How Important are Patent Illustrations?
How can good drawings maximise the value of an inventor’s patents?
First-rate patent illustrations are critically important, especially from Pankaj Desai’s point of view as Director of IP Services at Clarivate. “By meeting requirements, differentiating from prior art, and adding a level of clarity to a complex process, product or system that inventors are trying to highlight, drawings go a long way. In my view, they are a ‘must-have’ and not simply a ‘nice to have’, he shares with us.
“High-quality drawings add to the technical accuracy of a patent, which leads to enhanced clarity, allowing the inventors to distinguish themselves over prior art. The follow-on effect is that in turn, the examiner can spend less time reviewing the patent application. It expedites the prosecution process, which can save a lot of time and expense,” Pankaj adds. Getting patent illustrations right the first time around allows you to save time, effort and expense, reducing the cost of acquiring patents, making them more enforceable against infringers, and puts all competitors on notice to see if they are potentially infringing your patent. “High-quality patents also generate more revenue for the patent owners in terms of enforcing them via litigation or licensing them,” explains Pankaj. In this article, he shares more on the importance of such illustrations and the options available for inventors in this area.
Are patent illustrations globally recognised?
This is actually a very important question to consider because, in fact, each country and jurisdiction has very specific requirements that do not always overlap. The implications of geography are one of the tricky parts of patent illustrations, which may not be apparent to all practitioners.
For example, if an attorney is strictly practising in the US, he or she may not be familiar with European or Chinese patent law requirements in terms of illustrations. This is where our team can provide a lot of value; we routinely work with multiple global jurisdictions and have developed nuanced familiarity with the various requirements, so we’re well-positioned to help clients get illustrations right, regardless of where they’re filing.
Quality illustrations are an important component of these detailed specifications, which patent attorneys spend a lot of time and effort drafting – because they help achieve both of these core objectives in one method.
What is the importance of a patent illustration in the patent specification?
To appreciate the true value of a quality patent illustration, it helps to first think about the overall context of the patenting process, which is fairly expensive and complex. There are two main objectives. First, you have to differentiate the invention that you are trying to patent from other existing, known inventions, which we refer to as the prior art. Your invention has to be novel and non-obvious from this perspective. The second objective is to make sure you meet all the requirements of the patent office, including describing in a reasonable amount of detail how a person of ordinary skill in that technological area will be able to make and use your invention.
Quality illustrations are an important component of these detailed specifications, which patent attorneys spend a lot of time and effort drafting – because they help achieve both of these core objectives in one method. Illustrations have the power to distil or capture the essence of a complex idea in a very simple, clear, unambiguous manner, which can effectively highlight details essential to your invention and put them in stark contrast to what came before, particularly when the differences may otherwise appear subtle or minute. A high-quality drawing allows you to capture that difference, very quickly and clearly. It can also help you meet those support requirements in a simpler, more effective way – as they say, a picture is worth a thousand words. Many times when you apply for a patent, the patent office examiners may briefly look or browse through your specification text, but just by looking at the drawings, they can immediately figure out what the invention is about and what the key differences are.
. But there are some commonalities we’ve noticed in working with organisations and inventors of all shapes and sizes: applicants tend to rely on patent practitioners (ie. patent attorneys or patent agents) for completing the full application, regardless of whether this is cost-effective.
How are applicants currently handling patent illustrations?
Different types of innovators tend to deal with illustrations in different ways. An academic, a solo inventor or a start-up company may take one approach, while practitioners in a more established corporate setting with a large volume of applications may rely on other methods. But there are some commonalities we’ve noticed in working with organisations and inventors of all shapes and sizes: applicants tend to rely on patent practitioners (ie. patent attorneys or patent agents) for completing the full application, regardless of whether this is cost-effective. Often, the applicant or inventor will go with the best attorney that they can find for their expertise in crafting claim and text language. When it comes to the illustration, the attorney may leverage the inventor’s existing “drawings” such as a block diagram, a flow chart of their idea, or process as they are because of the misconception that creating high-quality patent illustrations upfront can be time-consuming, tedious and add additional cost to the process. If the applicants are not patent savvy, illustrations become an afterthought tacked onto the application at the last minute, or worse, left off entirely. This is not best practice and can potentially undermine the time and resource invested in preparing the patent application.
Perhaps the worst scenario is poor drawings resulting in the introduction of technical errors into your application.
What are the risks involved in not submitting any drawings or submitting poor quality drawings?
Omitting drawings entirely or submitting poor ones clearly carries significant risk. To the best of my knowledge, most major jurisdictions require applications to have at least some version of drawings filed. Inventors, particularly early-stage start-ups or solo inventors, should beware that patent offices generally do not allow the subsequent submission of drawings. Once a new application has been submitted, adding ‘new matter’ and making adjustments or improvements to previous ones after you’ve filed your application is prohibited by law. The guiding principle is that you only have one shot upfront to get good quality, correct illustrations into your patent application, don’t waste it!
In that same vein, submitting drawings in an ‘as is’ condition can lead to all sorts of fundamental risks that no inventor likely wants to take, like introducing ambiguity around what you are trying to claim as your invention. Examiners may be hesitant to grant the patent quickly, if at all, and it’s likely there may be a considerable reduction in the scope and breadth of the claimed invention, reducing its overall value.
Perhaps the worst scenario is poor drawings resulting in the introduction of technical errors into your application. Those errors may be very difficult to fix at a later time and could result in not meeting the compliance requirements of the different patent jurisdictions.
Additionally, it’s worth noting that design patents have separate and additional compliance requirements.
What compliance requirements must the illustrations meet in order to be accepted?
Compliance requirements vary from jurisdiction to jurisdiction but in general, countries have very specific formatting and standard requirements, even down to the size of the paper, font size, margins, layout, labelling, and numbering. Lines used in diagrams must adhere to a specific thickness and style, along with the level and kind of shading. These nuances can be really burdensome for those who are unfamiliar with the requirements of a given jurisdiction.
For example, the patent office rejected the grayscale image in figure one above, for non-compliance. Also above (figure two) is the revised version our team produced, which was accepted. While the original image looks very nice by common standards, it is a poor patent illustration. Generated in colour using a fairly sophisticated architectural software tool that adds 3D effects to drawings, the image was later converted to grayscale to meet the requirements of the patent office. The grayscale version suffers from very poor contrast, lack of clarity, blurring and shadowing, leading to a rejection. We converted it to a simpler wireframe drawing in black and white where the demarcation between different objects is a lot clearer. The image looks very crisp and is of higher quality, which is what the patent office is looking for.
Additionally, it’s worth noting that design patents have separate and additional compliance requirements. For example, figure three, is a sample of design patent drawings for a drill machine. When you apply for a design patent, you have to submit a minimum of seven different views so the patent examiner can see the object from all standard perspectives. This is another very specific requirement which is easy to overlook.
How are design patents different from regular patents?
Regular patents are what we call utility patents and they are generally directed to the structure and function of a product or process that has been patented. These are the most common and prevalent ideas when people think of patents, though recently, design patents are becoming equally important. Design patents are directed only to the ornamental design or the aesthetics of the design. They do not relate to the function of the product. An uptick in design patents followed the famous patent dispute between Apple and Samsung in 2016, where the court held Samsung liable for infringing the patented design of the Apple iPhone. Since then, applicants see the value of filing for design patents, including it as an important piece of their overall patenting strategy. One advantage is that design patents are relatively cheaper than utility patents, with a respectively shorter process. They can also enhance the brand’s value by protecting against counterfeits and copycats.
Design patents have specific requirements (such as the aforementioned seven different views), but another critical thing to note is that any error that you make in relation to technical accuracy can be fatal.
How are patent illustrations for design patents different?
Design patents have specific requirements (such as the aforementioned seven different views), but another critical thing to note is that any error that you make in relation to technical accuracy can be fatal. There is very little room for error. There are also specific shading requirements. Looking at figure three, it has used a specific style of shading called line shading. Such shading captures a design when depicting a 3D object into a 2D medium when highlighting or accentuating the contours or the texture of the object.
How challenging is it for inventors to meet these compliance requirements?
You’re likely to get stumped by the drawing compliance requirements for utility or design patents if you lack the technical accuracy, familiarity with the process, and the tools needed to produce quality illustrations. For example, solo inventors and start-up companies tend to rely on hand drawings or illustrations produced with very basic software such as, Microsoft Word or PowerPoint. This could be acceptable for an informal drawing or initial submission, but these tools won’t allow you to meet the specific compliance requirements for your patent application. That said, this also applies to the other end of the spectrum. Some technical drawings are not always appropriate for the patent application process, even though they were created by an experienced, skilled person. The patent office is looking for a very specific type of illustration.
Another challenge we have noticed is that some inventors, especially in the chemical and biological area, conduct experiments on certain laboratory instruments which can generate a printout or drawing of their data, and these are often submitted as drawings. Frequently they get rejected, as they pose all sorts of problems. Heavy reliance on those lab instrument printouts is a challenge for inventors or ‘do it yourself’ applicants.
Depending on the complexity of the drawing, it can take from one to four hours to complete one drawing, with some applications containing 20-25 drawings.
In what ways can a professional help in these situations?
Professionals have what the applicants generally lack in terms of the right kind of technical background. Just as critically, they also have experience and expertise in dealing with the patent office rules and requirements in several jurisdictions, often including the US, EPC or Chinese (CNIPA) patent and illustration rules. Professionals also have access to different tools and software, such as ChemDraw (for chemical drawings) Visio (for drawing flowcharts) and the industry-standard AutoCAD (for complex machinery and devices and drawings that involve a high level of complexity). Finally, the professional will also have the ability to convert any type of image to the corresponding version that is acceptable by the patent office – whether it is sourced from architectural software or a lab instrument printout. Depending on the complexity of the drawing, it can take from one to four hours to complete one drawing, with some applications containing 20-25 drawings. It’s no small task, but getting it right can mean the difference between a valuable patent grant or a rejection.
If the costs for professional illustrations are out of reach for inventors, what are their other options? How can they ensure their illustration is good enough?
While professional illustrations are always your best bet, it’s not always feasible. Here are some basic tips to make sure your patent illustration is as good as you can make it on your own:
– Always file a version of the drawing, whether it is informal or hand-drawn images. Make sure to at least get something on file. If they get rejected by the patent office, you will have a second chance to make them right.
– Get familiar with the patent illustration rules and requirements for the country in which you reside, and where you intend to patent first. If you want to go global, familiarise yourself with the international patent rules under the PCT or EPC (European patent convention rules) and consider Mainland China, as the CNIPA has its own rules as well.
– If you have a higher budget and plan to file multiple patent applications in a given year, then invest in the right tools. Visio is affordable and effective, especially for patent processes and flowchart-type drawings. Tools like AutoCAD are pricier and come with a steeper learning curve, but do a great job.
– Set up an internal review process to raise quality. Some corporate patent applicants will set up a system for illustrations where junior colleagues or inventors get their drawings reviewed by an internal expert. A second pair of eyes on the drawing helps to make sure everything is correct. Some choose to set up an auditing process with an external expert or professional, so if you do not have the budget to have the professional prepare all the drawings, you can at least get them audited to save a lot of time, money and effort in the process. This can really provide added value while staying in budget.
About Pankaj Desai
Based in Mumbai, Pankaj Desai is the Director of IP Services at Clarivate, where he heads up the Global Patent Preparation and Prosecution Services team. Prior to joining Clarivate seven years ago, Pankaj worked as a practising attorney at a full-service law firm in Boston. He also has a Ph.D. in organic chemistry from the University of Kansas. Now, he helps clients power the innovation lifecycle from idea to commercialisation by providing key legal services to attorneys, in-house patent counsel, and inventors worldwide.
Pankaj Desai, J.D., Ph.D.
Director, IP Services
Phone +91 22 6229 1009
Mobile +91 98 1963 6938