How to Write Your First Patent

Simone Rosa Nunes Reis André Inácio Reis

Instituto de Informática Instituto de Informática
UFRGS UFRGS
Porto Alegre, Brasil Porto Alegre, Brasil
[email protected] [email protected]

Abstract approach, the value of a claim is inversely proportional to the

This paper presents guidelines for students writing their number of words is contains. The four sections of a patent
first patent in the field of computer science and have to form a seamless ensemble. For this reason, next
electronic/computer engineering. The set of guidelines is section presents a set of questions that help to contemplate all
comprehensive and presents a step-by-step approach that aspects to be covered in a patent as well as the relationship
allows beginners to produce the text description for their first among the sections.
patent. The proposed methodology is used to teach invention
abstraction and claiming to both graduate and undergraduate III. WRITING A PATENT IN 26 STEPS
students. This section describes how to generate the text of a patent
using the method of questionnaire-based interview with the
Keywords: intellectual property; invention abstraction; inventor. The writer/inventor has to complete 26 small steps
invention claiming; patents to produce a patent text.
A. Step 1: Understand what you need to know
I. INTRODUCTION
Read all the steps listed in this section, which presents a
Patents are receiving growing attention due to recent litigation questionnaire interview with the inventor. Read all questions
processes. One example of this is the acquisition of Motorola
Mobility by Google. An official press release by Google [1] states
without answering them. This step serves to give an overview
that: “Motorola Mobility’s patent portfolio will help protect the of what a person needs to understand before writing a patent.
Android ecosystem”. Many other sources affirm that patents played 1) Criteria for success
a main role in this acquisition. The writer achieves success in this step by creating a
In general, engineers lack formal training in writing, or the vision of all the issues involved in writing a patent. The
training is restricted to practical paper or report writing. Patents are inventor has to understand that the proposed questions are
a field that link several areas of expertise, including: writing, logical
thinking, legal knowledge and technical knowledge. In order to
distinct and should have different responses, without
write a good patent, an inventor/writer has to have a complete view repetition.
of the contents that a patent must incorporate. 2) Criteria for failure
In order to provide a holistic view of the contents of a patent, The writer fails in this step by not having an overview of
this paper proposes a method of writing that is based on a 26-step all the issues involved or if he or she believes that there are
procedure. Initial steps are directed to decide what the invention is questions that ask the same thing.
and how it should be claimed. Final steps are related to the
construction of a patent text by cutting and pasting answers in a B. Step 2: Understand what is the novelty of the invention
template. The 26-step procedure can be used either to generate a
final text (by cutting and pasting in the templates), or to produce the
In this step, the inventor has to read the questions 1-6
necessary information for an initial invention disclosure to be described below and focus on question 6. Question 1: What is
handled afterwards by a patent attorney. the name of your invention? Question 2: What is the scope of
This paper is organized as follows. Section II briefly introduces this invention? (Where it applies, what are the potential
the structure of a patent. The 26-step procedure is presented in customers?). Question 3: What problem the invention solves?
section III. Some additional advice is given in section IV. Finally, Question 4: How the problem that the invention solves was
Section V presents the conclusions. solved earlier by other products or services? Or simply it was
not solved? Question 5: In which ways the previously
II. THE STRUCTURE OF A PATENT
available solutions to the problem that the invention solves
A patent is composed of four sections: Abstract, Invention were not fully satisfactory? Question 6: How the invention
description, figures and claims. The part that has legal value solves the problem? How this new way of solving the
is the claim section, which can contain several claims. The problem differs from previously available solutions? What are
scope of protection of a patent is given by the text of the the features of the invention that make it different from the
claims interpreted with the help of the invention description solutions previously available?
and the figures. Patents follow what is called the all element By focusing on question 6, the inventor is asked to
rule, which says that to infringe a patent a product has to have carefully answer the part of "what are the features of the
all elements listed in a single claim. For this reason, claims invention that make it different from the solutions previously
with fewer elements have a broader scope of protection. available?"
Conversely, claims with many elements have a narrow scope
1) Criteria for success
of protection and therefore are less valuable. As a first order

978-1-4673-5112-6/13/$31.00 ©2013 IEEE 187 Interdisciplinary Engineering Design Education Conference

 The writer achieves success in this step by producing a list of this invention? (Where it applies, what are the potential
of innovative features of the invention. This list should be customers, why the corresponding field of economic activity
sorted in order of importance. A subset of items on the list is important).
should be seen as a list of features of the invention which 1) 3.5.1 Criteria for success
make the invention to be the invention. It is good to have a The writer has to produce at least half page response,
large list with a small essential subset. The list describes the being quite verbose over the area of the invention. The
intrinsic characteristics to what was invented. The inventor sentences must have a clear subject, without using synonyms
has to think the invention as an object and list characteristics for the subject, and without using pronouns for the subject.
of the object.
2) 3.5.2 Criteria for failure
2) Criteria for failure The inventor has to avoid being laconic, e.g.: giving single
The inventor fails in this step by not being able to list any line answers. Failure in this step can occur in different ways,
innovative feature of the invention. It is not good if a very e.g. using several different synonyms for the subject in
extensive list of features is considered essential to the different clauses; use of pronouns for the subject; quote the
invention. It is also bad if the list contains extrinsic invention; quote the problem the invention solves.
characteristics, e.g.: purpose of use of the invention, method
of use, advantages of use, etc. F. Step 6: Describe the problem addressed
The inventor has to answer the question: What problem
C. Step 3: Make a general claim
the invention solves? Describe in simple terms, avoiding
In this step, the inventor has to write the claim number 1, technical jargon, without citing the invention.
which will have the form described below, where the essential
characteristics come from step 2. 1) Criteria for success
Claim One. "NAME THE INVENTION" characterized by The writer has to produce at least half a page response,
ESSENTIAL CHARACTERISTICS. being quite verbose about the problem the invention solves.
The sentences must have a clear subject, without using
1) 3.3.1 Criteria for success synonyms for the subject, and without using pronouns for the
Success is achieved if the name of the invention is subject.
relatively short and quite comprehensive. The essential 2) Criteria for failure
features in the claim define the claimed invention. In order to Failure in this step can occur in different ways, as listed in
achieve good protection, it should not possible to practice the the following. The inventor has to avoid being laconic, e.g.:
invention without all the essential features listed in the claim. giving single line answers. Other issues to be avoided include:
The claim consists of just one sentence. The single phrase in using several different synonyms for the subject; using of
the claim is well designed and makes sense. pronouns for the subject; quoting the invention; not
2) 3.3.2 Criteria for failure describing the problem the invention solves.
Failure in this step can occur in different ways, as listed in G. Step 7: Describe the previous solutions
the following. The claim has more than one sentence. The
claim is a phrase that makes no sense. The claim uses In this step, the inventor has to answer the question: How
pronouns instead of names. The claim contains extrinsic the problem that the invention solves was solved earlier by
characteristics. The claim contains features that are not other products or services? Or was it simply not solved?
essential to the invention. 1) Criteria for success
The writer has to produce at least half a page response,
D. Step 4: Create a name for your invention
being quite verbose in response to the question. Sentences
The inventor has to answer the question: What is the name must have a clear subject, without using synonyms for the
of your invention? subject, and without using pronouns for the subject.
1) Criteria for success 2) Criteria for failure
The inventor has to come up with a clear title, which may Failure in this step can occur in different ways. Examples
correspond to the name used in the claim. Note that the PTO of bad answers include the inventor being too laconic (e.g.
tends to require that the title of the invention is used in the giving single line answers); using several different synonyms
claims. In this sense is good listing various natures (Method, for the subject; the use of pronouns for the subject; quoting
system and apparatus) that can be used in different claims. A the invention; explaining why the previous solution was not
short title (not more than one line of text) is desirable. satisfactory.
2) Criteria for failure H. Step 8: Describe the weaknesses of the previous
Failure in this step can occur in different ways, as listed in solutions
the following. The title is too long. The title is too specific.
The title lists the purpose of the invention. The inventor has to answer the question: Why the
solutions available before the invention were not fully
E. 3.5 Step 5: Describe the field / application area satisfactory?
The inventor has to describe the scope of the invention in 1) Criteria for success
simple terms, avoiding jargon as much as possible. In this The inventor has to describe problems in the previous
step the writer has to answer the question: What is the scope solutions that motivate the creation of the invention. This has
to be done in simple terms avoiding jargon as much as K. Step 11: Describe each picture individually
possible. The writer has to produce at least half a page The inventor has to write a text describing each figure
response, being quite verbose in response to the question. individually. This text is only to describe the figure itself, and
Sentences have to have a clear subject, without using how the figure should be interpreted and what the figure
synonyms for the subject, and without using pronouns for the shows.
subject.
1) Criteria for success
2) Criteria for failure The inventor has to produce one independent paragraph
Text is not clear. The inventor is too laconic, e.g.: giving describing what each figure represents and which elements
single line answers. The inventor uses several different are indicated in the figure. Use numbers in parenthesis to
synonyms for the subject in different sentences, to a point it is associate the names of its elements in the figures indicated.
not clear if it is the same thing or not. The text uses pronouns That is, the text should use the convention name (number) to
for the subject. The invention is quoted. Problems that also associate the elements with the figures where these elements
exist in the invention are quoted. are described, following the table generated in the previous
I. Step 9: Develop a set of figures step.
The inventor has to prepare the figures to be used in 2) Criteria for failure
describing the invention. Describe the operation of the invention rather than
describing the contents of the figure. Describe more than one
1) Criteria for success
figure in the same paragraph. Not describing all items shown
Simple figures, black and white, no shades of gray. Parts
on a figure.
of the figures should be clearly visible, indicated by numbers.
Avoid using text, perhaps with the exception of histograms L. Step 12: Describe HOW the invention solves the
(that can have text). Figures should describe only one object, problem
not multiple unrelated objects. Essential features of the The inventor has to answer the following questions: How
invention have to appear in one or more visible figures. does the invention solve the problem? How this way of
2) Criteria for failure solving the problem differs from previously available
Figures are complex, colorful, with many shades. Some solutions? What are the features of the invention that make it
parts are difficult to identify or are not displayed in any different from the solutions previously available?
figure. Figures make abundant and unnecessary use of text. 1) Criteria for success
Figures contain various objects unrelated to each other. Describe clearly how the invention solves the problem.
Figures contain unrelated details and independent objects The text uses simple terms, avoiding jargon as much as
indicated by the same number. Essential items for describing possible. The writer has to produce at least half a page
the invention are not shown in any figure. response, being quite verbose about how the invention solves
J. Step 10: Create a list of names / numbers the problem. Sentences should have a well identified subject,
always using the convention name (number) so that the reader
The writer has to make a list associating names to each of
can identify objects in pictures.
the items shown in the figures.
2) Criteria for failure
1) Criteria for success
Confuse text, not clarifying how the invention solves the
The writer has to make a table where each numbered item
problem. The inventor has to avoid being laconic, e.g.: giving
appearing in a picture, has a name that will always be used to
single line answers. Several different synonyms are used for
name the feature corresponding to the number.
the subject, violating the convention name (number).
Element_Number Element_Name
Pronouns are used for the subject, violating the convention
Element_Number Element_Name name (number). The text describes the advantages of the
invention, rather than describing only the differences.
This table is for use during writing and will not be part of
the patent itself. It serves only to be used as a reference by the M. Step 13: Describe the advantages of the invention
inventor/writer, not as a part of the submission. The inventor has to answer the question: What are the
If the same element is appearing in different figures it may advantages provided by the invention? Why is the invention
have different numbers. One way of doing this is to use four better that the solutions previously available?
digit numbers where the first two digits indicate the figure
and the last two digits represent the element itself. For 1) Criteria for success
example, the numbers 0107 and 1507 could represent the The text clearly describes the advantages provided by the
element number seven in figures 1 and figure 15. invention compared to previous solutions. The description is
provided in simple terms, avoiding jargon as much as
2) Criteria for failure possible. The writer has to produce at least half a page
The same number is used for different elements. Used response, being quite verbose about what are the advantages
numbers are not shown in the figures. Different names are of the invention. Sentences present a clear subject, always
used for the same number. using the convention name (number) so that the reader can
identify objects in pictures.
2) Criteria for failure
 Confuse text, without making clear what are the subject, violating the convention name (number). Pronouns
advantages provided by the invention. The inventor has to are used for the subject, violating the convention name
avoid being laconic, e.g.: giving single line answers. The text (number).
uses several different synonyms for the subject, violating the
Q. Step 17: Identify other ways of practicing the invention
convention name (number). Pronouns are used for the subject,
violating the convention name (number). Answer the question: Is there another way slightly
modified to make the invention? What would a competitor do
N. Step 14: Relate the advantages to new features to enter the market proposing something a little different?
The writer has to answer the question: how the advantages Describe a complete example of this new form as the previous
provided by the invention (step 13) are related to innovative example. Note that new figures may be necessary.
features (step 12) of the invention? How the novel features of 1) Criteria for success
the invention provide the advantages that the invention The inventor has to clearly describe other examples of full
provides with respect to previously existing solutions? operation of the invention, including small modifications to
1) Criteria for success make the most comprehensive protection. Do not forget to be
To clearly describe how the advantages provided by the quite verbose about variations around the general idea.
invention with respect to previous solutions relate to the Sentences a clear with subject, always using the convention
innovative characteristics of the invention. The description name (number) so that the reader can identify objects in
uses simple terms, avoiding jargon as much as possible. The pictures.
writer has to produce at least half a page response, being quite 2) Criteria for failure
verbose when relating the advantages of the invention as If any competitor is able to practice the invention in a
derived from the innovative features. Sentences with clear slightly modified way to suppress at least one of the features
subject, always using the convention name (number) so that listed as essential, the inventor has failed to achieve
the reader can identify objects in pictures. protection. Confuse text, without clear additional examples of
2) Criteria for failure application of the invention (including modifications). Several
Confuse text, not clarifying how the advantages provided different synonyms are used for the subject, violating the
by the invention with respect to previous solutions relate to convention name (number). Pronouns are used for the subject,
the novel features of the invention. Several different violating the convention name (number).
synonyms are used for the subject, violating the convention
R. Write generalizing conclusion
name (number). Pronouns are used for the subject, violating
the convention name (number). Write a completion generalizing to be added to the end of
the specification. The goal is to explain that simple equivalent
O. Step 15: Describe the status of disclosure modifications still correspond to the invention.
The inventor has to answer the question: The invention 1) Criteria for success
has been disclosed and/or marketed previously? On which Describe in a few short phrases that the examples do not
date the disclosure has occurred? have a goal of limitation, but they have illustration purposes.
1) Criteria for success Explain that the invention can be practiced with equivalent
A clear answer to the question must be provided. forms and provide a simple list of other similar small changes
2) Criteria for failure that could be made without characterizing a different object
Not knowing how to answer the question, or have publicly with respect to the invention.
disclosed the invention more than a year ago. In this case 2) Criteria for failure
there are nuances, it is necessary to ask for clarification. Failure happens by forget to list some form of simple and
obvious generalization that is not present in any form in the
P. Step 16: Describe a complete example
text of the patent.
The writer has to answer the question: Describe a
complete example of operation of the invention. What is the S. Step 19: Write derived claims
invention? What the invention needs as input? How it works? It is desirable to write additional derived claims of the first
Illustrate the working cycle: beginning middle and end. If claim (made in step 3) by adding the features listed in step 2.
additional illustrations are necessary, add the figures. Write a sequence of derived claims from the pervious claim
1) Criteria for success by adding one-by-one (i.e. a characteristic by claim) the
The text describes clearly an example of full operation of essential and additional features listed in step 2. This set of
the invention. Many countries require an example as a derived claims will have the form:
prerequisite to patentability. It is important to be quite 2nd. "NAME OF INVENTION" according to claim 1,
verbose when describing the example. Sentences must have a characterized in SECOND added feature.
clear subject, always using the convention name (number) so 3rd. "NAME OF INVENTION" according to claim 2,
that the reader can identify objects in pictures. characterized in THIRD added feature.
2) Criteria for failure
1) Criteria for success
Confuse text, not describing a full example of application
Each claim consists of just one sentence. The phrase
of the invention. Several different synonyms are used for the
corresponding to each claim is well designed and makes
sense. All of the claims using names following the convention 1) Criteria for success
name (number). There is no claim containing extrinsic The claim consists of just one sentence. The phrase is well
characteristics. All claims have distinct claim numbers, and written and makes sense. The claim uses names following the
the claims are numbered in sequence without skipping any convention name (number). The claim does not contain
sequence number. extrinsic characteristics.
2) Criteria for failure 2) Criteria for failure
Some claim has more than one sentence. Some claim is a The claim is composed of more than one sentence. The
phrase that makes no sense. Some claim is using pronouns phrase is not well written and does not make sense, and it is
instead of names. Some claim contains extrinsic possible to see that the change of nature has made the text to
characteristics. There are claims with the same claim number. lose its coherence. The claim does not use proper names
The sequence of claim numbers skips one number in the following the convention name (number). The claim contains
sequence. extrinsic characteristics.
T. Step 20: Write figure-inspired claims V. Step 22: Write the invention description section
The inventor can write additional claims detailing The inventor has to produce the description of the
components of the invention. One way of doing so is just to invention according the invention description section template
add the structural definitions of components as shown in the presented in [2]. Using the texts developed in the previous
figures. The basic idea is to paste the description of a steps, the inventor has to cut and paste these texts in the
component to form a derived claim, as for instance: placeholders in the template [2].
n. "NAME OF INVENTION" according to claim ###, 1) Criteria for success
characterized in that the X component is composed of full Producing a seamless text, that causes the impression that
paragraph about the figure describing the component X it has been written as a whole. Erase all text markers that were
(modified such that that the claim has only one sentence and part of the initial template.
it makes sense).
2) Criteria for failure
1) Criteria for success Producing a text extremely non-homogeneous, that
The claim consists of just one sentence. The phrase is well appears to be a collage of completely independent parts.
written and makes sense. The claim uses names following the Forgetting to delete some of the text markers that were part of
convention name (number). The claim does not contain the initial template, making it clear that edition was not
extrinsic characteristics. The claim incorporates the elements careful and there are pieces of text that are not part of the
described in figure which describes the structure of the patent, but part of the template.
component.
2) Criteria for failure W. Step 23: Write the claim section according to template
The claim is composed of more than one sentence. The The inventor has to write the final version of the claims,
phrase is not well developed and does not make sense, and it by pasting the claims produced in prior steps in the template
is possible to see that the addition of the sentences of the model of the claims [2].
paragraph into a single phrase has caused the text to lose 1) Criteria for success
coherence. The claim does not use proper names following First claim is fairly general (short text with few words).
the convention name (number). The claim contains extrinsic The set of claims contains a large number of claims, which
characteristics. The claim does not incorporate the elements are derived by adding details gradually. Few independent
described in the paragraph that describes the structure of the claims are provided. Claims are numbered in sequence
component. The claim mentions the figure explicitly. without skipping any numbers.
U. Step 21: Write claims of different nature 2) Criteria for failure
Additional claims can be written by changing the nature First claim is too specific (too much text). The set of
of the invention. The inventor can claim the invention as a claims contains too many independent claims, which do not
method, algorithm, etc. For this purpose, the following mention any other claim. Claims are numbered out of
structure can be used. sequence, skipping numbers, or referencing claims with
n. "METHOD TO NAME OF INVENTION" higher number. Different claims with same claim numbers.
characterized by ESSENTIAL FEATURES (steps 2 and 3, The claims have circular references, forming loops of
first claim), wherein the method is implemented in the form references among the claims. The text markers that were part
of an integrated circuit. of the initial template are not properly deleted, making it clear
The nature of a “method” can not be patented in some that edition was not careful and there are pieces of text that
countries, where this is not directly patentable matter. are not part of the patent, but part of the template.
However, the fact of implementing the method in the form of X. Step 24: Create the figure section according the
an integrated circuit to claim makes the claim not to be template
directly about a “method”, but on an integrated circuit that The inventor has to complete the final version of the
implements the method. Thus, many patent offices will
figure section by pasting the figures in the figure section
consider that this claim is legal and admit it as patentable template [2].
matter.
 1) Criteria for success IV. SOME ADDITIONAL ADVICE
The figures have to be correct when printed (review the This section provides some additional advice to
final print, to be sure that everything is visible). Figures have understand how to pursue patent application.
to be numbered in sequence without skipping any numbers.
Figures have to present clear and correct information, with A. Difference between patents and papers.
elements specified in a clear and correct way and well visible Patents are different from papers in several aspects. A
in the figures. paper has the goal to report scientific advances, normally by
2) Criteria for failure formulating a hypothesis, proposing an experiment to test it,
A subtle error that can occur when making the copy and executing the experiment, collecting data and analyzing the
paste of figures in the figure section template is the relative data to judge the hypothesis. A patent is aimed to describe an
displacement of the signaling elements relative to the figure object or a process to produce an object that presents
itself. This can happen when the indication of elements was advantages with respect to previously existing objects (or
drawn as floating lines and text boxes on top of the figure. processes) with the same finality. Even if a fundamental
Test the final printing to avoid this. Figures numbered out of requirement of patents is novelty, this novelty has not to be
sequence, skipping numbers. Distinct figures with same proven in a scientific way (as in a paper). The patent text has
figure numbers. Distinct elements have the same numbers only to describe clearly the invention, giving support to
(either in the same figure, either in distinct figures). The text understand what is claimed as new.
markers that were part of the initial template are not properly B. Patents are made of words and drawings
deleted, making it clear that edition was not careful and there
are pieces of text that are not part of the patent, but part of the Even if it is an obvious thing to say, it is important to
reinforce that patents are made of words and drawings. The
template.
implication is that nothing more than words and drawings are
Y. Step 25: Write the abstract according the template necessary to produce a document that can be applied (and
The inventor has to write the final version of the abstract granted) as a patent. That means that it is possible to apply for
directly in the abstract template [2]. patents on inventions that can be described with words and
drawings as early as possible, even during specification
1) Criteria for success
phase. This means that patents can be pursued long time
The abstract serves mainly for indexing purposes in patent
before having a product ready to be sold.
databases. It does not give legal value to the scope of patent
protection. The success of abstract writing is simply to C. Where to find more information
describe the type of object that the patent protects in one or If you do not know nothing about patents read [3, 4], if
two paragraphs. you want to write yourself read also [5]. It is worth to think
2) Criteria for failure about a strategy [6] to harvest [7] patents if you want to make
If the abstract is very distinct from the invention, the profit [8] from innovation. Engineers and Scientists [9] must
examiner may request to rewrite, which is a waste of time in convince themselves that well written claims [10] are
the patent application procedures. Forgetting to delete some important in the case of litigation [11]. Patents are important
of the text markers that were part of the initial template, for open source and free software licensing [12, 13, 14], even
making it clear that edition was not careful and there are if software patents are sometimes misused [15, 16]. It is
pieces of text that are not part of the patent, but part of the important to notice that writing papers [17] is different from
template. writing patents.
Z. Step 26: Finalize and review all content D. Review your final document for coherence
After completing the prior steps, the inventor has to The part of the patent that has legal value is the claim
review all content and correct possible errors or pending section. The legal value of the patent will be determined by
issues. If revision is completed without finding any error that the content of the claims, interpreted with the help of the
needs to be corrected the work of writing the patent is descriptive report. One very important point to check is to
finished. Now is just a question of applying it to the patent verify if the terms used in the claims is supported by the
office. descriptive report. Terms used in the claims should be defined
1) Criteria for success and explained by the descriptive report. It is not possible to
The inventor has printed descriptive report, figures, claims claim something that has not been described in the main text
and abstract. Then inventor has reviewed all content and in the patent, and this is a very important check for beginners.
confirmed that no changes and corrections are necessary. Also, the choice of the words to be used in claims is
Apply the patent with the local patent office. important. A resource for a wise choice of words to be used in
claims is a dictionary of the usual meanings that words take
2) Criteria for failure when claims examined during litigation [18]; this book
Failure happens when errors are found in the final provides a very useful set of alternative constructions of
versions. A different form of failure is to put the text of the words and phrases used in the writing of claims.
patent in a drawer and not apply it as a patent, after all the
effort spent on the writing.
V. CONCLUSIONS [8] Bruce Berman (Editor). Making Innovation Pay: People
We have presented a 26-step procedure to instruct Who Turn IP Into Shareholder Value. Wiley, 2006.
inventors on how to write their first patent. For each step, the [9] Howard B. Rockman. Intellectual Property Law for
criteria for success or failure are listed, so that first time Engineers and Scientists. Wiley-IEEE Press, 2004.
writers can correct their applications by themselves. This [10] Ronald D. Slusky. Invention Analysis and Claiming: A
method has been used to instruct more than ten inventors to Patent Lawyer's Guide. American Bar Association,
successfully produce their first application. This method is 2007.
being taught in both graduate and undergraduate courses. [11] Daniel Slottje. Economic Damages in Intellectual
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