Patent Drafting and Claim Writing

Extracting the Invention from the Inventor

One of the most intriguing parts of my job is coming to understand an invention with the inventor. By definition, the inventor has broken some new ground in their field of expertise and it is my job to extract the important features and define them in a way that makes sense to them, a person of ordinary skill in the art, as well as the patent examiner.

This exercise is one of the most enjoyable parts of the job when it goes well, and one of the most miserable when it does not.

Patent Drafting Styles Change to Meet the Client’s Needs – Building a Portfolio

This post is a third of a series of posts describing patent drafting styles. See the others here and here.

When building a patent portfolio with the intent to sell a company, the main audience is not potential infringers, but the acquiring company. Depending on the situation, the acquiring company may have any of several different reasons for the acquisition.

Patent Drafting Styles Change to Meet the Client’s Needs – Patents Used for Licensing

This is a second part of a series on different patent drafting styles. The first post dealt with protecting an existing product. The final post deals with developing a portfolio with intent to sell a company.

Patents that are intended for licensing have a distinctively different feel to them and a different method of drafting. Here, our intent is to protect an idea that may potentially be more valuable at the end of the patent life. In this circumstance, we are unable to predict where the technology may change.

Rather than focusing on a product or opportunity, these types of patents identify a concept and develop as many variations or configurations of the concept as possible.

Patent Drafting Styles Change to Meet the Client’s Needs – Protecting a Specific Product

I vary the drafting style of a patent application based on the client’s business needs. Based on the client’s short and long term needs of the patent, the resulting patent may take on significantly different looks.

Inventing While Writing Patent Applications

On one of the patent listservs today, someone posed the question about whether a patent attorney/agent should list themselves as an inventor on a client’s patent application, when the attorney/agent added to the invention while writing the application.

I am of the opinion that if the patent drafter is not adding to the invention in some way, they are not providing enough value, but I think it is a very rare case where the attorney/agent should list themselves as an inventor if they are doing the patent drafting.