How to Write a Patent

Written by Bob Bouthillier, Senior Director & Technical PM
image description
So, you have a great new idea for a new product…what to do to get started?

 

Types of Patent Applications

  • A traditional patent is filed as a non-provisional patent and it must have an abstract, a background, a description of the invention with drawings, and a set of claims.
 
  • A provisional patent may be filed first to establish a priority date, and this does not need to have any claims, but if any changes are made to the background (babble) section, the priority date is lost. As a result, I rarely file these unless I am confident in my background and just want protection while the patent attorney creates the claims. The provisional gives you one year to file your non-provisional application and it will expire if no non-provisional is filed.


Develop an Elevator Pitch

Draft a succinct statement that summarizes the problem and how your product/service solves that problem.

Conduct Patent Research

Research the IP landscape to learn if others have similar inventions or if your idea improves upon existing “art”.
  • Search Google Patents for similar products to learn about “prior art"
  • As you research patents, drill down through the links to patents referenced within each patent AND patents that reference each one you read. This latter group has built upon an invention and could be closer to your IP.
  • Identify how your product improves upon the “prior art
  • Further define product features that set your product apart
  • As you research these patents, make a list of each patent title with patent number and year of issue. Include a single sentence describing how it does or does not relate to your IP. Start this sentence with a word like YES, NO, Maybe, etc. so you and your patent attorney will understand which patents are believed to be pertinent or not relevant to your invention. This list may also be used to cite referenced patents in your patent application.
  • If the patent search appears to be clear of conflicts, provide the results of your search to a patent attorney and ask that they perform a patent search on your behalf. If your product infringes upon another patent, having a record of a “paid” patent search will demonstrate due diligence and will prevent the assertion of “trebled damages” in a suit that triples the damage award.
 

Create a Draft

If the IP landscape is clear, create a draft of your patent and file a “provisional” patent to protect your idea while you further develop the product and the patent.
 

Develop an MVP

Begin developing a Minimum Viable Product (MVP) for your product/service as quickly as possible to get feedback from actual users early and often. This lets you hone the direction, the design, and your approach based on feedback from actual users and from observations of the actual use of your product or service.
 

Create a User-Experience Roadmap as Early as Possible

Identify what users will do at each interaction with your product. This begins when they open the box and considers whether charging will be required before use, QR codes will be helpful to find apps, how pairing will be done, what’s on the quick start guide vs the FAQ on your website, and how to contact customer support, etc. This can be done on a whiteboard or on Vizio and getting this right lets you build the MVP to reduce friction, reduce customer confusion and improve the customer experience.
 

Build your User Story

Check out “People don’t buy what you do…. they buy why you do it!”   (Simon Sinek Ted Talk) Apple’s success is not an accident.
 

Define Your Competitive Advantage

Summarize your product concisely with a short paragraph and bullets.
 

List Specific Competitive Patents and/or Products

Identify features they have and how your invention builds on their product or fills a gap that they missed.
 

Write the Background of Your Invention

You are now ready to write the Background of your invention. I often refer to this as “the babble" since it should be very verbose, detailing features those other inventions missed, that are present in your new IP, plus every possible combo of implementation options you can dream up.

This description serves as a public disclosure that prevents others from filing patents on any new concepts or inventions that you describe. Although you can only patent one invention per patent filing, you can go back later, before your patent issues, and file a continuation which lets you create a new set of patent claims with the original filing date so long as no new content is introduced. Therefore, it's important to make the 'babble' as robust and broad as possible around your invention. 

You can also file a “continuation-in-part” (CIP) during that period after receiving notice of patent approval but before it publishes, where you can introduce new content that was not covered in the original patent and its background “babble”, but a CIP does not retain the original patent’s filing date.
 

Some final pointers:

With respect to writing claims, create a bullet list of items to be included in claims as well as combinations of these items to be included. This serves as a clear requirements list to hand to the patent attorney and provides a way to check their work to be sure every item or feature is addressed, along with every combination of desired items or features, in the claims.


Do I need a patent attorney?

Using a patent attorney to run an official “patent search” is always recommended, but when you choose to do this during the process is at your discretion.

Anyone can file a provisional patent on their own as it requires no claims at all, but a patent attorney may have suggestions to ensure that your background (babble) detail includes all possible features, options, and combinations possible - which will be necessary to maintain the original filing date.

However, for a non-provisional patent, I strongly recommend that you let a patent attorney draft the claims from your bulleted list because the language used in a claim can inadvertently exclude something of importance. One example of this relates to the use of the word “preferably” which is popular in European patents but is interpreted in the US as extraneous and thus would be considered a non-mandatory element in a claim.
 

One Final Note:

Many companies operate without regard to checking or observing the IP of others and it is up to the owner of the IP to bring any infringement to their attention. Just be aware that infringement suits may have a significant cost, and those being sued will search for “prior art”, in any form of patents, YouTube videos or any other public media form, that may invalidate your patent. This is a far more extensive IP search than that run by patent attorneys, so just be aware that having a issued patent is not a guarantee that you will enjoy protection and license fees from those deeply entrenched in your IP space.


Learn more about Bob Bouthillier