Patent Drafting Theory

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.

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.