Patent Drafting Theory

How to Speed Up A Patent

In order to speed up issuance, the patent may be filed as a non-provisional application right away. This gets the application into the queue at the patent office first.

Even though the examiners are supposed to take the applications in order, every examiner has some discretion on which ones they handle. In order to get the application through quickly, the patent attorney should draft the application with the examiner in mind.

Designing a Patent Strategy

To a very large extent, a patent attorney can craft a strategy for a patent that aligns with the business goals of a client. From my experience, very few patent attorneys/agents bother with such things, but it can make a very big difference, especially in some business situations.

BlueIronIP is a patent financing group that specializes in patent strategies for startups and medium sized businesses. BlueIronIP uses a “patent due diligence” process to determine the best strategy for your business, as well as to evaluate individual inventions.

Claiming Strategy for a Patent in Real Business Applications

One of my clients was complaining about how difficult and expensive their last patent was when it was handled by a big firm. Sadly, this is not an uncommon story, where the inventor had to suffer through several revisions of the initial application because it was technically incorrect and was missing many essential elements of the invention.

The problem was exacerbated when the response to an Office action was handed off to someone unfamiliar with the case, and the inventor essentially did all the background work to present their case to the Examiner. Oh, and by the way, over $180,000 was spent prosecuting the patent. (The Big Firm billed by the hour, too.)

Not only is this story one of utter incompetence, clearly excessive billing, but it is one of poor claiming strategy.

Another Use For Provisionals

Provisional patent applications give the inventor the right to label a product “Patent Pending”, which can have enormous business effects. The mere label of “Patent Pending” can be enough deterrent to keep competitors out of a business arena.

Provisional applications can be obtained with very little disclosure. In theory, a cocktail napkin with a figure and a little description may even suffice.

Claiming Strategy: Broad or Narrow? Strategies Come Full Circle

Patent prosecution strategy has shifted in the last few years, but I think a prudent strategy may be to write a very good specification, claim broadly, and use divisional applications as an insurance policy.

In the Old Days, (prior to Festo), there was a general strategy of claiming very broadly in the first iteration of a patent application. The examiner would whittle away at the claims and the applicant would argue back and forth until a compromise was reached.

Then came Festo.