Patent Drafting and Claim Writing

Educating the Inventor

I see my ideal role as a patent professional more as a facilitator and educator than as a scribe.

The easy way out is to merely listen to the inventor and write down what is said as the invention. This is the scribe approach. This is sometimes necessary when the inventor is a corporate engineer who has many other things to do and doesn’t want to spend any more time talking to me than absolutely necessary. The classic case is the inventor who already has been through the patent process a couple times with another attorney and is tired of explaining details to someone who has no clue about what the invention is.

This callused inventor is often difficult to interview and can be short and unreasonable.

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Draft Patents That Focus on Solving the Problem

Often it is easy to draft patents that protect a particular embodiment has been developed. For example, if someone develops a new widget, the patent may describe how the widget functions and how it is assembled. This is run-of-the-mill patent writing.

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Changing the First Inventor

I had been told that it was all but impossible to change the order of inventors, specifically changing the first named inventor. So, I talked to an examiner at the USPTO and asked them how to do it.

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Is A Skimpy Provisional Bordering on Malpractice?

Some practitioners file provisional patent applications that are skimpy in order to get a filing date for a client. I have often wondered if this borders on malpractice.

In an example where a skimpy provisional application is filed and a full non-provisional application is filed a year later, there are two filing dates: one for the skimpy material and one for the rest of the information, which is a year later. If the provisional is filed in order to beat a statutory bar date (e.g., one year from public use or disclosure in the US or before divulgation in Europe), the information in the subsequent non-provisional application would be outside the bar date and could thereby invalidate the patent.

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