For anyone feeling overwhelmed by the amount of text in a patent application they have been tasked to review, here are some insights to help make the process a little less daunting.
Patent application preparation is a collaborative effort, combining the technical expertise of the inventor with the legal knowledge of the patent practitioner. To that end, the main way for an inventor to add value in review is to ensure that the patent application describes the technology accurately and completely. While patent practitioners do have a technical background, the inventor is in the best position to assess the correctness of technical descriptions in the patent application. Conversely, I would suggest not getting bogged down in portions of the patent application that are entirely legalese.
In terms of how to approach review on a more granular level, it is helpful to have some understanding of the key sections of a patent application and their intended purpose. The particular sections that a given patent application includes may vary based on the type of patent application, the subject matter of the invention, and the preferences of the drafting practitioner. A typical patent application has drawings and an accompanying specification that includes the following sections in this order:
- Background – describes the current state-of-the-art related to the invention
- Summary – summarizes aspects of the invention
- Brief Description of the Drawings – provides a brief explanation of each drawing
- Detailed Description – describes how to make and use the invention
- Claims – defines the scope of the invention
- Abstract – briefly summarizes the invention
With some understanding of the parts of the patent application, let’s turn to how to approach review. I would suggest reading the sections of the patent application in sequential order with particular focus on the Detailed Description. Within the Detailed Description, the key here is to make sure that the description of the technology is accurate and also that there aren’t any big-picture concepts that are missing. Note that one can always ask the patent practitioner to highlight or otherwise call out those portions of the specification that describe the technology to focus review. I would suggest making proposed revisions in a comment rather than trying to make inline revisions. A comment allows you to write out your thought without having to try and mirror the language of the specification. Further, a patent practitioner will likely want to massage your language anyway when incorporating the revision into the specification.
Immediately following the Detailed Description are the Claims that define the scope of the invention. The goal is to define the scope of the invention so as to be new relative to the prior art and cover the valuable implementations of the invention. The Claims are written in their own distinct structure that departs from many grammatical rules. For instance, the Claims may be structured as a series of run-on sentences each with over 50 words and numerous semicolons. As a result, the Claims can be hard to read and understand for anyone other than an experience patent practitioner. Given the difficulty in parsing the Claims, I would suggest an inventor think through various implementations of their invention and, to the extent there are any doubts as to whether something is covered, ask the patent practitioner about it. A patent practitioner can then make the assessment as to whether the implementation is covered and adjust the claims as needed.
While reviewing a patent application may seem overwhelming at first, know that feedback will improve the quality of the resulting patent application. Accordingly, I would encourage any inventor to spend the time in the review process to ensure that their invention has the best opportunity to be protected through the patent process.