Patent Drafting: Not as Easy as You Think
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: May 17, 2014 @ 8:00 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 misconception 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 taken a State Bar Examination, patent attorneys must have a scientific background or else they cannot even sit for the Patent Bar Examination. As 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?
Of course, financial resources can and do provide a real impediment to moving forward with any business opportunity. Unless you are independently wealthy you are almost certainly going to need to proceed one step at a time as you move forward toward your goal of commercial success and financial reward. That means investing wisely, and sometimes doing more on your own than you would like. To get from point A, where you have an idea or early stage invention, to point B, where you are reaping the rewards, it is imperative to proceed in a business responsible way. That must also include proceeding with your eyes fully open and understanding the potential pitfalls and consequences if you are going to attempt to represent yourself in the patent world. If the choice is to move forward on your own versus not moving forward at all, then representing yourself is the only option. If you have the choice and can afford professional assistance, hiring a patent practitioner should be considered essential.
One reason you want to hire a patent attorney to help you, if you can afford one, is because it is extremely easy 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 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 to do. This now is an even more acute problem given that the United States has converted to a first to file system.
If you are considering moving forward on your own the first question you should ask is whether you 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? I understand it is prudent to proceed with care and not needlessly waste money, but a couple hundred dollars is not a realistic budget. Truthfully, you might as well go to Vegas and put it all down on black (or red) 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.Then there is the inventor who has a plan, knows what they want to do, is organized, but believes patent attorneys are unnecessary. They are convinced that any average Joe can draft a patent application, and patent attorneys are too expensive anyway. 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+ hours a week knows far more about what is required than someone without any training in the field, right?
On top of this, 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 because if the dough were actually heated to that temperature it would be destroyed. The moral of the story is that 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.
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. But an attorney can always make it better. The reality is that attorneys don’t run out of time to work on an application, clients run out of money. Still, if the only option is to proceed on your own the the Invent + Patent System will get you as far as you can realistically go on your own.
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.
For those interested in learning the art of drafting, whether to represent themselves or just to become a better consumer of legal services, please see these articles on IPWatchdog.com:
- Patent Claim Drafting 101: The Basics
- Drafting Patent Applications: Writing Method Claims
- Patent Drafting: What is the Patentable Feature?
- Working with Patent Drawings to Create a Complete Disclosure
- Completely Describe Your Invention in a Patent Application
- Patent Drafting: Describing What is Unique Without Puffing
- Patent Drafting: Drilling Down on Variations in a Patent Application
- Beware Background Pitfalls When Drafting a Patent Application
About the Author
Gene Quinn 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.