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Intellectual Property

Patent Drafting

The claims and description written into a patent application decide what the patent will cover for its whole life. Patent drafting is where most of the value is either captured or left on the table.

Reviewed

01 GUIDE

Patent Drafting: what usually happens

Claims and the description behind them

The claims set the legal boundary of the patent, and the specification has to describe the invention well enough to support those claims and to let someone skilled in the field make and use it. A claim broader than the description supports is vulnerable later. Drafting usually includes a range of claims, from broad to narrow, so that if the broadest claim falls to prior art the narrower ones may still cover the commercial product. Describing alternatives and variations gives room to amend during examination, since new matter cannot be added once the application is filed.

What the drafter needs from you

Good drafting depends on the inventor's detailed account of how the invention works, why it improves on what came before, and what variations are possible. Drawings, prototypes, test data, and code all help. Tell the drafter about competitors' products and the workarounds you expect others to try, because claims written with those in mind are harder to design around. Share the earlier references you know of, since applicants and those representing them owe the USPTO a duty to disclose information material to patentability.

Provisional drafts and who prepares them

A provisional application filed quickly can hold a date, but it supports later claims only to the extent it actually describes the invention, so a thin provisional may protect less than it seems. Preparing and prosecuting patent applications for others before the USPTO is limited to registered patent attorneys and agents, so ask about registration when choosing who drafts yours. At the start we talk about the timeline, which markets matter, how the claims will map to the product, and how much technical detail you can provide.

02 ATTORNEYS

Who you would be working with

Attorneys at our New York and Washington, D.C. offices handle matters like this one.

05 HOW WE WORK

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06 OFFICES

Where we meet clients

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Attorney Advertising. This page is general information about patent drafting and is not legal advice. Reading it does not create an attorney-client relationship. Outcomes depend on the facts of each matter, and prior results do not guarantee a similar outcome. Laws differ by state and change over time.