We had the honour of representing Osgoode at the 2021 USPTO National Patent Application Drafting Competition. The competition gave us, as well as our teammates, Yueyang (Vivian) Liu & Ding Han, the opportunity to experience first-hand what it takes to draft a patent.
We were given a hypothetical inventor’s disclosure, which this year involved a collision avoidance helmet. The disclosure provided information on why the invention was created, what features it included, and drawings of the invention. Although the disclosure provided a lot of information, it was challenging at first to sort through all the details and determine what was relevant for the invention. There was also the added challenge of the inventor not being a real person who we could call ask to explain certain aspects in more detail or discuss why a certain feature was included. We’ve since learned that the real world of patent drafting requires a lot more client interaction to make sure everyone is on the same page.
Fortunately, our two excellent coaches, Paul Blizzard and Denver Bandstra from Bereskin & Parr LLP, helped us along the way. They made the competition much more approachable, helping us know where to start, and giving us the “dos” and “don’ts” of patent drafting. They helped us figure out a roadmap, starting with a prior art search and then focusing on claim drafting. To conduct our prior art search, we pulled out all the key features of the invention and used these as keywords to find the relevant prior art. Although we were confident that we had a workable list of related keywords for our prior art search, we were surprised to find a lot of prior art that shared our invention’s features. In fact, one prior art reference had almost all of the features of our invention. This prior art reference consisted of an augmented reality motorcycle helmet with comparable audio and visual systems, capabilities of contacting emergency responders in a collision, and even the option to add full or partial brake control to prevent a collision. Consequently, this really limited our claim drafting strategy as we had to keep the patent requirements of novelty and obviousness in mind.
In drafting our claims, we decided on three independent and seven dependent claims. The independent claims consisted of an apparatus, method, and system claim. Admittedly, our first attempt at claim drafting was very naive. We used terms such as ‘helmet’ and ‘camera’, which we later learned were restricting as they didn’t account for the non-helmet and non-video features of our invention, respectively. We also made the mistake of claiming features that other inventors could easily work around. As such, in our first few meetings with Paul and Denver, we focused on refining our claims to make them broader. We also focused on identifying the point of our invention. That said, during our next few attempts, we wanted to root the claims in what we believed was the most novel and non-obvious feature of our invention: the ability to accelerate and decelerate in the event of an impending collision. Or, as we fancily called it, ‘positive and negative acceleration’.
We decided to include this feature in our independent claims. For example, in our method claim, we drafted a step-by-step approach wherein the cameras and sensors of the wearable headpiece (the broader term for helmet that we decided on) would detect a threat object and subsequently engage breaks or the electronic power assist to provide positive or negative acceleration in the event of an impending collision. In our system claim, we drafted a circuitry wherein a control signal would be transferred from the receiver to the transmitter by the processor – all of which were embedded within the wearable headpiece – to do the same. As for our dependent claims, we included less important features of our invention which served to invalidate a subsequent invention should it successfully go through the independent claims without infringing. Overall, our independent claims varied in scope and content in order to strike a balance between honouring our inventor’s vision and gaining as wide protection as possible.
While we experienced great relief upon submitting our patent application and a sense of joy after conquering the tediousness of claim drafting, we went to the virtual regional rounds ready for questioning; sure enough, we were challenged on the narrowness of some aspects of our claims. All this to say, this experience taught us that the claim drafting process is never-ending, but that’s okay. Different people will have different approaches and viewpoints and there is no one perfect claim. We tried, and we are extremely proud of our growth in just a few months. Not to mention, we did this all virtually for the first time ever.
We encourage anyone interested in patent prosecution to try out for next year’s team. It’s a challenging but extremely rewarding experience!
Written by Maddie Lynch and Eloise Somera.
Maddie is a second year JD candidate at Osgoode Hall Law School. She is a contributing IPilogue editor, Intellectual Property Journal editor and IP Innovation Clinic Fellow.
Eloise is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.