Practical Tips for Patent Drafting

Doing the Disclosure Meeting

This is the second in a series of posts regarding the patent disclosure meeting. Here is the first.

Every patent agent/attorney does their disclosure meetings differently. I like to do my meetings in person. There is nothing like being in the same room as the inventors, drawing on a white board, and reading those unspoken but noticeable body language cues.

The disclosure meetings always seem to go better when it is in person. I think there are several variables at play.

The Art of the Patent Disclosure Interview

One of the most rewarding parts of patent law is the disclosure interview. This is where a good patent agent/attorney can add value far in excess of the fees collected.

A good disclosure interview is an opportunity to shape the invention into something that makes sense for the business as well as sets the proper expectations for the inventors. A good disclosure meeting is also brutally exhausting if done well.

I do all of my patent cases for a fixed fee. Because of this, I need to be efficient and thorough at every step. I view the disclosure interview as the most essential step that helps me do the highest quality work for a reasonable price.

Prohibited Words in a Patent – “Prior Art”

One of the Prohibited Words is the phrase “prior art.” There is no reason whatsoever for the words “prior art” to appear in any patent application. Making any characterization of prior art is opening an avenue for attacking an issued patent and may unnecessarily complicate patent prosecution.

Prohibited Words in a Patent – “Invention”

This post is part of a series talking about the Prohibited Words. The other posts are here.

Another one of Prohibited Words is the word “invention.” Nowhere in any patent specification should the word “invention” be used. Nowhere. The invention is described in the claims and the claims alone. The specification supports and explains the invention, as well as describes the invention so that someone of ordinary skill in the art can practice it.

Prohibited Words in a Patent – “Must”

I have a list of words that are just plain prohibited in a patent application. I know that other people may use these Prohibited Words, but I have tried to rid them from my lexicon. Some of this may reek of slimy lawyer lingo, but it all has legitimate and practical reasons. This is a first post of several talking about the Prohibited Words.

The first group of Prohibited Words includes those that make definitive and absolute requirement of something in the written description. These are words and phrases like “must,” “have to,” “should,” “ought to,” “necessary,” “requires,” or any other similar words or phrases. In every situation, the proper term is “may,” “could,” “potentially,” or a similar phrase. I also try to avoid words like “never” and “always” as well.

When describing how something works, it is very easy to say that something (a machine, process, circuit, compound, etc.) must include certain elements. The problem with such statements is that they inherently limit the invention to those elements.