Patent Drafting and Claim Writing

Prohibited Words in a Patent – “Invention”

This post is part of a series talking about the Prohibited Words. The other posts are here.

Another one of Prohibited Words is the word “invention.” Nowhere in any patent specification should the word “invention” be used. Nowhere. The invention is described in the claims and the claims alone. The specification supports and explains the invention, as well as describes the invention so that someone of ordinary skill in the art can practice it.

Prohibited Words in a Patent – “Must”

I have a list of words that are just plain prohibited in a patent application. I know that other people may use these Prohibited Words, but I have tried to rid them from my lexicon. Some of this may reek of slimy lawyer lingo, but it all has legitimate and practical reasons. This is a first post of several talking about the Prohibited Words.

The first group of Prohibited Words includes those that make definitive and absolute requirement of something in the written description. These are words and phrases like “must,” “have to,” “should,” “ought to,” “necessary,” “requires,” or any other similar words or phrases. In every situation, the proper term is “may,” “could,” “potentially,” or a similar phrase. I also try to avoid words like “never” and “always” as well.

When describing how something works, it is very easy to say that something (a machine, process, circuit, compound, etc.) must include certain elements. The problem with such statements is that they inherently limit the invention to those elements.

Getting Patents Cheaply

It is not uncommon to receive a phone call from an inventor who wishes to write their own patent in order to save money but wishes me to help them in some way. Usually, the inventor asks me to read or edit their patent application and help them file it.

This type of situation is one in which neither the inventor nor attorney can possibly get what is best for either of them. It is a road to disaster.

Inventor’s Myopia

There are times when an inventor can be very myopic. There was one inventor several years ago who insisted on very specific definitions of his invention and would not permit any variation from his vision of the invention. The inventor would not consider any expansive definitions or alternatives to his idea. He was so fixated on his little view of the invention that he could not see how it could possibly be expanded.

As I work with a client to understand an invention and begin writing an application, I spend a considerable amount of time and effort to come up with different embodiments and alternatives for the concept. Since my background includes many years as a practicing engineer, patent holder, and entrepreneur, I have a unique vantage point to expand the scope of coverage for a patent application.

Doing the Patent Interview

I have been developing my inventor interview over several years, and I have a technique that seems to work for me.

The key is to know what the inventor wants.