Tag: Patent Drafting and Claim Writing

Can Patent Quality be Measured?

Ask any patent attorney about patent quality and you will open a big discussion. Most of the time, you will hear the phrase “I know it when I see it”, or something to that effect.

There are some overt things that give a patent ‘high quality’. These things are things like good spelling, proper grammar, clear writing, and well done figures.

There are also the legally important aspects to writing a patent application, such as properly characterizing the invention, giving support for the claims, and good patent drafting skills.

Part of the intangible ‘thing’ about patent quality is whether or not the drafter appears to really understand the invention. With some patents, you can tell that the drafter was fishing around with no clear sense of direction and appears to be filling the page with words that somehow may relate to an invention. Other patents are clear, direct, and describe the invention in a way that you ‘know’ that they knew the technology.

But that really is not the most important part of patent quality.

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The Importance of an In-Person Disclosure Meeting, Even If It Is 8 Time Zones Away

I am writing this post from a faraway international airport, listening to a bad rendition of “Total Eclipse of the Heart” followed by “You Were Always On My Mind”, beginning a twenty-something-hour-long journey home from a set of patent disclosure meetings. I do not get fully reimbursed for my travel expenses, nor to do I get reimbursed for the travel time, jet lag, or other inconveniences. I could just as well take the disclosures using a fancy web conferencing system, and I could save a lot of time and money, but I feel that it is worth doing.

There is a very big benefit to meeting the inventors on their own turf. Part of the experience is seeing where they work, smelling the air, tasting their food, and getting to know them in ways that does not happen over the phone.

The most important aspect of writing a patent application is communication. My primary job is to learn the invention. Part of that is working with the inventors to understand what is important about it and what is optional. This process often involves some critical analysis of their invention. Sometimes, I have to call their baby ugly to delve into the critical elements of the invention. This cannot happen without the inventor’s trust in me.

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The Importance of the Figures

In preparing a patent application, the figures are one of those things where the patent attorney can add considerable value to the patent when the end uses of the patent are taken into consideration. This requires that the patent attorney/agent understand the business goals of the client, and construct the patent application to align with those business goals.

The importance of good figures cannot be understated.

I mean good figures in terms of design and quality, but especially design.

Figures are required “where necessary for the understanding of the subject matter to be patented.” (35 U.S.C. 113) This definition is the minimum necessary, but meeting the minimum standards does not necessarily add value to the client.

In reality, the figures are used by everybody who touches the patent application, patent publication, and issued patent. These people include the client and the examiner, as well as potential infringers, juries, potential licensees, potential purchasers, and investors. A well designed set of figures allows the patent to tell a story: a story that may be different for each of the potential parties.

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Don't Write Patents that ‘Hide the Ball’

I had a telephone interview with a patent examiner last week and in the course of the interview, the examiner said that he really liked my patent application because I did not try to hide the ball with the invention.

I was originally taught to write patent applications by obfuscating the invention. Specifications were required to include all of the information that was claimed, and the way I was taught was to include all kinds of details of the invention without any overview or ‘big picture’ context. The specification was merely a bag of parts from which you could write claims. There was never any structure to the parts, or even a paragraph that described the context of the invention.

The bag-of-parts types of specification was in response to an overreaction to a misinterpretation of some court cases at the time. For example, KSR was generally interpreted to hold that if the applicant provided a ‘reason’ for combining two elements into an invention that the invention could then be ‘obvious’. As part of the response, patent drafters quit including a ‘story’ of the invention in the specification. When taken to its overreaching conclusion, drafters began to remove any overall description of the invention at all, and just included the detailed elements.

Obfuscating the invention is a clever tactic when the patent attorney does not know anything about the technology or does not want to bother to figure it out.

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Writing a Good Patent Application

I do all my work on a fixed fee basis. This means that I do piece work and that I have an incentive to work as efficiently as possible.

Working efficiently does not mean sacrificing quality. I recently received comments from two inventors that said “I’m thrilled by the document’s clarity and thoroughness” and “It seems you have been able to make it almost from a single shot. It is one of the cleanest apps written that I have seen.”

I have been tweaking my patent writing technique over the last few years to whittle away the inefficiencies and improve quality at the same time.

The single most important thing in writing a patent application is for the attorney to understand the invention. If the attorney does not understand the invention and appreciate the subtle nuances of the technology, the attorney cannot write a good application.

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Inventor Grandiosity: Dealing with the Kitchen Sink Invention

This post is part of a series of posts relating to inventor interviews. Other posts include The Art of the Disclosure Meeting, Doing the Disclosure Meeting, Setting the Stage and Issuing Warnings, and Inventor Myopia.

During the invention disclosure meeting, I can count on running into the Kitchen Sink Invention at least once in five inventions. The Kitchen Sink Invention is the result of grandiose expectations of the invention or extremely overbroad view of the invention. The Kitchen Sink problem is the inverse of the myopic inventor.

The Kitchen Sink Invention is the one that is so broadly defined that it does everything. Interestingly, I run into the Kitchen Sink Invention occasionally with software engineers, people with marketing perspectives, early stage entrepreneurs, and independent inventors.

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Dealing with Inventor Myopia

This post is part of a series of posts relating to inventor interviews. Other posts include The Art of the Disclosure Meeting, Doing the Disclosure Meeting, and Setting the Stage and Issuing Warnings.

Often, inventors stumble into two different pitfalls. The first is myopia, where the inventors think their invention is much smaller than it may well be. The other state is one of grandiosity, where the inventor thinks too highly of the invention.

In this post, I will discuss myopia. In the next post, I will discuss grandiosity.

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Setting The Stage and Issuing Warnings for the Invention Disclosure Meeting

This is part of a series of posts that deal with Invention Disclosure Meetings. The first one discusses the Art of the Disclosure Meeting and the second talks about Doing the Disclosure Meeting.

I like to start my disclosure meetings by covering a few important areas.

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Doing the Disclosure Meeting

This is the second in a series of posts regarding the patent disclosure meeting. Here is the first.

Every patent agent/attorney does their disclosure meetings differently. I like to do my meetings in person. There is nothing like being in the same room as the inventors, drawing on a white board, and reading those unspoken but noticeable body language cues.

The disclosure meetings always seem to go better when it is in person. I think there are several variables at play.

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The Art of the Patent Disclosure Interview

One of the most rewarding parts of patent law is the disclosure interview. This is where a good patent agent/attorney can add value far in excess of the fees collected.

A good disclosure interview is an opportunity to shape the invention into something that makes sense for the business as well as sets the proper expectations for the inventors. A good disclosure meeting is also brutally exhausting if done well.

I do all of my patent cases for a fixed fee. Because of this, I need to be efficient and thorough at every step. I view the disclosure interview as the most essential step that helps me do the highest quality work for a reasonable price.

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