in a Patent Application
• Patent Drafting: Describing What is Unique Without Puffing
• Patent Drafting Lessons: Learning from the Grappling Dummy
• The Key to Drafting Excellent Patents — Alternatives
• Drafting Patent Applications: Writing Method Claims
• Patent Drafting: Language Difficulties
• Patent Claim Drafting 101: The Basics
• Patent Claim Drafting: Improvements

You might also consider using the Invent + Patent System™, which can be used both to help you formulate your idea into an invention and to prepare a provisional patent application. You also might consider Patent It Yourself, perhaps the most popular self-help book for independent inventors.

But if you cross the bridge and you are going to go solo, whatever the reason, there is one thing that you absolutely need to take into consider. Most inventors struggle most with describing the patentably unique features of their invention. Instead of focusing on what will make the invention unique they will focus on marketing data and sales strategies. Then when they turn to describing the invention they will describe the invention in a way that doesn’t accentuate what is unique, sometimes describing their invention so that it could also describe well known prior art. Patent descriptions MUST focus on what is unique.

[Invent-Patent]

Indeed, one of the most common mistakes I see deals with the inventor being unable to describe what they feel is the patentable feature and/or unique contribution their invention is making to the relevant technology field. This is why doing a patent search is absolutely essential. Until you understand what is known you have absolutely no way of knowing whether a patent is likely to be obtained. Furthermore, without a thorough and complete picture of the prior art you are unable to focus the description of your invention on those aspects that will most likely contribute to patentability. Without a patent search you will invariably describe all aspects of the invention with equal importance. History and common experience tells us that there will almost always be certain features that deserve greater attention because that is where the patentable invention resides; the uniqueness that you can build a patent application around.

Frequently I hear from inventors that they have never seen anything like their invention on the market, so they know there is nothing that could stand in their way of obtaining a patent. While this may seem logical, it is simply not true. There are a good number of reasons why something may have been patented, or a variation that is too close for comfort may have been patented, and still the product not reach the market. For example, many times independent inventors will obtain a patent and then run out of money or lose interest and, therefore, the product never makes it to the market. Then when others come up with the invention themselves, or learn of the now defunct patent, they choose not to pursue it because without being able to protect the invention with a patent as soon as the product comes to market it will be copied by others if it is successful.

Due to the laws of nature, and the reality that there are only a finite number of solutions to any particular problem, every generation invents, or re-invents, many of the same things. Thus, it is always wise to do a patent search to start the process. I guarantee a patent search will uncover inventions that you did not know were out there. With over 8.5 million utility patents having been granted in the U.S. and well over 1 million pending patent applications, and millions of other published but abandoned patent applications there is always something that can be found that at least relates in some ways. You are always better off knowing about those related inventions. This allows you to determine whether moving forward makes sense, and it also allows for a patent application to be written to accentuate the positive, and likely patentable, aspects of an invention.

When filing a patent application you should always explicitly mention that which sets your invention apart and will indeed make the invention patentable. But how do you know what that is? My advice is to create a table that dissects the elements of what the prior art teaches. Take a look at the example table below, which is for a hypothetical shovel.

The invention is listed in the chart along with three hypothetical prior art references. Your invention and the prior art all have a shovel head, a handle and grip on the handle in common. One prior art reference teaching a rubber grip, two of the prior art references teach an aluminum handle, one of the references teaches a threaded handle and a matching threaded head. None of the references teaching a radio integrated into the handle. Typically when you are looking for uniqueness you want to find something in  your invention, most preferably something structural, that is not found in any of the prior art references. I am oversimplifying here, but if you can find a structural uniqueness not found in the prior art that means you should be able to craft a patent claim that would overcome a novelty rejection under 35 U.S.C 102 and you should have at least a fair chance (perhaps even a good chance) of overcoming an obviousness rejection under 35 U.S.C. 103. Obviousness is quite subjective, so generalizations there are difficult and dangerous. Still, you have identified a uniqueness. Now ask yourself whether that uniqueness is broad enough to build a patent around. Sometimes the answer is yes, sometimes the answer is no.

[Inventors-Google]

Now for the inevitable disclaimer. As with virtually everything in patent law, you do need to be careful. You should stay away from saying things like “the only thing that makes the present invention unique is…” Rather, consider saying something like “one of the things that makes the present invention unique is…” The second alternative is only slightly different, but leaves the door open for you to argue later that there are other aspects that make the invention patentable. The first alternative could be construed as an admission and very difficult, if not impossible, to get around. In essence, if you say something simple, and seemingly harmless, you could be giving the Patent Examiner the ability to use your own words against you.

The moral of the story is to be careful.  Getting help from a trained patent professional is the best and safest way to proceed.  If you do not have the funds available to seek competent professional advice you should really ask yourself whether you should be pursuing the patent path.  We all have dreams, and sometimes we take risks, but the invention to patent to commercial success path can be long, time consuming and expensive.  I dream big myself, so I am not about to tell others not to follow their dreams and believe in themselves and their inventions, but it is best to go into the process understanding what lies ahead and pursue moving forward in a financially responsible way.

For more information on patent application drafting please see: