1

There is a saying that it is always better to consult and work with an attorney to draft patents. It is said that when you self-draft a patent you would draft inferior patents, miss out on things where you could have defended the patent better later, or fail to secure a broader patent.

Any of these things or more can happen. A novice inventor who drafts his patent cannot know the nuances of drafting a patent and hence can make some very simple mistakes.

But in case someone was to draft it by himself what are the 5-10 things the inventor should keep in mind while drafting?

2

In general there are many requirements and rules which may limit protection if a inventor files patent application of its own. But its a altogether myth that inventor cannot draft good patent application its another issue that he might have shorter claim but that can be covered if drafting is proper:-

Its my personal recommendation that an Inventor should read at least 20-25 patents in said class of invention to understand how things go.

Following things should be considered before drafting of specification (not in specific order):-

  1. Understand and Satisfy legal requirements like FORMS, Affidavits, fee etc. Legal requirement is key here you need to use terms and formats provided by LAW to make good patent document.
  2. Use Definitions: see MPEP § 2111.01
  3. Written description requirements:-MPEP § 2163
  4. Disclosure enablement:- MPEP § 2164
  5. Use well arranged multiple embodiments covering all scopes to protect work around of invention
  6. Claim drafting complying with 35 U.S.C 112 (b).
  7. Claim Preamble MPEP § 2111.02
  8. Reviewing as examiner, potential infringer

also check presentation made by USPTO for inventors.

  • Also U.S.C 101 has to be properly complied in light of the ALICE case in 2014(if applying for USPTO) – saxena Jun 3 '15 at 13:54
  • thank for your comments its included in MPEP teachings of disclosure enablement. – Pushpak Jun 4 '15 at 11:12

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