Here are some points to consider:

Pre-Drafting Considerations

  • Identify the core innovation

  • Assess novelty and possibly conduct a prior art search

  • Make sure that no aspect of the invention is disclosed publicly

  • Decide on first jurisdiction for filing: USPTO, EPO or others: USPTO is recommended

  • Consider Provisional Application if certain aspects of invention is not yet finalised

Specification Drafting

  • Clearly explain the background, technical problem and the solution provided

  • Define key terms and concepts clearly

  • Wear the examiner’s hat: make your explanations plain and easily comprehensible

  • Provide detailed embodiments, including different variations and implementations.

  • Include flowcharts, schematics, and diagrams if relevant.

  • Cover alternative approaches to prevent workarounds.

  • Disclose the best mode of implementation.

  • Key test: ensure a person skilled in the field can replicate the invention based on the description.

Claims Drafting

  • Start with broad independent method claims

  • Followed by narrower dependent claims. Use multiple claim types

    • method
    • apparatus
    • system
    • computer-readable medium
    • And others
  • Avoid unnecessary limitations that could allow competitors to design around the patent.

  • Draft claims to allow for continuations and future improvements.

  • Ensure the invention is difficult to design around.

  • Review the specification, if you spot holes re-draft specification

  • Review claims again keeping revised claims in mind

Emerging Challenging Inventions

AI, Software based and IoT inventions require exceptionally careful drafting to avoid rejections and Office Actions. Points to consider:

Specifications and Claims

  • AI inventions

    • should separate training and inferencing where possible
    • should always be tied to real world via sensors and hardware
    • cause some difference to an actual device
  • Software inventions must clearly define the novelty

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