Practical Tips for Patent Drafting Archives

Don’t Write Patents that ‘Hide the Ball’

I had a telephone interview with a patent examiner last week and in the course of the interview, the examiner said that he really liked my patent application because I did not try to hide the ball with the invention.

I was originally taught to write patent applications by obfuscating the invention. Specifications were required to include all of the information that was claimed, and the way I was taught was to include all kinds of details of the invention without any overview or ‘big picture’ context. The specification was merely a bag of parts from which you could write claims. There was never any structure to the parts, or even a paragraph that described the context of the invention.

The bag-of-parts types of specification was in response to an overreaction to a misinterpretation of some court cases at the time. For example, KSR was generally interpreted to hold that if the applicant provided a ‘reason’ for combining two elements into an invention that the invention could then be ‘obvious’. As part of the response, patent drafters quit including a ‘story’ of the invention in the specification. When taken to its overreaching conclusion, drafters began to remove any overall description of the invention at all, and just included the detailed elements.

Obfuscating the invention is a clever tactic when the patent attorney does not know anything about the technology or does not want to bother to figure it out.

Don’t Write Patents that ‘Hide the Ball’

I had a telephone interview with a patent examiner last week and in the course of the interview, the examiner said that he really liked my patent application because I did not try to hide the ball with the invention.

I was originally taught to write patent applications by obfuscating the invention. Specifications were required to include all of the information that was claimed, and the way I was taught was to include all kinds of details of the invention without any overview or ‘big picture’ context. The specification was merely a bag of parts from which you could write claims. There was never any structure to the parts, or even a paragraph that described the context of the invention.

The bag-of-parts types of specification was in response to an overreaction to a misinterpretation of some court cases at the time. For example, KSR was generally interpreted to hold that if the applicant provided a ‘reason’ for combining two elements into an invention that the invention could then be ‘obvious’. As part of the response, patent drafters quit including a ‘story’ of the invention in the specification. When taken to its overreaching conclusion, drafters began to remove any overall description of the invention at all, and just included the detailed elements.

Obfuscating the invention is a clever tactic when the patent attorney does not know anything about the technology or does not want to bother to figure it out.

Writing a Good Patent Application

The single most important thing in writing a patent application is for the attorney to *really* understand the invention. If the attorney does not understand the invention and appreciate the subtle nuances of the technology, the attorney cannot write a good application.

On top of that, the attorney needs to understand your business model. A patent for licensing is different from a patent that protects an invention from being copied, which is different from a patent that is part of a large portfolio.

Good patents are not cheap, but cheap patents can be very expensive.

As an aside, “Legalese” is not a good idea when writing a patent. Further, BlueIronIP is a financing company that will provide superior patent protection at a much lower cost than conventional patent attorneys.

Inventor Grandiosity: Dealing with the Kitchen Sink Invention

This post is part of a series of posts relating to inventor interviews. Other posts include The Art of the Disclosure Meeting, Doing the Disclosure Meeting, Setting the Stage and Issuing Warnings, and Inventor Myopia.

During the invention disclosure meeting, I can count on running into the Kitchen Sink Invention at least once in five inventions. The Kitchen Sink Invention is the result of grandiose expectations of the invention or extremely overbroad view of the invention. The Kitchen Sink problem is the inverse of the myopic inventor.

The Kitchen Sink Invention is the one that is so broadly defined that it does everything. Interestingly, I run into the Kitchen Sink Invention occasionally with software engineers, people with marketing perspectives, early stage entrepreneurs, and independent inventors.

Setting The Stage and Issuing Warnings for the Invention Disclosure Meeting

This is part of a series of posts that deal with Invention Disclosure Meetings. The first one discusses the Art of the Disclosure Meeting and the second talks about Doing the Disclosure Meeting.

I like to start my disclosure meetings by covering a few important areas.