Patent Drafting and Claim Writing

Patent Quality

The basis of the patent system is a reliance by the public on the strength of issued patents. Every group and advocate has complained of this one issue in one way or another. In some cases, such as in Europe, there is a move afoot to abolish at least a portion of the patent system which may or may not cover most of the inventions in the last 10 years. In other cases, groups like EFF have started a publicized ‘patent-busting’ campaign.

The people with a vested interest, the patent holders themselves, also want their patent to be respected and honored without having to resort to costly litigation.

What can be done about it? I think everybody should take some responsibility for the solution. There are basically two groups involved, the patent practitioners and the PTO.

Fixed Fee Patent Applications and Defining the Invention

I almost always do fixed fee arrangements with clients, and generally don’t have too many problems with people changing the invention after the first draft.

One of the things I do to prevent too many changes is to summarize the invention very specifically with the inventor at the interview. I generally do not draft claims with the inventor, but come very close to it. I try to state the critical elements of the invention clearly and concisely, and make sure the inventor agrees that they are the important parts.

Inventor’s Lingo Again

One of the best exercises in creativity is naming conventions within a design team. Every project gets a name, ostensibly to give an excuse to have some team shirts produced and give the management a rallying cry for the troops, but the real fun is down in the trenches.

Having spent a considerable number of years in the design trenches, I can personally attest that the most creative portions of the invention process are the names of various components.

The Case for No Dictionaries in Claim Interpretation

In my opinion, using dictionaries for interpreting claims is fundamentally flawed. When viewed from the highest level, inventing is the creation of something that has never existed before. The thought that someone could adequately describe this brand new thing using old words is fundamentally flawed. This is true in any art, but software is especially laden by this problem.

Inventor Lingo and Patents

Inventor’s lingo might be at fault in the Phillips v. AWH Corp case now pending at the Federal Circuit.

Part of the design process is to label various parts of the newly created design. Certain components or pieces may get a particular moniker based on function, looks, or pure whimsy. For example, I once named a particular project “Yukon” (a.k.a. “Yukon Cornelius”) after the famous explorer in the Rudolph the Red Nosed Reindeer animated Christmas program. This was because the design group was being treated like we were in the Land of the Misfit Toys. Thankfully, the name stuck before management ever really got wind of that one, but I digress.