Tag: Patent Drafting Theory

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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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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Patent Strategies in Light of the New Rules

The latest rules from the US Patent and Trademark Office are quite sweeping. The new rules have several facets. On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE). On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.

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Patentably Defined

I try to avoid discussing other blogs in my blog, mostly because I like to focus on writing content. However, I ran across Patentably Defined, a blog written by patent prosecutor Michael Kondoudis. Mike’s deep understanding of patent prosecution comes out in practical, easy to implement tidbits.

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Would the Outcome of Microsoft v. ATT Been Different if a Beauregard Claim Had Been Used?

There are many reviewers and pundits who have discussed the recent Supreme Court case of Microsoft v. ATT, which dealt with a patent that Microsoft admitted to contributory infringement. This meant that Microsoft’s software enabled someone else to infringe, but that Microsoft itself did not directly infringe. The question was whether or not Microsoft was to be liable for infringement outside the US because Microsoft sent master copies of infringing software overseas for copying and foreign distribution and whether that action amounted to infringement.

The court decided that Microsoft was not liable because Microsoft did not export the copies of Windows installed on the foreign made computers. Instead, Microsoft supplied a master from which copies were made.

This is a very, very fine distinction.

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Slowing Down Patent Issuance

There are many strategies and situations where slowing down the patent from issuing is an enormous benefit to the client. Personally, I take a very proactive approach to making the patent issue as late as possible where this is needed, such as filing a provisional application. I could not bear the thought of writing a sloppy patent application or intentionally filing claims are ambiguous or need a lot of work to clean up. I think it is reprehensible to intentionally and needlessly drag out prosecution by filing endless responses to Office actions, because it lines the pockets of the attorney without benefiting the client. I do think there are legitimate, low cost mechanisms that can extend the prosecution time to help the client get the most protection for the money spent.

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How to Speed Up A Patent

In order to speed up issuance, the patent may be filed as a non-provisional application right away. This gets the application into the queue at the patent office first.

Even though the examiners are supposed to take the applications in order, every examiner has some discretion on which ones they handle. In order to get the application through quickly, the patent attorney should draft the application with the examiner in mind.

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Designing a Patent Strategy

To a very large extent, a patent attorney can craft a strategy for a patent that aligns with the business goals of a client. From my experience, very few patent attorneys/agents bother with such things, but it can make a very big difference, especially in some business situations.

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Claiming Strategy for a Patent in Real Business Applications

One of my clients was complaining about how difficult and expensive their last patent was when it was handled by a big firm. Sadly, this is not an uncommon story, where the inventor had to suffer through several revisions of the initial application because it was technically incorrect and was missing many essential elements of the invention.

The problem was exacerbated when the response to an Office action was handed off to someone unfamiliar with the case, and the inventor essentially did all the background work to present their case to the Examiner. Oh, and by the way, over $180,000 was spent prosecuting the patent. (The Big Firm billed by the hour, too.)

Not only is this story one of utter incompetence, clearly excessive billing, but it is one of poor claiming strategy.

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Another Use For Provisionals

Provisional patent applications give the inventor the right to label a product “Patent Pending”, which can have enormous business effects. The mere label of “Patent Pending” can be enough deterrent to keep competitors out of a business arena.

Provisional applications can be obtained with very little disclosure. In theory, a cocktail napkin with a figure and a little description may even suffice.

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