A patent application consists of two basic parts: the Specification and Drawings.  The purpose of the specification is to provide a description that will enable any person skilled in the art of the invention to make and use it.  The specification concludes with one or more claims distinctly pointing out the subject matter that the applicant regards as his or her invention.  Drawings (including tables, equations and flow charts) may be used to provide a better understanding of the subject matter on which a patent is sought. 

That sounds like a simple, straightforward exercise but it has in it an assumption which may not apply in a real world setting – that the people who read it will have the training and experience necessary to understand it.  The people include patent practioners (i.e. patent agents and attorneys), patent examiners and members of the public.  Theoretically and patent application needs to be written so that another person of “ordinary skill in the art of the invention” can read it and understand it. 

Patent practioners and patent examiners are normally required to have at least an undergraduate degree in the natural sciences so that they will be "of ordinary skill in the art".  This education and training, however, does not adequately prepare them for inventions in the financial disciplines, such as insurance.  It is unlikely that either the patent practitioner handing an application in the financial services area or the patent examiner reviewing the case will have a degree or much expertise in any financial discipline.  This places special burdens on applicants (e.g. inventors) to make sure that their patent specifications meet the needs of the people who are likely to read them.

Drafting Options

Applicants have a number of options when drafting a patent application each with its own set of perils.  They may, for example, draft the specification description themselves thinking that no one knows their invention better than they do.  However, this intimate knowledge of how their invention works may cause them to leave out information necessary for another person, skilled in the art, to make and use their invention.  That is, they may assume knowledge of pieces of their invention that should be spelled out. 

Applicants may rely on a patent practioner to draft their specification descriptions.  If the patent practioner is well versed in the subject matter of the invention, this may work well as such an expert patent practioner will develop an understanding of the applicant’s invention through discussions with and review of materials produced by the applicant.  The expert patent practioner can then draft an accurate and complete description of how to make and use the invention suitable for a person of ordinary skill in the art of the invention.       

But as we’ve said above, it would be unusual to find a patent practioner with skill in the subject matter of patent applications typically filed in the insurance and broader financial services areas.  Not only are they rare, they may already “be taken”.  See the Q&A feature in this issue of the Bulletin for why this may be.  As a result, the inventor’s patent practioner may not be the best interpreter of the invention and, therefore, not easily capable of providing a description from which the invention could effectively be made and used.  They also may simply not have enough background to see where there is important information missing or in error.  

In addition, since a high percentage of inventors filing financial patent applications are amateurs themselves (relying on their own consumer experience with business methods in these fields as a basis for their development of better or new processes), an inventor may not be able to convey, even to his patent practioner, a full understanding of how his invention is uniquely different from prior art.   And, of course, the likelihood that the patent examiner may not have such skill either further complicates the situation and sets up a long and frustrating patent examination process.

Our suggestion is to approach the drafting of a patent application as you might the writing of a text book.  By this we mean draft the specification description in order to educate the reader.  Start with very basic principles and a very basic understanding of the underlying art.  Assume that the patent examiner who will be the first to read and evaluate your effort has little or no prior knowledge on the subject matter of your invention – as this is often true in the insurance and financial services disciplines.

A Basic Form

A good form to use for the specification is to first define the field of the invention so that a reader of the description will be able to tune in for a better understanding of what comes next.  Then provide background that will be necessary to a better understanding of how the invention works and in a summary describe, on an overall basis, how to make and use the invention. Finally, fill in details of the various essential parts of the invention referring to any drawings provided to enhance the description.  Of course, the specification always ends with one or more claims drawn from the description provided.  Since the claims require some precision and conformity with a jargon that has developed over many years, it is usually best for claims to be drafted by a patent practioner.  As is typical, however, claims usually undergo revision during the examination process so it is important for an inventor to work closely with his or her patent practioner to assure that nothing important is lost during the revision process.  Since most financial service inventors are new to the patent process, they should expect to spend a fair amount of time learning the requirements of claims so as to be sure that their invention is properly described.

It may be helpful to engage an outside consultant who is skilled in the art of the invention to review or even help write the specification description.  This will assure, at least, that the description will be understood well enough by a person of ordinary skill to make and use it.  Also, remember that to make the examination process as efficient as possible very little should be assumed – everything for which a specialized knowledge would be required for an understanding should be explained and defined.  If you create a description that starts at the beginning and gradually builds on the facts, information, and clear definitions provided, you will have created an instructional text the examiner will find easy to read and comprehend.  Therefore, any questions or objections raised by the examiner will be based on a clear understanding of what your invention is intended to be and the examination process will become much more efficient.