Patent Drafting and Claim Writing

Patents for Defending Your Company

Many entrepreneurs and business owners want patents that will defend their company against competitors, but few companies actually have a proactive plan for investing their patent assets wisely. BlueIron IP is one way for you to get the benefit of a professionally managed patent portfolio at an affordable cost.

To defend your company, you want patents that are (1) litigation worthy and (2) relate directly to your company’s products and services.

Litigation worthy patents are not the garden variety patents that you get from your local patent attorney. The primary goal of the litigation worthy patent is to get a good examination. This means presenting the invention clearly and succinctly so that the examiner grasps the invention and can do a good search. The second goal is to avoid all of the many pitfalls that can sink a patent in litigation, such as avoiding patent profanity, providing too little (or too narrow) support for variations, and many others.

Provisional Patent Applications are Wrong for Your Business

In almost all circumstances, an entrepreneur or startup company should NOT get a provisional patent application. The main purpose of the provisional application is to *delay* the patent process. A delay is very useful for circumstances, such as pharmaceuticals, where most of the value of the patent is at the end of the patent term. This is not the case for almost all startup companies.

First, having a patent application quickly will add value to the company. It makes business sense to get patents as fast as possible, since the company’s valuation will go up if you are raising money, and it gives the startup company at least some protection in the marketplace. I suggest using the Patent Prosecution Highway or Track One to expedite the patent to try to get a patent within 1-2 years, not the sometimes 5-7 years without expediting.

Second, a “thin” provisional application does far more damage than it helps. Many people file a 1-2 page provisional application, then think they will come back a year later and pay an attorney to write a “full” patent application. Entrepreneurs often think that they are “protected”, so they go out and freely discuss their inventions with customers, investors, and the general public during the one-year period.

This creates a situation where you have two filing dates: a first one for the provisional and a second filing date with the rest of the material.

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.

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.

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.