Chapter 6: Drafting the Specifications

chapter 6 white space patenting book

VI: DRAFTING THE SPECIFICATION

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As set forth in the Manual of Patent Examining Procedure (MPEP), a patent specification application should include title, priority statements, background, summary, brief description of the drawing, detail description, and abstract. Although these items are listed here in the order in which they usually appear in the specification, that is not the order in which they should be drafted. After the claims are written, the best order for drafting a specification is summary of the invention, followed by abstract, title, background, and then brief description of the drawing, and finally detail description.
Draft the claims first.There is a method to the madness. The Summary of The Invention should be drafted immediately after drafting the claims because the summary is basically just a rewording of the claims in ordinary English (as opposed to the stylized claim language). The abstract should be written next because it is just a short recitation of the summary. The title is an even further distillation of the abstract, and should probably be drafted next, even though almost everyone has a working title long before the claims are even written.
It is only after writing the claims, the summary, and the abstract that a patent drafter should even begin drafting the background. This is because a well-crafted background section is merely a sales pitch. It forces the reader to conclude that problems exist for which there are no good solutions, and that any solution would therefore be non-obvious. A patent drafter cannot effectively write that story unless he knows where it is going to end up, which will of course turn out to be the utter brilliance of the invention being claimed. In short, the background section should only discuss issues that create a straw man problem for which the invention is the solution. And the most effective way to do that is to write the background after writing the claims, summary, and abstract.
The brief description of the drawing and the detailed description sections are written last because they are focus on particular embodiments of the claimed subject matter. By having previously written the claims, summary and background, the attorney avoids falling into the trap of describing the