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Don’t be Fooled, Drafting Patents is Complicated

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Dec 20, 2012 @ 7:30 am
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This is one of those articles that I write every so often, in slightly different ways, in order to try and explain to inventors what it is that they need to know before they make an enormously costly mistake.  For better or for worse, there is a popular conception that patent attorneys and patent agents are not really necessary and an inventor can do it themselves and save money.  The truth is that patent attorneys are among the most highly trained attorneys you will ever meet.  In addition to having to successfully complete law school and take a State Bar Examination, patent attorneys must have a scientific background or else they cannot even sit for the Patent Bar Examination.  As my friend John White explains, a person becomes a patent attorney when they lack sufficient personality and charisma to do tax work!  But when it comes to describing your invention in a document that will grant you exclusive rights with respect to only what is disclosed and claimed, isn’t that the exact type of person you want in your corner?

It is extremely common for inventors to make mistakes that will render their hopes and dreams of a patent null and void.  I cannot tell you how many times over my career I have talked to inventors who have come up with something really special and are now ready to file a patent application.  Frequently the story is that the inventor created something several years ago (perhaps more) and they have been using it and people love it.  They finally now have the money to pursue a patent and want to get started.  Those familiar with patent law know they cannot get started, because rights have irreparably been lost.  The only recourse is to improve your magnum opus enough so that it is patentably unique compared to your original invention, which is not something that is typically easy for individuals to do.

Another thing I see with increasing frequency is the inventor who doesn’t have much money and who wants to do things themselves.  The first question inventors without much money should ask themselves is whether they should even be pursuing an invention.  The cost of filing for and obtaining a patent is typically quite minor in comparison to the amount of money required to create, market and distribute the invention.  So if you can only muster several hundred dollars and need to file your own application because that is all you have, what are the realistic chances that you will be able to move forward in the commercialization process?  Have you thoughtfully considered what you will do with the patent? Have you explored whether there are realistic licensing opportunities? Do you know there is a market for the invention?

Then there is the inventor who has a plan, knows what they want to do, is organized, but knows believes patent attorneys are unnecessary.  They are convinced that any schmo can draft a patent application after having read Patent It Yourself, and patent attorneys are too expensive anyway.  We have all heard it, it is not news to us in the patent community, and invariably these inventors get such narrow rights that they are practically useless.  I don’t mean to poke fun, but I am trying to illustrate a point.  Deep down inside everyone has to know that a professional who has spent years of time training, and years of time reading, writing and prosecuting patent applications for 40 to 60 hours a week knows far more about what is required than someone who read Patent It Yourself.  Right?

I understand it is prudent to proceed with care and not needlessly waste money, which is why I try and help inventors understand how best to start the patent process on a budget, but a couple hundred dollars is not really a budget.  You might as well go to Vegas and put it all down on black and let it ride.  At least you have close to a 50% chance, which is a greater chance of success than having only a few hundred to spend on your invention.

Now don’t get me wrong, I am an advocate of inventors spending time to educate themselves with respect to both patent laws and the industries they seek to jump into with their inventions. Patent It Yourself is a very good book, and any serious inventor really should have the book in their own private collection. Inventors should read through the book and reference it as necessary as they work through their inventions. If you have an understanding about what will go into a patent application you are going to better document your invention and be in a better position to meaningfully contribute if and when you do hire an attorney. Inventors are the most important person in any legal team. They are the ones who understand the invention. So arm yourself with as much knowledge as possible.  For more information see A Beginners Guide to Patent and the Patent Process.



Having said this, inventors really need to know and fully understand that there is a big difference between inventing and describing an invention. For well over 100 years courts have marveled at how difficult it is to draft a patent application.  Starting in 1892, in the case of Topliff v. Topliff, 145 U.S. 156, the United States Supreme Court explained that a patent application is one of the most difficult legal instruments that can be drafted.  In this regard the Supreme Court explained:

The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.

This very same assertion was echoed by the United States Supreme Court 1963 in Sperry v. Florida, 373 U.S. 379, when Chief Justice Earl Warren explained:

Such conduct inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria, 35 U. S. C. 101-103, 161, 171, as well as to consider the advisability of relying upon alternative forms of protection which may be available under state law. It also involves his participation in the drafting of the specification and claims of the patent application, 35 U. S. C. 112, which this Court long ago noted “constitute[s] one of the most difficult legal instruments to draw with accuracy,” Topliff v. Topliff, 145 U.S. 156, 171.And upon rejection of the application, the practitioner may also assist in the preparation of amendments, 37 CFR 1.117-1.126, which frequently requires written argument to establish the patentability of the claimed invention under the applicable rules of law and in light of the prior art.

Still further, it was recognized by the United States Court of Appeals for the Federal Circuit in 1988 in Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, when Chief Judge Howard Markey explained:

This appeal again illustrates one of the many difficult dichotomies that lurk in the lacunae of patent law. On one side rests the very important, statutorily-created necessity of employing the clearest possible wording in preparing the specification and claims of a patent, one of “the most difficult legal instruments to draw with accuracy.”  On the other lies the equally important, judicially-created necessity of determining infringement without the risk of injustice that may result from a blindered focus on words alone.

Chief Judge Markey had a gift for language that could rival Shakespeare himself.  According to Dictionary.com, the term “lacunae” means “a gap or missing part, as in a manuscript, series, or logical argument.”  So not only is a patent application one of the most difficult legal instruments to draft, but patent law has some lurking gaps and missing parts!  It is hard to imagine a truer, more fair characterization from the first man to head the Federal Circuit.  If this description of patent law and patent applications doesn’t sum up exactly why inventors should seek the advice of patent attorneys, I don’t know what will.

Even more recently though, in 2004 in Chef America v. Lamb-Weston, the Federal Circuit was issued a decision that will really drive home how important it is to choose your words in order to make sure your words are exactly what you mean to say. In this instantly famous case the Federal Circuit had to interpret the meaning of the phrase “heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F.” What should have been said was “heat the oven to a temperature in the range of about 400° F. to 850° F.”  Because what was said literally required the internal temperature of the dough to reach between 400° F. to 850° F., the patent owner had a useless patent. Inventors need to know that what they say will be interpreted literally.  You get great latitude to define the invention, but because it is up to you to define the invention the court will not fix what is said, even when everyone obviously knows what you most likely meant.




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In addition to writing for IPWatchog.com, I have spent the last 15 years working with independent inventors and teaching law students how to pass the patent bar and how to be patent attorneys.  I have taught patent law, patent claim drafting, patent application drafting and licensing.  I have come up with a unique process to help coax information about inventions out of inventors through a mentored system called the Invent + Patent System.  This is an excellent start to the process, and if inventors really put in time and follow the directions they can come out with a really good provisional patent application, particularly if they then combine that with quality drawings.  But an attorney can always make an application better.  The reality is that attorneys don’t run out of time to work on an application, clients run out of money.

A good patent attorney can always make an application better by spending additional time on the application.  You do reach a point of diminishing returns though, so you get to a high level that is acceptable and file the application.  But don’t fool yourself if you are an independent inventor.  While you may need to cut corners to get from point A to point B, patent attorneys are not superfluous.  If we were do you really think major corporations and stingy venture capitalists would hire patent attorneys to create and develop their patent portfolio?  Of course not.  If this were really so easy corporations would have their scientists and engineers, many who have PhDs, do the work.  They don’t for a reason.

If you can afford to hire a patent attorney or patent agent you should. If you cannot afford to hire an attorney or agent then you need to proceed cautiously and carefully. Get and read Patent it Yourself. Consider using the Invent & Patent System. Work with a product design firm such as Enhance Product Development to get high quality 3D drawings and a product sell sheet (see Patent Illustrations and Invention Drawings, What do you Need?). Do your own patent search to start, but don’t be surprised if you don’t find anything. Patent searching can be difficult. See Patent Searching 101 and Patent Searching 102 for help. But at some point you are going to likely want a professional patent search and professional assistance from a patent attorney or patent agent.

I have no problem with people following their dreams. I walk to the beat of my own drum and have made a career doing that. Just be honest with yourself. The biggest mistake I see is when an inventor convinces himself or herself that they can do just as good a job as trained professionals. While you may need to do a lot of the work yourself due to financial constraints, don’t make the mistake of thinking you can do a better job yourself. Go into the project with eyes wide open and realize that to succeed at some point you are almost certainly going to need help.

Happy inventing!

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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Basics, Patents

About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 

5 comments
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  1. Of course, the switch to “First to File” makes it even more vital to get right the disclosure content of the patent application on the filing date, for that is what you will be rigorously held to, in any priority contest. Going forward, you really do get only one chance to get it right for the next 20 years.

    In the USA drafters are in thrall to litigators, it seems to me. Fair enough, until the point where the drafter thinks his highest duty to the client is to obscure the relationship between the technical features of an invention and the technical effects those features deliver. For such obscurity destroys the chances of getting effective patent protection, at least everywhere outside the USA. See the recent Pfizer silfenidin(?) case in Canada as an example.

    It’s not only prefessional drafting that counts. It’s also the Q and A between inventor and drafter that gets into the draft the stuff that matters. Usually, that Q and A stimulates the inventor to further embodiments. The inclusion of those extra embodiments will often make a vital difference to the scope of the claims that eventually issue.

  2. “It’s not only prefessional drafting that counts. It’s also the Q and A between inventor and drafter that gets into the draft the stuff that matters.”

    MD,

    Very true. I often tell my client/applicant to expect me to “question them to death” and to hope I ask more questions than the patent examiner who will be handling their patent application.

  3. Like everything, it depends.

    I think this post applies to say 90% of the small inventors who are either too busy, or rather focus on the technical or business side.

    However, for the rest that are willing (or have already spent) the time&effort researching competitors, thinking through business plans, studied various standards and technical groups, performed patent searches and studied the dozen or so most relevant works – then I would say this article is less valuable. Once the engineer has spent that _THAT_ time&effort (we’re talking hundreds of hours or more) then they already know exactly what subtle nuance is valuable to patent. There is no way a patent attorney can understand and draft similar in ~40 hours. Absolutely no way. Now the pat attorney almost certainly can draft a better pat application, but the core concepts, the subtleties, the nuances, what is most valuable, what the future business plans are, how competitors tend to react and evolve over 10-20 years, etc… – are not what an engineer should use a pat attorney for.

    I’m not talking about how things are done in today’s world – I’m simply giving another option that I think is overlooked. In today’s world, engineers typically spend 2-20 hours copying-pasting pieces from design docs which are forwarded to the pat attorneys and a couple hours of followup interview. In other words, the technical stuff is heaved over the wall to the patent attorney. And what do we see as a result? …disappointments like the recent invalidation of Apple’s pinch-to-zoom patent. What a roller coaster.

  4. I work in a multinational company. We file about half of our priority cases in Europe and about half in the US. Occasionally we find ourselves filing first in a country, such as Russia, when we have . We have great fun making certain that the prioirity documents will have have enough content and the right language for multiple countries. We have adopted an approach where we amend (or withdraw) at the PCT stage to save thousands per country in translation and prosecution at the individual country level.

    This does not apply only to big companies. Start-up companies should consider PCT as a second filing if they have any thoughts about offshoring their manufacture, or licensing to reach a bigger market. It creates a much more serious impression for angel investors who often along to fund patnet costs as part of a strategic business plan that includes people, equipment, and distribution.

  5. Interesting comment at #4. Jennifer does your company ever adopt a two track approach, one for the USA and one (PCT) for ROW (rest of the world)? It might deprive you of some “fun”, but would that not ameliorate some of your drafting challenges?

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