In preparing a patent application, the figures are one of those things where the patent attorney can add considerable value to the patent when the end uses of the patent are taken into consideration. This requires that the patent attorney/agent understand the business goals of the client, and construct the patent application to align with those business goals.
The importance of good figures cannot be understated.
I mean good figures in terms of design and quality, but especially design.
Figures are required “where necessary for the understanding of the subject matter to be patented.” (35 U.S.C. 113) This definition is the minimum necessary, but meeting the minimum standards does not necessarily add value to the client.
In reality, the figures are used by everybody who touches the patent application, patent publication, and issued patent. These people include the client and the examiner, as well as potential infringers, juries, potential licensees, potential purchasers, and investors. A well designed set of figures allows the patent to tell a story: a story that may be different for each of the potential parties.
Patent reward systems are put in place by many companies to give employees an incentive to disclose their inventions and go through the patent process. Bosses like the idea because it gives them a way to recognize employees, especially those creative people who toil in obscurity in a lab. Employees like it because it is a true recognition for their contribution to the company. And they get paid.
A typical program may pay anywhere from nothing to $500 for merely submitting an invention disclosure, up to $1000 when an invention is submitted to the Patent Office as a patent application, and anywhere from $1000 to $5000 when the patent issues.
I have been on both sides of these programs. As an inventor and engineer at several companies, I have written many, many invention disclosures, some of which have turned into patents. As a patent attorney, I work with some inventors at larger companies who have submitted the disclosures. I bring a different perspective to this discussion.
One of my clients likes to describe patents as hyenas. A lone hyena can be easily frightened away, but a pack of hyenas can be very aggressive.
With one patent, a competitor or potential infringer has one thing to analyze, dissect, and find a way around. It may cost a little bit of money to analyze, but it is certainly a doable proposition.
With a dozen patents, the competitor’s workload is substantially increased to the point (hopefully) that it is cost prohibitive for the competitor to find work-arounds for every one of the dozen patents.
I have been developing my inventor interview over several years, and I have a technique that seems to work for me.
The key is to know what the inventor wants.
On one of the patent listservs today, someone posed the question about whether a patent attorney/agent should list themselves as an inventor on a client’s patent application, when the attorney/agent added to the invention while writing the application.
I am of the opinion that if the patent drafter is not adding to the invention in some way, they are not providing enough value, but I think it is a very rare case where the attorney/agent should list themselves as an inventor if they are doing the patent drafting.