What kinds of comments are useful in revising a draft patent application?

So your patent attorney has send you a first draft of your utility patent application for your review. You’re not sure what to do, so you read my helpful tips on how to review a draft patent application. If the description and the claims appear in order, then it’s a simple thing to give your approval. But, what if you feel like something is missing or inaccurate? What patent review comments would help your patent attorney draft a better patent application? Are there ways to provide more constructive comments on a draft patent application that would assist your patent lawyer in improving the disclosure or claims? Let’s take a look at what helps and what doesn’t.

What types of patent review comments are less important?

Avoid spending too much time reviewing the background of the invention. Any explanations of the prior art do not need to get into too much detail. When it comes to talking about the prior art, less is more. You also do not need extensive descriptions of known technologies or known components. Instead, focus on the key unique features and elaborate on such features in gory detail.

How should you review patent drawings?

Patent drawings enable you to claim features that help distinguish your invention from the prior art. This does not mean that every feature illustrated in the drawing will somehow limit your patent. Claims, not figures, define your patent rights. That being said, you should point out any inaccurate depictions. Make sure to mention any missing parts that seem important or unique.

Unlike a utility patent, the drawings in a design patent will define the scope of your claim. That means that utility patent drawings have flexibility to show details that may or may not end up in the claims, but the details in design patent drawings will affect the scope of your IP rights.

How should you make suggested edits of your draft patent application?

Visually noticeable revisions from the client are always helpful. Keep in mind that a draft utility patent application will typically consist of two files to review:

  1. a Word doc containing the written description and claims;
  2. a PDF file of the drawings.

In my opinion, an efficient way to edit a Word document is to turn on “Track Changes” so that your revisions are visible. Added words are shown underlined while deleted matter is shown with a strikethrough. This helps the patent attorney to avoid missing any edits. If you do not own Microsoft Word, consider highlighting your edits and/or using a different text color. MS Word also allows you to insert comments which your patent attorney can review and respond to with their own comments.

To mark up drawings, consider using a different color and then emailing a color copy of your marked-up figures to your patent attorney. If you don’t have a color scanner, perhaps smartphone photos will suffice. It can help to circle any drawing edits so that they will not be easily missed.

How should you review and revise patent claims?

When reviewing claims, do not focus on the grammar or sentence structure. Patent claims read like a foreign language. Instead, focus on the substance of the claims. Do you understand what your independent claims cover?

Look for any particular features currently included in an independent claim that might be easily avoided by competitors. If you find such claim limitations, discuss with your patent attorney whether it would make sense to move such features into dependent claims or omit them entirely.

Don’t withhold comments and questions from your patent attorney

The best (and arguably only) time to discuss changing the content of your utility patent application is before it’s filed. If you hold back your comments, you are not doing any favors for yourself or your patent attorney. Even if you’re not sure of the validity of your comments, err on the side of caution and speak up before it’s too late. A healthy dialogue between you and your patent lawyer prior to filing will lead to a more robust utility patent application.

The following two tabs change content below.

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com