Patent Drafting and Claim Writing

How to Write a Patent Application – Deconstruction and Rebuilding Approach

There are several different styles of patent applications, each being a certain response to a specific business situation and prosecution strategy.

I use a deconstruction and rebuilding approach, detailed below, for applications where the prior art is reasonably well known, a product is reasonably well known or anticipated, and thus the claims can be well tailored.

Bad Provisionals are Really Bad

Provisional applications that are incomplete, “quickly” drafted, or otherwise are incomplete are, in my opinion, some of the most dangerous documents that can be drafted, but also speak to some underlying problems with the attorney’s abilities. The biggest issue is that there is a possibility that the description of the invention is insufficient to support the eventual claims that may accompany a non-provisional application.

Ethical Question in Patent Prosecution: Should You Write Something Technically Wrong?

One of the things I bring to the table is a huge background in product design. I picked up the patent game quite late in life, after spending many years doing real engineering in several different industries.

Part of the value added that I like to deliver is helping the inventors see beyond the bounds of the immediate application of their invention to the great vista that could be covered with a broad application of their technology. Being both an inventor and patent agent, I have a good base for doing this. With very few exceptions, I have always been very successful in working with the inventors this way.

Clear Writing Is A Key To Good Patent Drafting

Throughout the normal course of practice, I read many different patents drafted by many different people.

Some drafters use a very obtuse and awkward writing style that is incredibly hard to read. They use convoluted sentences and difficult prose to talk about relatively straightforward and comprehendible inventions. I think this syndrome may be the engineer/scientist in every patent attorney/agent.

Working Within a Budget

Along the lines of the embedded patent attorney concept, I often work with my clients to develop a budget for patent protection, then map a strategy to get the best bang for the buck.