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.
The reality is that people look at the figures and rarely, if ever, read the text of the patent. The figures can be drawn to show the ‘story’ of the patent, the context of the invention, and how the invention works in easy to understand terms.
Note: when I refer to the ‘story’ of the patent as described in the figures, I do not mean to point out prior art, a problem identified, and a solution to a problem. To do so would be to write a 35 USC 103 rejection under KSR that could not be argued around. What I mean is to show the context of the invention and where the invention is used, and illustrate as best as possible how the invention is used and what the invention does.
I generally try to do one or more contextual figures, and then several detailed figures that match my claims or my claim set.
The client wants to see figures that look familiar and show the invention in a favorable light.
When I do interviews with patent examiners, I always start out with an explanation of the invention. I like to set the context for the invention, show a problem that it solves, and help the examiner understand the heart of the invention. I do this by walking through the figures and showing the pieces of the invention and how they relate to each other.
In many cases, I like to give the context of the invention. For example, an invention in a cable television network might show a network with subscriber’s residences and the components of the invention as they relate to the cable television network.
The context illustration is used to show the utility of the invention. I do not mean to fulfill the utility requirements under 35 USC 112, but to show where the invention is used and why it would be important. This helps tell the story of the invention to the examiner.
The context illustration also helps in talking to a potential infringer. If the context illustration looks like the potential infringer’s product, the potential infringer will take the patent seriously. I have seen many patents that show the guts of some complicated device and
Figures represent several strategic opportunities for the applicant that may extend well past the requirements from the USPTO. A minimum requirement for a patent is to have a figure if the technology warrants. In some cases, an examiner may reject a claim if all of the limitations are not illustrated in the figures.
However, a well constructed figure in the patent can further a client’s business goals tremendously, while a bad one can cost the client opportunities and potentially lots of money.
Once a patent application is published or when a patent issues, the figures convey lots of information to potential licensees, potential investors, possible infringers, juries, among others. Designing the figures well and selecting the figure for the first page of the patent or publication can make a big difference when doing business with the patent.
Virtually everyone who comes in contact with a patent or patent application looks at the figures. Very few people read the claims, and even fewer still read the specification. But everyone looks at the pictures.
Setting aside the USPTO requirements for figures, what do you want those figures to convey for your business purposes?
When showing an issued patent to a potential infringer, you want the figures to show the infringer’s product as close as possible and in a very simple form. The potential infringer needs to see his product in the figures quickly and simply, because that could move negotiations along to licensing very quickly. If the potential infringer sees something that is hard to understand or takes a lot of interpretation to see how the product infringes, the first impression may be lost. In those situations, the patent didn’t do what it could have.
A potential (non-technical) investor may want to see a maze of complex and technologically advanced things that looks official and important. However, a more technical investor may want to see specific areas that are broadly covered with many different examples.
Potential licensees and potential purchasers would like to see broad coverage that aligns with their business. Licensees either take a license because they want to avoid litigation with the patent owner or because they may be able to assert their license against other competitors. Purchasers have the same motivation, but would rather own the technology outright.
Creating figures that make good business sense involves understanding the business goals or potential goals of a client and crafting those goals into the patent application. Realize that when the figures are created, they may not be used for another 5, 10, or even 15 years later in business situations that are not even foreseen with business partners that may not yet exist.
In general, I prefer to see figures that show a three dimensional view of a product or show an overview of the invention. I try to make the figures stand on their own as much as possible, with descriptive callouts or labels on various elements. When practical, I like to include several figures that illustrate different embodiments that competitors may try to make.
Ideally, I want someone to be able to pick up the figures and understand at least the highlights of the invention by just flipping through the figures. It is cool when my clients use one or more of my patent figures in presentations to investors, infringers, licensees, or anyone else that may be interested.