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How Not to Draft a Patent Application

By Raymond Russell

Imagine the following hypothetical scenario. As a patent practitioner, you are given an invention disclosure and asked to prepare a utility application by the end of the week. Unfortunately, the inventor is out of town on business and is unavailable. The invention disclosure includes a one-page invention report, with a few paragraphs giving a basic description of the invention, which is a combination office heater/trash disposal device. The disclosure also describes when the product is expected to be on the market, and includes some sketches of a prototype. There is no description of similar products or related patents, and no examples of data demonstrating effectiveness. After conducting a short, informal search of the art, you draft the application. The specification describes the embodiment shown in the sketches, but the claims are broadly drafted to cover a variety of heater/trash disposal devices. The invention disclosure did not describe any advantages provided by the new device, so none are described in the application.

While the above hypothetical is certainly a less than ideal situation, it is not unusual. Patent drafters must often write a patent application based on minimal disclosure. Some practitioners take pride in their ability to do so. However, several recent landmark court cases have substantially increased the risk that a patent drafted in this manner will be unenforceable.

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