Applying For A Patent? Tell A Good Invention Story!

What do Huckleberry Finn, Catcher in the Rye, and a well-drafted patent application have in common? They all tell good stories, of course! Telling a good story in a patent application is especially important for inventions in high volume areas, such as those that relate to healthcare. In these crowded areas, claims will commonly recite elements that are all already separately well-known in the prior art.

Telling a good invention story is one way to lay the groundwork for convincing the patent examiner that your invention is worthy of a patent. Sure, you can look to submit an affidavit to introduce your invention story during prosecution. But by then, the examiner will already have made at least a preliminary decision about what is patentable in your application. Why wait that long?

Including a good invention story is also useful beyond the examination context since patent applications are often used for marketing. For example, a startup company seeking investors will want to show non-lawyer venture capitalists a patent application that tells a good story. Also, by having a good story that uses normal descriptive wording instead of dry legal jargon, you improve the chances that your patent will be found by anyone searching the Internet for your area of focus, and who wouldn't want increased public awareness for their technology?

What types of information might you want to include in a patent application to best tell your story? And where should you include it? We will explore answers to these questions below.

Write a Good Introduction

Consider the following introductory sentences in a patent application:

"Various methods for making orthopedic implants are described."

"While fenestrated bone screws provide certain advantages to a patient with poor bone quality, screw weakness may eventually injure the patient. Processing techniques such as shot-peening or cold-working can enhance the strength of fenestrated bone screws."

Which application sounds more interesting to you? The first few sections of a patent application are your chance not to only pique your reader's interest, but also to convince your reader that you really have something that is new and important.

Describe the Inventor's Unique Appreciation of a Problem

Conventional wisdom may be that only the Europeans look at problems addressed by the prior art. U.S. practitioners, however, should also consider this issue, focusing on whether the prior art appreciated the problem solved by...