Patent Drafting and Claim Writing

Fast Turnaround

I really try to keep my turnaround times for patent applications as low as possible, and there are many reasons why, but the biggest reason is that I can turn out higher quality work than if I did it any other way.

Obviously, clients like quick turnaround because they know that I am working on their project. However, I think there is an optimum time to take for writing a patent application. Finishing the application too fast or too slow can have its effect on patent quality.

Responding to Restriction Requirements

I recently had a three way restriction requirement from the US PTO on an application. The examiner had restricted the invention three ways:

1. An apparatus with features possibly usable outside the client’s business.
2. A special instance of the apparatus directly relating to a product being developed by the client.
3. A method for using either invention 1 or 2.

Vagueness in the Written Description

One of the biggest challenges in writing the written description is that it is almost impossible to guess how the invention might be used over the next twenty years, which is the life of the patent. Especially in developing technologies, what makes sense today may be turned on its ear by changes in technology or the market. However, reading that crystal ball is essential for good patent protection.

Background Section of a Patent and the Real Prior Art

Ask ten different patent practitioners about how they write their background sections and you may get ten different answers. After taking care of the bare minimum requirements, the differences tend to come down to personal style. This is an explanation of my personal style.

A Few Pointers on How to Review a Patent Application

For the uninitiated, the typical patent application is a very verbose and sometimes awkwardly written document that appears to describe an invention. Each section has its own particular necessary purpose and content. Some of the reasons for the content and wording are legacies from court cases, rulings by the Patent Office, and just plain old habit and preferences of the drafter.

In general, the drafter intends to put the invention in its best light, highlighting the essential elements of the invention while not limiting the invention to the exact description shown. Remember, that the patent may be enforced 15 years later when technology has developed in unexpected and unanticipated ways.