Brief:
We are starting a new series of articles titled "How To Write A Patent". We have deliberately kept the scope as exploratory rather than a fixed set of lessons. Please send us your comments at hbs.law@gmail.com. We will not hesitate to change lesson plans based on your advice which is most welcome. The first lesson is below. Here we go!

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Disclaimer: If you have an invention that you want to patent, we give you only one piece of advice - Contact a qualified and experienced patent attorney or agent in your country. A list of such people is available on national patent office websites - (India: http://www.patentoffice.nic.in/ ; US: http://www.uspto.gov). These trained professionals are licensed to provide patent protection. Writing a patent is no trivial job, hence leave it to experts. We accept no responsibility and make it clear that anything on this site is NOT legal advice and should not be taken so. This material is for general awareness and for licensed patent practioners to enhance their skills.

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Lesson 1: Thinking About the Invention

Motivation:
The basic tennet of patent law is that all inventions are not patentable. To simplify, only inventions that are Useful, Novel and Non-obvious are patentable provided some other conditions are satisfied. Hence, every writer of a patent is faced with the basic question what exactly is the invention that I should be focussing on to write a patent about. The inventor, who usually is an expert in his or her field, may have a different view of what an inventions means. It is patent writer's job to gently bring out information from the inventor as to what are the features of an invention that make the invention a patentable invention. Next, we try to explore what are major things the patent writer should be looking for before wring the patent application.

Humility Helps:
First and foremost, a patent writer should get aware about the technical field to which the patent application at hand relates to. Patent writer should realize (for his/her and also client's benefit) that their technical knowledge is quite limited. Hence, it is important that the patent writer read and ask the inventor or another expert to educate them about the field of the invention. Also, a patent writer should broadly venture only in the fields of his knowledge, an electronics background patent writer trying to write the first biotech application would be a little adventurous act.

It All Began When I Was Trying To Do...:
After becoming aware about the technical field, the patent writer should study the problem that the invention is trying to solve. This is the most crucial aspect of background preparation. Talk to the inventor and do not just rely on the written invention disclosure to understand the problem that the inventor was trying to solve. A sanity check is whether you the patent writer can summarize the problem the invention was trying to solve in 5-6 sentences to the inventor. If the inventor agrees, you have got a starting point!

Become a "noted" Patent Writer:
Next step is to start making notes. You cannot possibly remember everything the inventor tells you. Hence, either tape-record the inventor interview for later review or make extensive notes during or just after the interview. Inventors are helpful people and not your adversaries. The worst thing you can do is to demoralize the inventor by indicating that the invention has many flaws. It is the patent office's job to determine if the invention is patentable or not. Hence, unless you have a compelling ethical reason otherwise, remember that you are telling the inventor's story.

I Know All the Answers, Just Give Me The Questions:
The cheat-sheet of inventor questions is below:

Did you do any similar work before?

How did this problem come to your mind?

Any similar efforts in the field (don't dig too much here)? How was your effort different from those?

Break-up the problem into parts. For example, let's assume that the invention was a valve that blocks the fluid flow in one direction and also performs filtration and automatic sludge removal. Then do ask the inventor to breakup the inventive features. "Oh so your invention has multiple features, the valve does the conventional one-way fluid flow, but it performs two other functions:
(1) filtration and (2) automatic sludge removal". "So was there a valve that did only filtartion but not sludge removal before?". "Yes, but automatic sludge drainage was not present in such valves and the sludge removal process required the flow to be stopped for cleaning". (Great pin-pointing of novelty).

Make a careful note of terminology used by the inventor in describing the invention. This will be your working dictionary and thesaurus for writing the specification. Also, try to use the inventors words during the discussion and not substitute his/her words with your own. Bad idea: "But why don't you call the handle a control bar, the bearing a friction reducer...". Use your language skills while writing broad claims, but while talking to the inventor, use his/her terminology.

As far as possible ask the inventor for a written document about the invention. It can be in loose form such as working papers, set of notes, internal tutorials, etc.

Let's know your comments at hbs.law@gmail.com !