‘A welcome and serious effort to demystify the exercise of drafting a patent’

Book review: A Practical Guide to Drafting Patents 

2nd Edition | 2023 | Gwilym Roberts | ISBN: 978-0-903932-73-8 | 180 pages

A Practical Guide to Drafting Patents can be purchased on the CIPA website, www.cipa.org.uk/product/a-practical-guide-to-drafting-patents


Gwilym Roberts’ guide to drafting patents is an excellent resource for those learning to draft and an entertaining read for more experienced patent attorneys.

I went on a skiing holiday with A Practical Guide to Drafting Patents and the autobiography of the West-Indian Cricketer Michael Holding. It is a testament to Gwilym Roberts that I finished his book first, and laughed more reading it.

The first edition of A Practical Guide to Drafting Patents was released in 2006 – a bumper year for drafting manuals, also featuring the publication of Paul Cole’s Fundamentals of Patent Drafting. No doubt the first edition suffered from this glut of guides, especially given that all student members of CIPA were sent a free copy of Fundamentals of Patent Drafting. Thus, despite sitting the drafting examination in 2007, I was unaware of the book until the recent publication of the second edition.

The update to this book is welcome. As time passes drafting styles change and A Practical Guide to Drafting Patents offers an up-to-date carefully considered assessment of each part of a patent, with tips, techniques and host of examples to demonstrate what becomes second nature to the experienced patent drafter and can therefore be difficult to teach.

A Practical Guide to Drafting Patents is exactly what it sets out to be, a really nicely written, clear and an impressively comprehensive explanation of the art of drafting in 161 pages. It has been added immediately to our firm’s standard reading list and would be a sensible addition to any IP firm/department’s library.

The approach of A Practical Guide is that when drafting, one should be considering both ‘the validity people’ and ‘the infringement people’, looking to find the right balance to satisfy both. Virtually every point is supported by an example, with the examples frequently displaying Gwilym’s own inventiveness and wit; take for example a simple lesson on support in the description for claim wording. Gwilym provides us with an example of a child’s toy comprising a bat and ball, gives us a dependent claim to the bat taking the shape of an animal, with no corresponding wording in the description, and explains that this can be simply remedied by incorporating the wording from the claim into the description. This is hardly likely to excite those of us reading the book as a refresher, but Gwilym keeps our interest with a quick comic aside that the bat ‘could for example be shaped like a bat, but this would raise complex issues of interpretation.’

Amongst other things, I was very pleased to see the book advocating a specific description that is a specific description of an embodiment; I had been starting to think I was out of date and ought to be following the (rather ugly) practice of a specific description written in conditional language, almost just repeating the statements of invention and the claims, just with some reference numerals. A Practical Guide to Drafting Patents, reassures the reader that this is not necessary, at least not in light of the laws of the major jurisdictions.

I was also interested by the comment that ‘there is zero point in having a set of SoIs that just repeat the claims word-for-word’ – this is surely true and makes it easier to draft and easier for the inventor to read. Yet that was the only place I saw fit to put a note in the margin – in the battle against accusations of intermediate generalisation, and with fees limiting the number of claims one can include, I’m advocating plentiful long-form SoIs to ensure all possible future claims are covered, not just the 15/25 best ones that make it into the final claims.

Of course, the response is that in theory the perfect set of dependent claims will do the job and armed with the lessons of A Practical Guide to Drafting Patents our dependent claims should reach perfection!

The view from a new entrant to the profession, six months into the job and 27-pages into the book is consistent with mine: it is easy to understand, the examples are helpful, and it brings clarity to the daunting task of drafting patents.

Mark Jolly (Fellow), Wilson Gunn

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